Tag: USPTO

GENERIC.COM — REGISTRABLE IN CANADA?

The U.S. Supreme Court recently confirmed that a “generic.com” term may be eligible for federal trademark registration in the U.S., in certain circumstances. We will review the relevant decisions, discuss the Canadian legal framework with respect to registration of such mark and consider the implications of seeking registration of a “generic.com” or a “generic.ca” mark … Continue Reading

COVID-19 and Intellectual Property

Despite the COVID-19 closures and cancellations, some governmental intellectual property offices have not extended deadlines, so parties should remain mindful that protections for individuals and businesses should not be overlooked. Many patent and trademark offices around the world are providing relief for businesses that may have difficulty tending to their intellectual property filings due to other pressing COVID-19-related concerns; some … Continue Reading

UNITED STATES SUPREME COURT TO CONSIDER ‘ON-SALE BAR’ DOCTRINE

Recent focus on the United States Supreme Court has surrounded who President Trump will nominate to replace retiring Associate Justice Anthony Kennedy.  (The nominee is Brett Kavanaugh of the D.C. Circuit.)  However, once October is here, the 2018 Term begins and focus will shift back to the cases before the Court.  One of those issues … Continue Reading

Can Trademarks Violate Free Speech?

Suppose that you want to register a trademark that identifies a source of goods or services for your business.  What if the trademark may be scandalous or disparage a particular group of people?  Should you register your trademark with the U.S. Patent and Trademark Office?  Can you obtain a registration from the U.S. Patent and … Continue Reading

Matal v. Tam – Disparaging Trademarks are Registrable

It is well known that the trademark laws of the United States differ substantially from the trademark laws of countries around the world.  The United States Supreme Court recently clarified that ‘offensive’ trademarks are registrable, further differentiating the United States from the majority the world. Morality Refusals Many jurisdictions have prohibitions against registration of marks … Continue Reading

U.S. Supreme Court Invalidates Statutory Provision against Offensive Trademarks

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

USPTO Adopts New Regulations for Trademark Specimens of Use

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
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