When the U.S. Patent and Trademark Office (“PTO”) rejects a patent application, the applicant has two options for judicial review. It can either appeal directly to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. §141, or file a new (“de novo”) civil action against the Director of the PTO in the … Continue Reading
Although U.S. common law trademark rights are gained through use of the mark in commerce (without registration), registration of a trademark with the U.S. Patent and Trademark Office (“USPTO”) provides the owner with additional rights and benefits. These include nationwide enforcement of the mark against infringers; constructive notice of the registrant’s claim of ownership of … Continue Reading
Unlike the practice in many countries, in most cases the U.S. requires a trademark owner to place the mark into actual use in commerce and provide specific types of proof of use before the registration certificate will issue. Similar requirements apply to the mandatory declaration of use to maintain or renew a U.S. registration. Effective … Continue Reading
When we last left the Trademark Trial and Appeal Board (“TTAB,” an administrative arm of the U.S. Patent and Trademark Office), they had issued a precedential opinion that registrations could not be issued for marks that covered the sale and use of marijuana products or paraphernalia primarily intended or designed for use in ingesting or … Continue Reading
In a precedential opinion, the Trademark Trial and Appeal Board (“TTAB,” an administrative arm of the U.S. Patent and Trademark Office) affirmed the trademark examiner’s refusal to register HERBAL ACCESS for retail store services featuring “herbs.” Although the application did not mention marijuana as one of the “herbs” being sold, applicant Morgan Brown’s specimen of … Continue Reading
The Trademark Trial and Appeal Board (the “Board”) of the U.S. Patent and Trademark Office hears applicant appeals from the final decisions of trademark examiners, and oppositions to trademark applications, concurrent use proceedings, and cancellation proceedings against trademark registrations. The proceedings are held on a paper record with oral arguments by counsel. Matters before the … Continue Reading
ILN IP Insider is starting a new series – we’re featuring interviews with ILN IP lawyers, asking them questions on the state of IP Law in 2016. These will typically be one to two-question interviews with our practitioners from around the world. Our first interview is with Arnstein & Lehr lawyer, Judith Grubner: What’s the … Continue Reading
Social media sites are becoming increasingly popular for marketing a company’s goods or services. Facebook is commonly used to promote sweepstakes and contests intended to attract new customers and increase “likes.” However, if a contest contains a popularity feature, such as a photo contest where the public can vote on which image they prefer, it … Continue Reading
A recent decision of the United States Court of Appeals for the Federal Circuit (M.Z. Berger & Co, Inc., v. Swatch AG [2015] Fed. Cir.) has clarified the standards applicable to determining whether an applicant relying on an “intent-to-use” basis had the required “bona fide intention” to use the mark in commerce when the application … Continue Reading
