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| 1 | Brand Protection Toolkit Resources designed to help counsel identify and manage the acquisition, protection, licensing and enforcement of trademarks and other brand assets. | Practice Note: Overview | Maintained |
| 2 | Intellectual Property: Overview This Note provides an overview of the principal categories of intellectual property (IP) under US law and related practice considerations. It discusses copyright, patents, trade secrets, trademarks and mask works. For each of these categories of IP, the Note describes the legal authority governing protection, protected subject matter and the scope of protection, the acquisition and maintenance of rights and enforcement considerations. | Practice Note: Overview | Maintained |
| 3 | Trademark Litigation: Pre-suit Toolkit Resources to assist a trademark owner's counsel in evaluating and preparing to commence trademark litigation in federal district court under the Lanham Act. | Practice Note: Overview | Maintained |
| 4 | Trademark: Case Tracker A table of key trademark cases that PLC Intellectual Property & Technology has reported on since December 2011. The table contains links to the cases and legal updates (and any In Dispute Practice Notes). Cases are sorted by topic, in reverse chronological order. | Practice Note: Overview | Maintained |
| 5 | Trademark: Overview This Note provides an overview of US trademark law. Topics covered include the legal framework for trademark law, the nature of trademark protection, the acquisition and maintenance of trademark rights and registrations, trademark enforcement and protection, exploiting trademarks and loss of trademark rights. | Practice Note: Overview | Maintained |
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| 1 | Acquiring Trademark Rights and Registrations This Note discusses the acquisition of trademark rights and registrations in the US. It covers the legal framework for trademark protection, what a trademark protects and the requirements for obtaining federal trademark protection under the Lanham Act. It also discusses the process for applying for, securing and maintaining federal trademark registrations with the US Patent and Trademark Office (USPTO). | Practice Notes | Maintained |
| 2 | Advertising Injury Insurance Coverage for Patent, Copyright ... A Practice Note discussing potential insurance coverage for patent, trademark and copyright infringement claims as advertising injury claims under commercial general liability (CGL) policies. It addresses the framework for evaluating whether an insurer has a duty to defend or indemnify for a particular claim and common policy exclusions. It also discusses key cases assessing advertising injury coverage for intellectual property (IP) claims. | Practice Notes | Maintained |
| 3 | Brand Protection: Business Briefing A template briefing for an in-house counsel to give business executives on brand protection. Click here to download in Microsoft Word. | Practice Notes | Maintained |
| 4 | Comparative Advertising Law in the US An overview of comparative advertising law in the US, focusing on the treatment of comparative advertising claims by the Federal Trade Commission and the National Advertising Division of the Council of Better Business Bureaus, and the challenges of contesting comparative advertising claims under the Lanham Act. | Practice Notes | Maintained |
| 5 | IP Licenses and Bankruptcy A Practice Note discussing key issues relevant to intellectual property (IP) licensors and licensees affected by bankruptcy. These include issues related to the automatic stay, determining whether an IP license is an executory contract, tests for assignment and assumption of IP licenses and risks and protections for non-debtor licensees of rejected IP licenses. | Practice Notes | Maintained |
| 6 | IP Licenses: Restrictions on Assignment and Change of ... This Note discusses US law relating to the transferability of agreements that contain intellectual property (IP) licenses. It includes guidance on evaluating assignability, dealing with non-assignable licenses in M&A transactions and drafting tips for assignment provisions in favor of a licensor or licensee. It also considers issues relating to the transferability of IP licenses in the context of bankruptcy and secured transactions and change-of-control provisions. | Practice Notes | Maintained |
| 7 | In Dispute: Louboutin v. YSL A discussion of the Louboutin v. YSL litigation where Christian Louboutin, owner of a federal trademark registration for a laquered red sole for women's designer footwear, sued Yves Saint Laurent under the Lanham Act and New York state law for trademark infringment, dilution and unfair competition arising out of YSL's use of red soles in connection with footwear. The main issue was whether and to what extent a single color may be protected under the Lanham Act as a trademark for fashion items, particularly footwear. | Practice Notes | Maintained |
| 8 | Intellectual Property Rights: The Key Issues This Note discusses the main categories of intellectual property (IP) rights in the US and their management, including IP ownership, assignment and licensing. It also examines the issues that arise surrounding business transactions involving IP, including M&A and finance transactions as well as their basic tax treatment under federal law. | Practice Notes | Maintained |
| 9 | International Trademark Protection A Practice Note discussing strategies for protecting trademarks internationally. This Note focuses on the framework for international trademark protection, including key multinational trademark registration filing systems. It also addresses international trademark enforcement and international treaties affecting trademarks. | Practice Notes | Maintained |
| 10 | Internet Brand Protection A Practice Note discussing the protection of trademark and other brand rights on the internet. The Note focuses on cybersquatting claims and remedies under ICANN's dispute resolution services and the federal Anticybersquatting Consumer Protection Act. The Note also addresses other online trademark issues including pop-up advertisements, keyword advertising and screenscraping. | Practice Notes | Maintained |
| 11 | Loss of Trademark Rights This Note discusses principal ways trademark rights may be lost in the US. Topics covered include abandonment through nonuse, abandonment through uncontrolled (naked) licensing, genericide, improper assignments, ways to prevent loss of rights and international considerations. | Practice Notes | Maintained |
| 12 | Protecting Against Counterfeit Trademarks and Gray Market ... This Note discusses counterfeit trademarks and gray market goods, and various legal remedies for protecting against the trafficking of goods bearing counterfeit trademarks and gray market goods in the US. This Note is in the process of being updated to reflect the Supreme Court's decision in Kirtsaeng v. John Wiley & Sons, Inc. | Practice Notes | Maintained |
| 13 | Responding to a Trademark Cease and Desist Letter A Practice Note explaining the key issues that counsel should consider when preparing a client's response to a cease and desist letter objecting to the client's use of an allegedly infringing trademark. | Practice Notes | Maintained |
| 14 | Security Interests: Intellectual Property An overview of special issues and considerations with respect to security interests in intellectual property, relevant to both corporate and finance transactions. | Practice Notes | Maintained |
| 15 | Sponsorship Arrangements in the US This Note discusses various forms of sponsorship arrangements and summarizes key legal and business issues to consider when negotiating a sponsorship agreement. | Practice Notes | Maintained |
| 16 | TTAB Oppositions and Cancellations: Grounds and Defenses A Practice Note discussing the principal grounds for opposing a trademark application or petitioning to cancel a trademark registration and key defenses in opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office. Additional topics covered include standing to bring opposition and cancellation proceedings, the structure and jurisdiction of the TTAB and TTAB governing authority. | Practice Notes | Maintained |
| 17 | TTAB Oppositions and Cancellations: Practice and Procedure A Practice Note discussing important aspects of practice and procedure in opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office. Topics covered include the notice of opposition and petition for cancellation, the answer, counterclaims, discovery mechanisms and procedures, pre-trial motions, trial and post-trial procedures. | Practice Notes | Maintained |
| 18 | Trademark Due Diligence in Mergers and Acquisitions A Practice Note discussing a prospective buyer's due diligence review of trademarks as part of a merger or acquisition. Topics covered include the purpose and scope of trademark due diligence, key areas of inquiry and review, categories of information to be requested from the target, the review and analysis of the due diligence materials and preparation of a due diligence report. | Practice Notes | Maintained |
| 19 | Trademark Infringement and Dilution Claims, Remedies and ... A Practice Note discussing trademark infringement and dilution claims under the Lanham Act. It addresses infringement claims for federally registered marks under Section 32, infringement claims for unregistered marks under Section 43(a) and dilution claims under Section 43(c). It also outlines available remedies, including injunctive relief and monetary damages, principal defenses, and related Lanham Act and state claims. | Practice Notes | Maintained |
| 20 | Trademark Litigation: Drafting the Complaint A step-by-step guide to drafting a complaint in an action for trademark infringement and related claims in federal district court under the Lanham Act and preparing the other case initiating documents according to the Federal Rules of Civil Procedure (FRCP). Specifically, this Note explains how to draft the caption, demand a jury trial, set out the facts and legal claims, and comply with federal pleading standards. This Note also covers preparation of the other case initiating documents, including the summons, Rule 7.1 disclosure statement and civil cover sheet. | Practice Notes | Maintained |
| 21 | Trademark Litigation: Online Consumer Surveys A Practice Note discussing the use of online consumer surveys in trademark disputes. It addresses important considerations for selecting, designing and conducting trademark surveys generally and online surveys in particular, including admissibility, respondent selection, universe requirements, stimuli requirements, validation, cost and time considerations. The Note also reviews recent court decisions assessing online surveys. | Practice Notes | Maintained |
| 22 | Trademark Litigation: Pre-suit Considerations A Practice Note explaining the key issues that a trademark owner's counsel should consider before commencing a trademark action in federal district court under the Lanham Act. These issues include the merits and costs of litigation, the ability to collect on a judgment, whether a demand letter should or must be sent, identifying the proper parties, the bases for federal subject matter jurisdiction, obtaining personal jurisdiction over non-resident defendants, determining proper venue and the alleged infringer's potential defenses and counterclaims. | Practice Notes | Maintained |
| 23 | Trademark Searching and Clearance This Note discusses searching and clearing a trademark for use in the US and federal registration with the US Patent and Trademark Office (USPTO). It covers the relevant considerations from the initial search request to filing a trademark application, including the purposes and benefits of trademark clearance. It also discusses the searching and clearance process, including the initial collection of information from the client, structuring an effective search, types of searches, the contents and analysis of a full trademark search report, conducting additional investigations, trademark availability opinions, investigations, ways to address potential conflicts and considerations for filing trademark applications. | Practice Notes | Maintained |
| 24 | Domain names This note discusses the nature of domain names (electronic addresses for websites), the registration, transfer and resolution of disputes in relation to domain names, and the relationship between domain names and trade marks. These issues are considered in relation to generic top-level domains (gTLDs), and in relation to country-code top-level domains (ccTLDs). Note: This note does not reflect ICANN's generic top-level domain (gTLD) expansion program. For more information, see Article, Generic Top-level Domain (gTLD) Expansion | Practice Notes | 31-Jul-2009 |
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| 1 | Domain Name Transfer Agreement An agreement for transferring ownership of certain domain names from a seller to a buyer. This Standard Document is drafted to be used as a stand-alone contract, and includes standard representations, warranties and other risk-allocation provisions typical in stand-alone domain name transactions. It is drafted in a manner that aims to be reasonable, and includes provisions that are common to negotiated agreements. This Standard Document has integrated notes with important explanations, alternative provisions and drafting and negotiating tips. The drafting notes also identify provisions that may be omitted if the domain name transfer agreement is being executed as an ancillary document to a larger transaction agreement, for example an asset purchase agreement or trademark sale or license. | Standard Documents | Maintained |
| 2 | Employee Confidentiality and Proprietary Rights Agreement An agreement between an employer and an employee concerning confidentiality and appropriate handling of the employer's commercially valuable information, compliance with relevant security rules and policies, and protection of the employer's intellectual property assets. Agreements of this type have various titles, which may use the term "non-disclosure" in place of "confidentiality," or "intellectual property" in place of "proprietary rights." This Standard Document is drafted in favor of the employer. It is based on federal law. For information on state law requirements, see the State Q&A Tools under Related Content to the right. This Standard Document has integrated notes with important explanations and drafting tips. | Standard Documents | Maintained |
| 3 | Employee Confidentiality and Proprietary Rights Agreement ... A California-specific agreement between an employer and an employee concerning confidentiality and appropriate handling of the employer's commercially valuable information, compliance with relevant security rules and policies, and protection of the employer's intellectual property assets. Agreements of this type have various titles, which may use the term "non-disclosure" in place of "confidentiality," or "intellectual property" in place of "proprietary rights." This Standard Document is drafted in favor of the employer. It is based on California law. This Standard Document has integrated notes with important explanations and drafting tips. | Standard Documents | Maintained |
| 4 | Intellectual Property Assignment Agreement (Short-form) This is a standard short-form intellectual property (IP) assignment agreement for use as an ancillary agreement to a principal asset purchase agreement. This IP assignment agreement can be attached as an exhibit to the prinicpal asset purchase agreement and recorded with the US Patent and Trademark Office (USPTO) and US Copyright Office against scheduled IP applications and registrations. This Standard Document has integrated notes with important explanations and drafting tips. | Standard Documents | Maintained |
| 5 | Intellectual Property Security Agreement (Short-form) This is a standard short-form intellectual property (IP) security agreement to be used with a principal security agreement in a syndicated secured loan transaction. This IP security agreement can be attached as an exhibit to the principal security agreement. In addition, this IP security agreement can be recorded with the US Patent and Trademark Office and US Copyright Office against US IP included in the collateral subject to the security interest. This Standard Document has integrated notes with important explanations and drafting tips. | Standard Documents | Maintained |
| 6 | Release of Intellectual Property Security Interest (Short-form) This Standard Document is a standard short-form agreement to release a security interest in intellectual property (IP) included as collateral in a secured loan transaction. This release can be recorded with the US Patent and Trademark Office (USPTO) and US Copyright Office to terminate and release security interests filed against US IP. This Standard Document has integrated notes with important explanations and drafting tips. | Standard Documents | Maintained |
| 7 | Release of Trademark Security Interest (Short-form) This is a standard short-form agreement to release a security interest in US trademarks included as collateral in a secured loan transaction. This release can be recorded with the US Patent and Trademark Office to terminate and release security interests filed against US federal trademark applications and registrations. This Standard Document has integrated notes with important explanations and drafting tips. | Standard Documents | Maintained |
| 8 | Sponsorship Agreement: Single Event (Pro-sponsor) An agreement for one party to sponsor an event organized and produced by another party. Event-sponsorship agreements vary in length and complexity depending on many factors, including the type of event, number and types of promotional rights granted to the sponsor, forms of sponsorship fees or other consideration and degree of exclusivity, if any. Each event-sponsorship agreement must be tailored to suit the particular circumstances of the transaction. This Standard Document is drafted in favor of the sponsor, but aims to be reasonable and includes provisions that are common to negotiated sponsorship agreements. This Standard Document has integrated notes with important explanations and drafting and negotiating tips. | Standard Documents | Maintained |
| 9 | Trademark Assignment Agreement (Long-form) A trademark assignment agreement for the transfer of ownership of certain trademarks from a seller to a buyer, which may be used as a standalone contract or executed and delivered as an ancillary document in a corporate asset purchase or other principal transaction. This Standard Document has integrated notes with explanations and drafting tips. | Standard Documents | Maintained |
| 10 | Trademark Assignment Agreement (Short-form) This is a standard short-form trademark assignment agreement for use as an ancillary agreement to a principal asset purchase agreement or other principal transaction agreement. This trademark assignment agreement can be attached as an exhibit to the principal asset purchase agreement or other principal transaction agreement and recorded with the US Patent and Trademark Office (USPTO) against scheduled trademark registrations and applications. This Standard Document has integrated notes with important explanations and drafting tips. | Standard Documents | Maintained |
| 11 | Trademark Coexistence Agreement A sample agreement between two parties setting out each of their rights, restrictions and obligations concerning marketplace coexistence of their respective trademarks in the context of resolving a dispute. Trademark coexistence agreements vary in length and complexity based on many factors, including the relationship and relative bargaining power between the parties, the nature and similarity of the marks, the types of products or services offered under the marks, and the territory covered by the agreement. Each trademark coexistence agreement must be tailored to suit the particular circumstances involved. This Standard Document is drafted in a neutral manner and applies to the US. This Standard Document has integrated notes with important explanations and drafting and negotiating tips. | Standard Documents | Maintained |
| 12 | Trademark Consent Agreement An agreement for use in attempting to overcome a US Patent and Trademark Office refusal to register an applied-for trademark based on a finding of likelihood of confusion with an earlier registered trademark. This Standard Document includes provisions that are common to negotiated trademark consent agreements and contains integrated notes with important explanations and drafting and negotiating tips. | Standard Documents | Maintained |
| 13 | Trademark Infringement Cease and Desist Letter A letter from (or on behalf of) a trademark owner requesting that the recipient cease and desist from engaging in infringing activities and demanding certain remedies and assurances from the alleged infringer. It must be tailored to suit the facts and circumstances of the particular matter. This Standard Document has integrated notes with important explanations and drafting tips. | Standard Documents | Maintained |
| 14 | Trademark License Agreement (Pro-licensor) An agreement granting a third party a license to sell products under a federally registered trademark. Trademark license agreements vary in length and complexity depending on a variety of factors (such as the relationship among the parties, the types of licensed products or services and the value and duration of the licensing arrangement). Each trademark license agreement must be tailored to suit the particular circumstances of the transaction. This Standard Document is drafted in favor of the licensor, but aims to be reasonable and includes provisions that are common to negotiated trademark license agreements. This Standard Document has integrated notes with important explanations and drafting and negotiating tips. | Standard Documents | Maintained |
| 15 | Trademark Litigation: Complaint (Federal) A sample complaint that a trademark owner may use as a starting point for drafting a complaint for trademark infringement, unfair competition and dilution under the federal Lanham Act and related state law. This Standard Document contains integrated drafting notes with important explanations and tips for drafting the complaint's caption, preliminary statement, jurisdiction and venue sections, facts section, legal claims, prayer for relief and signature block. | Standard Documents | Maintained |
| 16 | Trademark Permission-to-use Letter A model short-form letter agreement for a trademark owner to authorize another party to make a limited and specific use of the trademark. This letter is appropriate where the other party wishes to use the trademark in circumstances where a long-form trademark license agreement may not be necessary or appropriate. This Standard Document has integrated notes with important explanations and drafting and negotiating tips. | Standard Documents | Maintained |
| 17 | Trademark Search and Registration Questionnaire A sample questionnaire for collecting from clients information for conducting US trademark searching and clearance and filing an application to register a trademark in the US Patent and Trademark Office. | Standard Documents | Maintained |
| 18 | Trademark Security Agreement (Short-form) This is a standard short-form trademark security agreement to be used with a principal security agreement in a syndicated secured loan transaction. This trademark security agreement can be attached as an exhibit to the principal security agreement. In addition, this trademark security agreement can be recorded with the US Patent and Trademark Office against US trademark registrations and applications included in the collateral subject to the security interest. This Standard Document has integrated notes with important explanations and drafting tips. | Standard Documents | Maintained |
| 19 | Trademark Settlement Agreement and Release (Pro ... A sample agreement between two or more parties settling a pending litigation or other trademark dispute in the US and releasing future claims. Each trademark settlement agreement must be tailored to suit the particular circumstances of the transaction. This Standard Document is drafted in favor of the owner of senior trademark rights, but aims to be reasonable and includes provisions that are common to negotiated trademark settlement agreements. This Standard Document has integrated notes with important explanations and drafting and negotiating tips. | Standard Documents | Maintained |
| 20 | Trademark Use and Protection Guidelines (Internal ... Internal guidelines for use in educating company employees on how to use and protect company trademarks. These guidelines discuss proper trademark use, including avoiding genericide, using trademark notice symbols properly and actions employees can take to protect company marks from infringement and misuse by third parties. It also provides examples of correct and incorrect use. This Standard Document has integrated notes with important explanations and drafting tips. | Standard Documents | Maintained |
| 21 | US Trademark Registration: Client Reporting Letter A letter for use by attorneys to report the issuance of a federal trademark registration to a client. The letter includes important information on maintenance and renewal deadlines and requirements, incontestability and use of the federal trademark registration symbol. This Standard Document has integrated notes with important explanations. | Standard Documents | Maintained |
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| 1 | IP License Clauses: Effect of Licensor Bankruptcy An effect of licensor bankruptcy clause for use in certain types of intellectual property (IP) licenses and related supplementary agreements. This clause is typically included by and for the benefit of the licensee. It describes the subject matter of the agreement as "intellectual property" as defined by section 101(35A) of the Bankruptcy Code and sets out the parties' intent concerning their rights and obligations under section 365(n) of the Bankruptcy Code if the licensor enters into bankruptcy. The Standard Clause has integrated drafting notes with important explanations and drafting tips. | Standard Clauses | Maintained |
| 2 | IP Rights Clauses for Employee Agreements (Long-form) Long-form clauses for the protection of an employer's intellectual property (IP) rights for use in an agreement with a junior or senior employee who is principally involved in a technical or creative role. These clauses include specific language that aims to protect the employer's IP rights in this context, including treatment of pre-existing intellectual property rights. These Standard Clauses have integrated notes with important explanations and drafting tips. | Standard Clauses | Maintained |
| 3 | IP Rights Clauses for Employee Agreements (Short-form) Short-form clauses for the protection of an employer's intellectual property (IP) rights for use in an agreement with a junior or senior employee who is not principally involved in a technical or creative role. These Standard Clauses have integrated notes with important explanations and drafting tips. | Standard Clauses | Maintained |
| 4 | Transitional Trademark License Clauses (Pro-buyer) Form clauses for a buyer's transitional use of a seller's trademarks after a corporate transaction, drafted with terms favorable to the buyer. These clauses can be used in connection with an asset purchase, stock purchase, merger or auction where the buyer is obtaining the seller's assets, entities or business but is not obtaining long-term rights to one or more of the seller's trademarks after closing. These Standard Clauses have integrated drafting notes with important drafting and negotiation tips. | Standard Clauses | Maintained |
| 5 | Transitional Trademark License Clauses (Pro-seller) Form clauses for a buyer's transitional use of a seller's trademarks after a corporate transaction, drafted with terms favorable to the seller. These clauses can be used in connection with an asset purchase, stock purchase, merger or auction where the buyer is obtaining the seller's assets, entities or business but is not obtaining long-term rights to one or more of the seller's trademarks after closing. These Standard Clauses have integrated drafting notes with important drafting and negotiation tips. | Standard Clauses | Maintained |
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| 1 | Challenging a Comparative Advertisement Checklist A Checklist setting out five key methods for challenging a comparative advertisement and identifying issues to consider in determining which method (or methods) to pursue. | Checklists | Maintained |
| 2 | Creating an Effective Trademark Anti-counterfeiting Program ... A checklist setting out the basic components of an effective trademark anti-counterfeiting program for US trademark owners. | Checklists | Maintained |
| 3 | Registering a Trademark Checklist A Checklist setting out the process for registering a trademark in the US with the United States Patent and Trademark Office (USPTO). | Checklists | Maintained |
| 4 | Responding to a Trademark Cease and Desist Letter ... A Checklist of issues that counsel should consider before responding to a trademark cease and desist letter. | Checklists | Maintained |
| 5 | Rights Clearance Checklist A Checklist identifying the main intellectual property and personal rights clearances that may be necessary when creating or using works that may qualify for copyright, trademark and other intellectual property and personal rights protections. Companies must conduct appropriate rights clearance when creating and using these materials to minimize exposure to potential legal action and exposure to liability. | Checklists | Maintained |
| 6 | Trademark Due Diligence in Mergers and Acquisitions ... A checklist for buyer's counsel to use when conducting trademark due diligence in an M&A transaction. Topics covered include common trademark due diligence considerations, information and materials to obtain in the due diligence process, analysis of the due diligence materials and the preparation of the trademark due diligence report. | Checklists | Maintained |
| 7 | Trademark License Checklist A Checklist of common issues that a trademark licensor should consider when starting a licensing program, choosing a licensee and entering into a trademark license agreement. | Checklists | Maintained |
| 8 | Trademark Litigation: Likelihood of Confusion Tests by Circuit ... A chart of the multi-factor tests used to analyze likelihood of confusion in the twelve regional federal circuits in trademark infringement and unfair competition cases under the Lanham Act and to assess likelihood of confusion in the Federal Circuit in appeals from decision of the Trademark Trial and Appeal Board. The chart includes leading decisions setting out the tests and important considerations for applying the tests in each circuit. | Checklists | Maintained |
| 9 | Trademark Litigation: Pre-suit Considerations Checklist A Checklist of issues that a trademark owner's counsel should consider before filing trademark litigation in federal district court under the Lanham Act, including claims for trademark infringement, unfair competition and dilution. These issues include the merits and cost of litigation, the need for immediate relief, the client's prospects of collecting on a judgment, the availability of alternative dispute resolution, the advisability of sending a demand letter, subject matter jurisdiction, personal jurisdiction, proper venue, local bar admission and finding and retaining local counsel. | Checklists | Maintained |
| 10 | Trademark Searching and Clearance Information Checklist A Checklist of information and materials that counsel should obtain from a client before conducting trademark searching and clearance in the US. It includes information and materials for assessing the protectability, strength and registrability of a proposed trademark, structuring and analyzing a trademark search, and filing an application for federal registration of the trademark in the US. | Checklists | Maintained |
| 11 | Trademark Settlement Agreement Checklist A Checklist of common issues for trademark owner's counsel to consider when preparing a settlement agreement to resolve a dispute with an alleged infringer. | Checklists | Maintained |
| 12 | US Trademark Application Flowchart: Intent-to-Use ... This flowchart shows the general process for registering a trademark in the United States Patent and Trademark Office through an application based on bona fide intent to use the trademark in commerce. | Checklists | Maintained |
| 13 | US Trademark Application Flowchart: Use-based Application This flowchart shows the general process for registering a trademark in the United States Patent and Trademark Office through an application based on use of the trademark in commerce. | Checklists | Maintained |
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| 1 | IP in business transactions: Japan overview A guide to intellectual property law in Japan. The IP in Business Transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in Business Transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-May-2013 |
| 2 | IP in business transactions: South Korea overview A guide to intellectual property law in South Korea. The IP in Business Transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in Business Transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-May-2013 |
| 3 | IP in business transactions: United Arab Emirates overview A guide to intellectual property law in United Arab Emirates. The IP in Business Transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in Business Transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-May-2013 |
| 4 | Expert Q&A on Developments in the Copyright First-Sale ... An expert Q&A with Joe Petersen of Kilpatrick Townsend & Stockton LLP on recent developments in the scope of the copyright first-sale doctrine. This Q&A discusses the recent decisions in Kirtsaeng v. John Wiley & Sons, Inc. and Capitol Records, LLC v. ReDigi, Inc. and provides practical advice to copyright holders following the US Supreme Court's decision in Kirtsaeng. | Articles | 16-Apr-2013 |
| 5 | IP in business transactions: Italy overview A guide to intellectual property law in Italy. The IP in business transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in business transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Apr-2013 |
| 6 | IP in business transactions: Turkey overview A guide to intellectual property law in Turkey. The IP in business transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in business transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Apr-2013 |
| 7 | IP in business transactions: Australia overview A guide to intellectual property law in Australia. The IP in business transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in business transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Mar-2013 |
| 8 | IP in business transactions: Greece overview A guide to intellectual property law in Greece. The IP in business transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in business transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Mar-2013 |
| 9 | Expert Q&A on Trademark Bullying An expert Q&A with Marc Lieberstein of Kilpatrick Townsend & Stockton LLP on trademark bullying. | Articles | 25-Feb-2013 |
| 10 | IP in business transactions: Indonesia overview A guide to intellectual property law in Indonesia. The IP in business transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in business transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Feb-2013 |
| 11 | Patents, trade marks, copyright and designs in Indonesia ... A guide to intellectual property law in Indonesia. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information. To compare answers across multiple jurisdictions, visit the Patents, trade marks and designs Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Feb-2013 |
| 12 | IP in business transactions: Spain overview A guide to intellectual property law in Spain. The IP in Business Transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in Business Transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Dec-2012 |
| 13 | Webinar: Strategies for Protecting Copyrights and Trademarks ... On October 24, 2012, Practical Law Company, Davis Wright Tremaine LLP and Copyright Clearance Center presented Strategies for Protecting Copyrights and Trademarks Online, a webinar on steps a company can take to address the risks of online copyright and trademark infringement and counterfeiting. You can access the recorded webinar here (registration required to view recorded webinar). You can download the webinar slides by clicking the PDF link below. | Articles | 24-Oct-2012 |
| 14 | Expert Q&A on Keyword Advertising After Rosetta Stone An expert Q&A with Ian C. Ballon of Greenberg Traurig, LLP on the Fourth Circuit's opinion in Rosetta Stone Ltd. v. Google, Inc. and its implications for trademark owners, advertisers and online advertising service providers. | Articles | 25-Jun-2012 |
| 15 | Assignment of copyright: formalities This table summarises the formalities required for the assignment of copyright. This table is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. Please note this project is currently being updated so will not include all available jurisdictions in this subject area. | Articles | 01-Mar-2012 |
| 16 | IP in business transactions: Argentina overview A guide to intellectual property law in Argentina. The IP in Business Transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in Business Transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Mar-2012 |
| 17 | IP in business transactions: Austria overview A guide to intellectual property law in Austria. The IP in business transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. For a full list of recommended IP law firms and lawyers in Austria, please visit PLC Which lawyer? To compare answers across multiple jurisdictions, visit the IP in business transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Mar-2012 |
| 18 | IP in business transactions: Canada overview A guide to intellectual property law in Canada. The IP in business transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in business transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Mar-2012 |
| 19 | IP in business transactions: China overview A guide to intellectual property law in China. The IP in business transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in business transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Mar-2012 |
| 20 | IP in business transactions: Country Q&A tool This tool enables subscribers to search the Country Q&A in the IP in Business Transactions multi-jurisdictonal guide by question and jurisdiction. Simply select the questions and the jurisdictions that you are interested in and click the "submit" button. Please note that the law stated dates for each jurisdiction covered may not be the same. To check the law stated dates for each jurisdiction, please visit the individual article. To view the Main IPRs Country Q&A tool, please click here. | Articles | 01-Mar-2012 |
| 21 | IP in business transactions: France overview A guide to intellectual property law in France. The IP in business transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in business transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Mar-2012 |
| 22 | IP in business transactions: Germany overview A guide to intellectual property law in Germany. The IP in business transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in business transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Mar-2012 |
| 23 | IP in business transactions: Mexico overview A guide to intellectual property law in Mexico. The IP in business transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in business transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Mar-2012 |
| 24 | IP in business transactions: Russian Federation overview A guide to intellectual property law in the Russian Federation. The IP in business transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in business transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Mar-2012 |
| 25 | IP in business transactions: South Africa overview A guide to intellectual property law in South Africa. The IP in business transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in business transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Mar-2012 |
| 26 | IP in business transactions: Switzerland overview A guide to intellectual property law in Switzerland. The IP in Business Transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in business transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Mar-2012 |
| 27 | IP in business transactions: UK (England and Wales) overview A guide to intellectual property law in the UK (England and Wales). The IP in business transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in business transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Mar-2012 |
| 28 | IP in business transactions: United States overview A guide to intellectual property law in the United States. The IP in business transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. To compare answers across multiple jurisdictions, visit the IP in business transactions Country Q&A tool. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Mar-2012 |
| 29 | Generic Top-level Domain (gTLD) Expansion An overview of the new generic top-level domain (gTLD) expansion program, as approved by the Board of the Internet Corporation for Assigned Names and Numbers (ICANN). The program allows public and private organizations to register any term to the right of the dot, such as, .canon, .luxury or .bank. | Articles | 21-Sep-2011 |
| 30 | L'Oréal v eBay: good news for brand owners In a decision that will come as a relief for brand owners, the European Court of Justice has found that eBay can be held to account for infringing activity taking place on its online marketplace, after L'Oréal brought proceedings against eBay and a number of its users for trade mark infringement for the sale of infringing and counterfeit products on eBay's online auction site (L'Oréal v eBay, C-324/09). | Articles | 28-Jul-2011 |
| 31 | Ambush marketing in the UK Ambush marketing is an attempt by an unauthorised party, through deliberate marketing activity, to take advantage of the high media profile of an event, team or individual (often of a sporting nature) at the expense of another company's official association with them, without paying any licence or sponsorship fees. This article looks at ambush marketing in the UK and considers the protections available, practical steps to counter ambush marketing and specific legislation in relation to the London Olympics 2012. This article is part of the PLC multi-jurisdictional guide to IP in Business Transactions. For a full list of contents visit www.practicallaw.com/ip-mjg. | Articles | 01-Mar-2011 |
| 32 | Anti-counterfeiting in the EU: theory and practice The EU has introduced an EU-wide framework for preventing the importation and export of counterfeit goods. This article focuses on trade marks and looks at how the system works in theory and in practice, its implementation in the UK and its effectiveness in achieving its stated goals. This article is part of the PLC multi-jurisdictional guide to IP in Business Transactions. For a full list of contents visit www.practicallaw.com/ip-mjg. | Articles | 01-Mar-2011 |
| 33 | IP in Business Transactions: Belgium A guide to intellectual property law in Belgium. The IP in Business Transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. For a full list of recommended IP law firms and lawyers in Belgium, please visit PLC Which lawyer? This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/iphandbook. | Articles | 01-Mar-2011 |
| 34 | IP in Business Transactions: Hong Kong A guide to intellectual property law in Hong Kong. The IP in Business Transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. For a full list of recommended IP law firms and lawyers in Hong Kong, please visit PLC Which lawyer? This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Mar-2011 |
| 35 | IP in Business Transactions: Ireland A guide to intellectual property law in Ireland. The IP in Business Transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. For a full list of recommended IP law firms and lawyers in Ireland, please visit PLC Which lawyer? This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/iphandbook. | Articles | 01-Mar-2011 |
| 36 | IP in Business Transactions: Norway A guide to intellectual property law in Norway. The IP in Business Transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg. | Articles | 01-Mar-2011 |
| 37 | IP in Business Transactions: Portugal A guide to intellectual property law in Portugal. The IP in Business Transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. For a full list of recommended IP law firms and lawyers in Portugal, please visit PLC Which lawyer? This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/iphandbook. | Articles | 01-Mar-2011 |
| 38 | IP in Business Transactions: Vietnam A guide to intellectual property law in Vietnam. The IP in Business Transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax. For a full list of recommended IP law firms and lawyers in Vietnam, please visit PLC Which lawyer? This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/iphandbook. | Articles | 01-Mar-2011 |
| 39 | New counterfeiting regulations in Italy This article is part of the PLC multi-jurisdictional guide to IP in Business Transactionss. For a full list of contents visit www.practicallaw.com/iphandbook. | Articles | 01-Feb-2010 |
| 40 | Recent developments in European cross-border patent ... Cross-border patent litigation in Europe has been controversial over the last 20 years. Relatively recent case law from the European Court of Justice (ECJ) has made cross-border patent injunction claims nearly impossible but certain other cross-border claims are still possible. This chapter examines what a European cross-border patent dispute is, legal arguments against cross-border patent claims, why cross-border patent injunction claims are now nearly impossible, what cross-border claims remain possible and whether "torpedoes" are still possible. | Articles | 01-Feb-2008 |
| 41 | Tackling counterfeit goods at EU level and in Italy Counterfeiting is a widespread practice that can have serious implications for companies trying to protect their IPRs, and the EU has developed radical legislation to tackle it. Italy, partly due to its strategic position, has increased its intervention to stop counterfeiting, and developed a comprehensive legal framework to combat it. This chapter examines key EC counterfeit goods legislation, Italian criminal procedure and customs detention of counterfeit products and the Italian legal framework on counterfeiting. | Articles | 01-Feb-2008 |
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| 1 | No Preclusive Effect to TTAB's Likelihood of Confusion ... In B&B Hardware, Inc. v. Hargis Industries, Inc., the US Court of Appeals for the Eighth Circuit affirmed the district court's decision that the Trademark Trial and Appeal Board's (TTAB) findings on the likelihood of confusion between the two parties' trademarks should not be given preclusive, collateral estoppel effect. The court also remanded on the matter of attorney fees. | Legal Update: archive | 02-May-2013 |
| 2 | TTAB Cancels Registration Finding Company's Internal Use ... In City National Bank v. OPGI Management GP Inc., the USPTO Trademark Trial and Appeal Board (TTAB) granted a petition to cancel a registration for the mark TREASURYNET for financial information services on the ground of abandonment, finding that the registrant's internal use of the mark for its own benefit was not a use in commerce. | Legal Update: archive | 30-Apr-2013 |
| 3 | Perpetual License Grant Award Did Not Exceed Arbitrator's ... In Timegate Studios, Inc. v. Southpeak Interactive, L.L.C., the US Court of Appeals for the Fifth Circuit reversed a district court's decision to vacate an arbitrator's license-modifying award granting a licensee a perpetual intellectual property license, finding that this remedy furthered the essence of the parties' video game joint development agreement. | Legal Update: archive | 16-Apr-2013 |
| 4 | TTAB: "Retained" Expert Witness Required to Provide Written ... The Trademark Trial and Appeal Board (TTAB) granted the respondent's motion to compel the petitioner to serve an expert written report under Federal Rule of Civil Procedure 26(a)(2)(B), finding that whether a party's witness is "retained or specially employed to provide expert testimony" does not depend on whether the party controls the expert's time or compensates the expert. | Legal Update: archive | 11-Apr-2013 |
| 5 | India accedes to Madrid Protocol India has acceded to the Protocol relating to the Madrid Agreement concerning the International Registration of Marks. | Legal Update: archive | 09-Apr-2013 |
| 6 | Trademarks: Use Them (Properly) or Lose Them A discussion of trademark use and the consequences of nonuse and misuse of trademarks. This Legal Update includes links to relevant resources that examine these issues. | Legal Update: archive | 09-Apr-2013 |
| 7 | TTAB: Stipulation for E-mail Service Cannot Retain First-Class ... The Trademark Trial and Appeal Board (TTAB) rejected a proposed stipulation that would have allowed the parties to an opposition proceeding to accept service by e-mail but retain the five additional days afforded under Trademark Rule 2.119(c) to file and/or serve any responsive documents that would be provided if the original filing was served by first-class mail. | Legal Update: archive | 08-Apr-2013 |
| 8 | USPTO Seeks to Launch “MyUSPTO” Online Portal The United States Patent and Trademark Office (USPTO) is seeking to launch MyUSPTO, an optional central online customer portal that will allow customers to create a portfolio of information that can be used for USPTO transactions. Pursuant to the Paperwork Reduction Act of 1995, the USPTO is seeking public comment on the proposed collection information in connecction with the MyUSPTO portal. | Legal Update: archive | 04-Apr-2013 |
| 9 | TTAB: Color Black for Floral Packaging is Aesthetically ... In In re Florists' Transworld Delivery, Inc., the USPTO Trademark Trial and Appeal Board affirmed the trademark examiner's refusal to register the color black as applied to packaging for flowers and floral arrangements because it is aesthetically functional, and alternatively, it lacked acquired distinctiveness. | Legal Update: archive | 02-Apr-2013 |
| 10 | European Commission publishes proposals for reform of trade ... The European Commission has published proposals for the modernisation of trade mark law in the EU, involving changes to the Trade Marks Directive (2008/95/EC), the Community Trade Mark Regulation (207/2009/EC) and the Trade Mark Fees Regulation (2869/95/EC). (Free access.) | Legal Update: archive | 28-Mar-2013 |
| 11 | Employer's Access of Employee's LinkedIn Account Does Not ... In Eagle v. Morgan, the US District Court for the Eastern District of Pennsylvania granted partial summary judgment in a case involving an employer's alleged wrongful access to and control of a former employee's LinkedIn account. The court granted summary judgment to the employer on the plaintiff's Computer Fraud and Abuse Act (CFAA) and Lanham Act claims, but allowed the plaintiff's state law claims to proceed. This case highlights the importance of instituting and maintaining social media policies addressing the ownership of social media accounts during and following employment. | Legal Update: archive | 13-Mar-2013 |
| 12 | TTAB Issues Precedential Decision on Registrability of Flavors ... In In re Pohl-Boskamp GmbH & Co. KG, the Trademark Trial and Appeal Board affirmed the USPTO's refusal to register the flavor and scent of peppermint for nytroglycerin spray, which treats chest pain and discomfort. | Legal Update: archive | 04-Mar-2013 |
| 13 | ICANN announces launch date of its trade mark clearing ... ICANN has announced that on 26 March 2013 it will launch its trade mark clearing house, a centralised repository for trade mark data, giving access to sunrise registration and a trade mark claims service. | Legal Update: archive | 27-Feb-2013 |
| 14 | ECJ confirms that use of registered mark can infringe earlier ... The ECJ has ruled that the proprietor of a Community trade mark (CTM) can enforce it against infringers even if the infringing acts arise from the exercise of their rights to use a later CTM. (Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza, Case C 561/11, 21 February 2013.) Free access | Legal Update: archive | 21-Feb-2013 |
| 15 | NAD Decision Holds That a Trademark Can Be a Claim ... The National Advertising Division of the Better Business Bureau recently released a decision holding that a trademarked phrase can be considered a claim requiring substantiation. | Legal Update: archive | 07-Feb-2013 |
| 16 | Trademark Enforcement A discussion of key considerations for protecting a trademark through enforcement. This Legal Update includes links to relevant resources that examine these issues. | Legal Update: archive | 29-Jan-2013 |
| 17 | WIPO Changes US Individual Fee for International ... The World Intellectual Property Organization (WIPO) has established new individual fees that are due under the Madrid Protocol when the US is designated in an international application, in a designation subsequent to an international registration or the renewal of an international registration. | Legal Update: archive | 18-Jan-2013 |
| 18 | Supreme Court Applies Voluntary Cessation Doctrine in ... On January 9, 2013, the US Supreme Court affirmed the US Court of Appeals for the Second Circuit's decision in Already, LLC, d/b/a Yums v. Nike, Inc., holding that Nike's covenant not to enforce its AIR FORCE 1 trademark against competitor Already's existing products and any future colorable imitations renders moot Already's action to have the trademark declared invalid. The Court expressly invoked the voluntary cessation doctrine in this decision. | Legal Update: archive | 10-Jan-2013 |
| 19 | WIPO 2011 statistics reveal China as top patent filer WIPO has published its report World Intellectual Property Indicators 2012 on 2011 intellectual property filing statistics. | Legal Update: archive | 07-Jan-2013 |
| 20 | Eleventh Circuit Addresses Standard for Relitigating ... In Miller's Ale House, Inc. v. Boynton Carolina Ale House, LLC, the US Court of Appeals for the Eleventh Circuit affirmed the US District Court for the Southern District of Florida's grant of summary judgment in favor of Boyton, finding, among other things, that Miller's trademark infringement claim was barred by issue preclusion because its mark had previously been ruled generic and Miller's did not show a drastic change in public perception since the previous ruling. | Legal Update: archive | 26-Dec-2012 |
| 21 | Vulgar Double Entendre Mark Constitutes Unregistrable ... In In re Marsha Fox, the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board's decision that, under Section 1052(a) of the Lanham Act, a mark that created a vulgar double entendre could not be registered as a trademark because it comprised unregistrable scandalous matter. | Legal Update: archive | 20-Dec-2012 |
| 22 | Naked Trademark Licensing: Don't Expose Your Brand A discussion of the importance of quality control in trademark licensing and the risks of a naked license. This Legal Update includes links to resources that discuss the issues and provide guidance for drafting quality control provisions in a trademark license. | Legal Update: archive | 18-Dec-2012 |
| 23 | Sixth Circuit Applies Issue Preclusion to Bar Trademark Action In Georgia-Pacific Consumer Products LP v. Four-U-Packaging, Inc., the US Court of Appeals for the Sixth Circuit affirmed the US District Court for the Northern District of Ohio's grant of summary judgment to the defendant Four-U-Packaging on Georgia Pacific's trademark infringement, unfair competition and related claims finding the claims barred by issue preclusion. | Legal Update: archive | 17-Dec-2012 |
| 24 | USPTO Issues Final Trademark Examination Guide on ... After receiving public comments, the USPTO has released a final version of Examination Guide 1-13: Webpage Specimens as Displays Associated with the Goods. The guide is available on the Trademark Examination Guides page of the USPTO website. | Legal Update: archive | 14-Dec-2012 |
| 25 | USPTO to Discontinue Paper Version of Trademark Official ... The USPTO has announced the discontinuation of the paper version of the Trademark Official Gazette. | Legal Update: archive | 12-Dec-2012 |
| 26 | USPTO Makes Consistency Initiative Program Permanent The USPTO announced it has made the Consistency Initiative Pilot Program permanent. The program serves as an instrument for applicants to raise concerns about inconsistent practice within the USPTO. | Legal Update: archive | 04-Dec-2012 |
| 27 | Mexico Joins the Madrid Protocol Mexico has acceded to the Protocol relating to the Madrid Agreement concerning the International Registration of Marks. | Legal Update: archive | 27-Nov-2012 |
| 28 | Trademark Due Diligence A discussion of key trademark due diligence considerations. This Legal Update includes links to relevant resources that examine these issues. | Legal Update: archive | 27-Nov-2012 |
| 29 | WIPO notice on use of Nice class headings in international ... WIPO has issued a notice on the use of Nice Classification class headings in international trade mark applications. | Legal Update: archive | 27-Nov-2012 |
| 30 | Aesthetic Functionality Shields Defendants' Use of "Betty Boop ... In Fleischer Studios, Inc. v. A.V.E.L.A., Inc., the US District Court for the Central District of California, at the direction of the Ninth Circuit, provided the factual and legal bases for its earlier ruling dismissing Fleischer's claims that AVELA infringed its trademark rights in the BETTY BOOP word mark. | Legal Update: archive | 19-Nov-2012 |
| 31 | Eastern District of Pennsylvania Adopts Ninth Circuit's ... In its decision in CollegeSource, Inc. v. AcademyOne, Inc., the US District Court for the Eastern District of Pennsylvania adopted the analysis used by the US Court of Appeals for the Ninth Circuit for assessing likelihood of confusion in cases alleging trademark infringement through the purchase of a competitor's trademark for keyword advertising. | Legal Update: archive | 05-Nov-2012 |
| 32 | USPTO Issues Revised Version of Trademark Manual of ... The US Patent and Trademark Office (USPTO) has issued a revised version of the Trademark Manual of Examining Procedure (TMEP). | Legal Update: archive | 02-Nov-2012 |
| 33 | First Circuit Adopts Progressive Encroachment Doctrine In Oriental Financial Group, Inc. v. Cooperativa De Ahorro y Credito Oriental, the US Court of Appeals for the First Circuit adopted the doctrine of progressive encroachment and ruled that the doctrine defeated the defendant's laches defense in this trademark infringement action. | Legal Update: archive | 22-Oct-2012 |
| 34 | TTAB Rules on Abandonment of Madrid Protocol Mark In SaddleSprings, Inc. v. Mad Croc Brands, Inc., the Trademark Trial and Appeal Board (TTAB) denied a trademark owner's motion to dismiss a petition to cancel the owner's US trademark registration for failure to state a claim upon which relief may be granted. Notably, the TTAB ruled that the continuing validity and subsistence of the owner's underlying international registration did not preclude a claim seeking cancellation, on grounds of abandonment, of its US registration under the Madrid Protocol and Section 66(a) of the Lanham Act. | Legal Update: archive | 18-Oct-2012 |
| 35 | USPTO Seeks Comments on Draft Examination Guide ... The US Patent and Trademark Office (USPTO) has requested comments for its draft Examination Guide: Webpage Specimens as Displays Associated with the Goods. | Legal Update: archive | 03-Oct-2012 |
| 36 | USPTO Issues Final Trademark Examination Guide on ... After receiving public comments, the United States Patent and Trademark Office (USPTO) has released a final version of Examination Guide 3-12: Universal Symbols in Marks. The guide is available on the Manuals, Guides, Official Gazette page of the USPTO website. | Legal Update: archive | 18-Sep-2012 |
| 37 | USPTO Releases New Online Version of the Trademark ... The United States Patent and Trademark Office (USPTO) released a new online version of the 8th edition of the Trademark Manual of Examining Procedure (TMEP), which includes a new search tool among other new features. | Legal Update: archive | 18-Sep-2012 |
| 38 | Eleventh Circuit Rejects Application of Willful Blindness ... The US Court of Appeals for the Eleventh Circuit affirmed in part, reversed in part and vacated in part a district court judgment ruling for the defendant in Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta v. Florida Priory of Knights Hospitallers of the Sovereign Order of St. John of Jersualem, Knights of Malta, The Ecumenical Order. The Eleventh Circuit found that the district court erred in applying a willful blindness standard to trademark fraud claims and in improperly considering only one factor when assessing likelihood of confusion. | Legal Update: archive | 13-Sep-2012 |
| 39 | Louboutin Red Soles Entitled to Trademark Protection ... In Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., the US Court of Appeals for the Second Circuit reversed in part the district court's ruling that Louboutin's red lacquered shoe soles are not entitled to trademark protection. However, the Second Circuit limited protection to red soles that contrast in color with the rest of the shoe, finding that only contrasting uses had achieved secondary meaning sufficient for trademark protection under the Lanham Act. The court affirmed the district court's denial of a preliminary injunction on the basis that YSL's shoe did not use Louboutin's mark, because that shoe was monochrome red with a red sole, outside the scope of what the court found protectable. | Legal Update: archive | 06-Sep-2012 |
| 40 | Trademark License Agreement Qualifies as Executory ... In Lewis Brothers Bakeries Inc. v. Interstate Brands Corp., the US Court of Appeals for the Eighth Circuit affirmed a district court ruling that a trademark license agreement between a debtor-licensor and non-debtor licensee qualified as an executory contract under section 365 of the Bankrupcty Code and therefore could be assumed by the debtor. The court found that both parties to the agreement maintained at least one material obligation under the agreement. | Legal Update: archive | 31-Aug-2012 |
| 41 | Qualified Applicants Will Have Direct Link to Their Trademarks ... Effective September 4, 2012, qualified trademark applicants will, on the date of publication, receive a link to the exact page in the Trademark Official Gazette Publication Confirmation notice where their marks are published. Only trademark applicants who have authorized e-mail communications with the US Patent and Trademark Office will receive this link. | Legal Update: archive | 30-Aug-2012 |
| 42 | Contributory Trademark Infringement Claim Against Amazon ... In an unpublished decision, a California appellate court affirmed the denial of a preliminary injunction against Amazon.com, Inc. The court found that Tre Milano, LLC was unlikely to succeed on the merits of its claims against Amazon for direct and contributory trademark infringement for allowing third parties to sell counterfeits of its product through Amazon's website. | Legal Update: archive | 28-Aug-2012 |
| 43 | Sixth Circuit Finds No Personal Jurisdiction in Online ... In Community Trust Bancorp, Inc. v. Community Trust Financial Corp., the US Court of Appeals for the Sixth Circuit reversed the district court's finding of personal jurisdiction over the defendants. The Sixth Circuit held that the plaintiff failed to prove that its trademark infringement cause of action arose from the defendant's activities in the forum state, namely, allowing a handful of Kentucky customers to access their online bank accounts with the defendants. | Legal Update: archive | 27-Aug-2012 |
| 44 | Federal Circuit Rejects TTAB Descriptiveness Analysis In DuoProSS Meditech Co. v. Inviro Medical Devices, Ltd., the US Court of Appeals for the Federal Circuit reversed a Trademark Trial and Appeal Board (TTAB) ruling on descriptiveness and remanded the matter to the TTAB with instructions to enter judgment cancelling two federal registrations for the marks at issue. | Legal Update: archive | 15-Aug-2012 |
| 45 | USPTO Issues Final Rule Incorporating Nice Agreement ... The United States Patent and Trademark Office (USPTO) has issued a final rule to incorporate classification changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. The changes are listed in the International Classification of Goods and Services for the Purposes of the Registration of Marks, which is published by the World Intellectual Property Organization (WIPO). | Legal Update: archive | 09-Aug-2012 |
| 46 | USPTO: New Initiative for Commenting on Draft Examination ... The USPTO has announced a new initiative to provide constructive input on examination guides before they are finalized and is requesting comments on Draft of Examination Guide 3-12: Universal Symbols in Marks. | Legal Update: archive | 07-Aug-2012 |
| 47 | ECJ rules non-licensee ineligible to register .eu domain on ... The ECJ has ruled that a party which was under contract to a trade mark owner to register a .eu domain on behalf of the trade mark owner but which was not licensed to use the trade mark commercially was not a licensee of prior rights for the purpose of the sunrise provisions of Regulation 874/2004 on the rules on implementing the .eu TLD. (Pie Optiek SPRL v Bureau Gevers SA and another, Case C 376/11, 19 July 2012.) | Legal Update: archive | 19-Jul-2012 |
| 48 | USPTO Issues New Edition of the Trademark Board Manual of ... On July 11, 2012 the USPTO filed a notice announcing its publication of the Trademark Board Manual of Procedure (TBMP), Third Edition, Revision 1. | Legal Update: archive | 11-Jul-2012 |
| 49 | Second Avenue Deli Can Keep INSTANT HEART ATTACK ... On July 6, 2012 in Lebewohl v. Heart Attack Grill LLC the US District Court for the Southern District of New York held that a Manhattan deli's use of the mark INSTANT HEART ATTACK SANDWICH does not infringe a Las Vegas restaurant's registered HEART ATTACK GRILL trademark. The court also approved the parties' proposals for concurrent use of their HEART ATTACK marks and certain TRIPLE BYPASS marks finding that simultaneous use of the marks subject to various conditions would not cause consumer confusion. | Legal Update: archive | 10-Jul-2012 |
| 50 | Trademark Licensee Retains Right to Use Trademark After ... In Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC, the US Court of Appeals for the Seventh Circuit affirmed a bankruptcy court decision that a non-debtor trademark licensee can continue to use the debtor licensor's trademarks even though the debtor licensor rejected the contract containing the trademark license under section 365(a) of the Bankrupcty Code. | Legal Update: archive | 10-Jul-2012 |
| 51 | Federal Circuit Upholds Refusal to Register WAGGIN' STRIPS ... On July 9, 2012, in Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board's refusal to register Midwestern Pet Foods' mark WAGGIN' STRIPS based on likelihood of confusion with Nestle's BEGGIN' STRIPS mark, both for pet treats. In upholding the refusal the Federal Circuit highlighted the differences in the fame standards for likelihood of confusion and dilution and declined to draw a negative inference from Nestle's failure to conduct a consumer confusion survey. | Legal Update: archive | 09-Jul-2012 |
| 52 | First Circuit Adopts Preponderance of Evidence as Standard ... On July 3, 2012, in Fishman Transducers, Inc. v. Paul, the US Court of Appeals for the First Circuit ruled that the preponderance of evidence is the appropriate standard for proving willfulness in trademark infringement and false advertising cases under the Lanham Act. The court also affirmed the district court's denial of damages based on the defendants' profits where the violations were not willful and the plaintiff's and defendants' products were not directly competitive. | Legal Update: archive | 06-Jul-2012 |
| 53 | Non-consumer Confusion May be Relevant to Likelihood of ... On June 27, 2012, in Rearden LLC v. Rearden Commerce, Inc., the US Court of Appeals for the Ninth Circuit found that, in certain circumstances, non-consumer confusion may be relevant to the likelihood of confusion analysis in trademark actions. The court also detailed its test for assessing whether a service mark satisfies the use in commerce requirement for protection under the Lanham Act. | Legal Update: archive | 29-Jun-2012 |
| 54 | Fake Louis Vuitton Bag in The Hangover Part II Protected by ... In a June 15, 2012 opinion, the US District Court for the Southern District of New York granted Warner Brothers Entertainment Inc.'s motion to dismiss Louis Vuitton Malletier, S.A.'s complaint for trademark infringement and unfair competition concerning the use of a knock-off Louis Vuitton bag in the movie, The Hangover: Part II. In this case, applying the test set out in Rogers v. Grimaldi, the court found that the likelihood of confusion was at best minimal and did not outweigh the First Amendment concerns. | Legal Update: archive | 19-Jun-2012 |
| 55 | First Amendment Protects Artistic Depiction of University of ... In University of Alabama Board of Trustees v. New Life Art, Inc., the US Court of Appeals for the Eleventh Circuit affirmed the district court's judgment that an artist's depiction of the University's uniforms in paintings, prints and calendars was not trademark infringement under the Lanham Act. Instead, the Eleventh Circuit held that the First Amendment protected these artistically expressive objects. The Eleventh Circuit reversed and remanded the district court's judgment on the artist's reproduction of these works on mugs and other products, finding there to be issues of fact. | Legal Update: archive | 12-Jun-2012 |
| 56 | Colombia accedes to Madrid Protocol Colombia has acceded to the Protocol relating to the Madrid Agreement concerning the International Registration of Marks. | Legal Update: archive | 30-May-2012 |
| 57 | "Texas Toast" Generic for Croutons: Sixth Circuit In T. Marzetti Co. v. Roskam Baking Co., the US Court of Appeals for the Sixth Circuit upheld a district court decision holding that the term "Texas Toast" is generic when applied to large croutons. The decision is notable for its discussion of evidence considered in assessing whether a term is generic and for distinguishing the Sixth Circuit test for genericness from the test used by other circuits. | Legal Update: archive | 29-May-2012 |
| 58 | Confusion Log is Inadmissible Double Hearsay: Eighth Circuit In First National Bank in Sioux Falls v. First National Bank South Dakota, the US Court of Appeals for the Eighth Circuit held that, at least in certain circumstances, a employee log of instances of marketplace confusion is inadmissible double hearsay. | Legal Update: archive | 29-May-2012 |
| 59 | Gucci Prevails Against Guess? in Long-running Trademark ... In Gucci America, Inc. v. Guess?, Inc., the US District Court for the Southern District of New York awarded Gucci permanent injunctive relief and an accounting of profits of nearly $4.7 million against Guess? and its licensees after finding that certain of the defendants' products infringed and diluted Gucci's trademarks and trade dress. | Legal Update: archive | 22-May-2012 |
| 60 | USPTO Changes Trademark Rules to Improve Accuracy in ... The USPTO published final rules concerning trademark practice to require, on request: (i) additional specimens and other information deemed reasonably necessary to examine a post registration affidavit or declaration of continued use or excusable nonuse in trademark cases, and (ii) more than one specimen for a use-based trademark application, an allegation of use, or an amendment to a registered mark. The USPTO will also implement a pilot program to assess and improve the accuracy of the register. The new rules will go into effect on June 21, 2012. | Legal Update: archive | 21-May-2012 |
| 61 | Sixth Circuit Upholds Trademark for Wax Seal on Bourbon ... In Maker's Mark Distillery, Inc. v. Diageo North America, the US Court of Appeals for the Sixth Circuit upheld that a red dripping wax seal on a bourbon bottle was part of a valid trademark deserving protection from a similar wax seal on another manufacturer's tequila bottle. | Legal Update: archive | 14-May-2012 |
| 62 | US Customs to Seek IP Owners' Help With Suspected Fake ... The US Customs and Border Protection agency (CBP) announced that it will begin contacting IP owners when it stops suspected counterfeit goods at the border. The CBP's new approach reflects its desire to obtain trademark owners' assistance in determining whether goods are counterfeit or genuine. This type of assistance is needed as counterfeiting techniques have become extremely sophisticated, and counterfeit goods represent a serious threat both to consumers and the US economy. | Legal Update: archive | 26-Apr-2012 |
| 63 | Federal Circuit Upholds Refusal to Register Closure Cap ... On April 12, 2012, a divided panel of the US Court of Appeals for the Federal Circuit ruled that a closure cap design for a medical collection tube is functional upholding a Trademark Trial and Appeal Board (TTAB) decision refusing registration of the cap design. | Legal Update: archive | 13-Apr-2012 |
| 64 | Fourth Circuit Reinstates Rosetta Stone v. Google, Addressing ... In Rosetta Stone Ltd. v. Google, Inc., the US Court of Appeals for the Fourth Circuit overturned a district court's grant of summary judgment for Google on Rosetta Stone's claims for direct trademark infringement, contributory trademark infringement and trademark dilution based on Google's sale of Rosetta Stone's trademarks as advertising keywords and use of those trademarks in sponsored advertisements. | Legal Update: archive | 10-Apr-2012 |
| 65 | TTAB Applies Unique Likelihood of Confusion Analysis in ... In In re Strategic Partners, Inc., the Trademark Trial and Appeal Board (TTAB) reversed a trademark examiner's refusal to register a mark, even though the proposed mark is similar to an already registered mark. While the TTAB indicated that confusion would ordinarily be likely, it was persuaded that the mark was entitled to registration because the applicant owns an existing registration for a mark that is substantially similar to its applied-for mark and that has coexisted with the mark cited by the trademark examiner for more than five years. | Legal Update: archive | 10-Apr-2012 |
| 66 | USPTO and NIST Announce New IP Awareness Assessment ... The USPTO and National Institute of Standards and Technology (NIST) Manufacturing Extensions Partnership (MEP) announced in a press release the launch of a new web-based IP Awareness Tool designed to help manufacturers, small businesses, entrepreneurs and independent investors evaluate their intellectual property, including copyrights, patents, trademarks and trade secrets. | Legal Update: archive | 30-Mar-2012 |
| 67 | Second Circuit Holds that Electing Statutory Damages in a ... In Louis Vuitton Malletier S.A., v. Ly USA, Inc., the US Court of Appeals for the Second Circuit held that a plaintiff in a civil trademark counterfeting action under the Lanham Act may recover reasonable attorneys' fees even if it elects statutory damages instead of actual damages. | Legal Update: archive | 29-Mar-2012 |
| 68 | Ninth Circuit Rules on Lanham Act Enhanced Damages ... In Skydive Arizona, Inc. v. Quattrocchi, the US Court of Appeals for the Ninth Circuit reversed a district court's award of enhanced damages for false advertising and trademark infringement under the Lanham Act, finding that the award was improperly made to punish the trademark infringer. | Legal Update: archive | 19-Mar-2012 |
| 69 | Dastar Interpreted in Internet Video Streaming Case On March 8, 2012, in Zuffa, LLC v. Justin.tv, Inc., the US District Court for the District of Nevada, citing the US Supreme Court's opinion in Dastar v. Twentieth Century Fox Film Corp., dismissed plaintiff Zuffa LLC's claims for infringement of Zuffa's "octagon" fighting arena design mark because the mark was an inherent part of a streaming mixed martial arts video in which it was displayed. The court expressed concern that enforcing Zuffa's rights in a trademark displayed as an inherent part of a copyrighted broadcast would run afoul of the rule of Dastar, which bars trademark protection for copyrightable works. | Legal Update: archive | 13-Mar-2012 |
| 70 | Fourth Circuit Clarifies Laches Standard for Trademark ... On March 8, 2012, in Ray Communications, Inc. v. Clear Channel Communications, Inc., the Fourth Circuit clarified the elements of a laches defense to a trademark infringement action. The case is notable for the court's reasoning concerning when a trademark owner has sufficient knowledge of an infringement to require its pursuit of legal action and the types of proof required to show that a defendant suffered undue prejudice from the plaintiff's delay in bringing suit. | Legal Update: archive | 13-Mar-2012 |
| 71 | ICANN Publishes Thought Paper on Domain Seizures and ... The Internet Corporation for Assigned Names and Numbers (ICANN) published a thought paper to assist parties preparing legal or regulatory actions understand the kind of information top level domain name registration providers will need to respond promptly and effectively to a legal or regulatory order or action. | Legal Update: archive | 09-Mar-2012 |
| 72 | Federal Circuit Extends Rejection of Reasonable Manners ... On March 6, 2012, in In re Viterra Inc., the US Court of Appeals for the Federal Circuit extended its rejection of the reasonable manners standard, which, as a result of this opinion no longer applies to either inter partes oppositions or ex parte examinations. | Legal Update: archive | 07-Mar-2012 |
| 73 | TTAB Rejects a Parody Defense in BLACKBERRY v. ... On February 27, 2012, the Trademark Trial and Appeal Board (TTAB) issued a precedential decision concerning multiple oppositions filed by Research in Motion, owner of the trademark BLACKBERRY, opposing registration of the mark CRACKBERRY on likelihood of confusion and dilution grounds. The TTAB sustained the oppositions and refused to register the CRACKBERRY mark. The TTAB rejected a parody defense to likelihood of confusion and dilution claims. | Legal Update: archive | 01-Mar-2012 |
| 74 | TTAB Addresses Materiality for Geographic Deceptive ... On February 16, 2012, in Corporacion Habanos, S.A. v. Guantanamera Cigars Co., the Trademark Trial and Appeal Board (TTAB) sustained an opposition against an application for the mark GUANTANAMERA for cigars on the ground that the mark was not entitled to registration under the Lanham Act because it was primarily geographically deceptively misdescriptive. The TTAB addressed at length the standard and evidentiary considerations for establishing the materiality element of the test for geographic deceptive misdescriptiveness in inter partes cases. | Legal Update: archive | 28-Feb-2012 |
| 75 | USPTO Issues Warning on Deceptive Non-USPTO ... The USPTO has posted a warning on the Trademarks home page of its website to highlight the problem of deceptive non-USPTO solicitations that resemble official USPTO communications. | Legal Update: archive | 24-Feb-2012 |
| 76 | Federal Circuit Decision Highlights Famous Mark Standards in ... On February 21, 2012, in Coach Services Inc. v. Triumph Learning LLC, the US Court of Appeals for the Federal Circuit affirmed a Trademark Trial and Appeal Board's (TTAB) decision holding that the owner of the luxury brand COACH failed to establish likelihood of confusion or dilution in an opposition proceeding against the mark COACH for educational software and publications. The decision highlights the different standards in TTAB proceedings for showing that a mark is famous for likelihood of confusion and dilution. | Legal Update: archive | 23-Feb-2012 |
| 77 | Fifth Circuit Affirms Stockpiling of Trademarks for Sale by ... On February 16, 2012, the US Court of Appeals for the Fifth Circuit held in National Business Forms & Printing v. Ford that when a printing business stockpiles and reproduces trademarks for customers but does not use the marks to identify or distinguish its own goods and services, these activities do not constitute use under the Trademark Dilution Revision Act. | Legal Update: archive | 21-Feb-2012 |
| 78 | USPTO Issues Trademark Examination Guide on Unitary ... The USPTO recently released an examination guide and an appendix of examples providing additional considerations to assess whether wording in a mark is a unitary phrase or slogan to help determine if a disclaimer is necessary. This guide serves as a supplement to the Trademark Manual of Examining Procedure. | Legal Update: archive | 06-Feb-2012 |
| 79 | EU countries sign Anti-Counterfeiting Trade Agreement On 26 January 2012, representatives of 22 EU countries signed the Anti-Counterfeiting Trade Agreement, but the European Parliament has still to approve it before it enters into force. | Legal Update: archive | 01-Feb-2012 |
| 80 | Federal Circuit Affirms TTAB Discovery Sanction Cancelling ... The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board's (TTAB) entry of a default judgment cancelling the registration of G THE GOODYMAN as a sanction for the trademark owner's repeated failure to provide discovery in a TTAB cancellation proceeding. The Federal Circuit cancelled the registration despite the trademark owner's filing of a dispositive motion and the court's finding that the owner's discovery obligations were unclear because of the ambiguous language and effect of the case suspension rule (Trademark Rule 2.127(d)). | Legal Update: archive | 30-Dec-2011 |
| 81 | WIPO publishes statistics showing IP filings rebounded in ... WIPO has published a report on the intellectual property filings worldwide in 2010, which suggests that filings rebounded strongly after a decline in 2009. | Legal Update: archive | 22-Dec-2011 |
| 82 | TTAB Finds Settlement Agreement Persuasive in Concurrent ... In Holmes Oil Co. v. Myers Cruizers of Mena, Inc., the TTAB discussed its standard for whether it will implement a consent agreement between two parties with similar trademarks. | Legal Update: archive | 16-Dec-2011 |
| 83 | USPTO Allows Additional E-Mail Addresses to Receive ... The USPTO has begun allowing more than one e-mail address to receive duplicate courtesy copies of USPTO trademark correspondence, in addition to the single official correspondence e-mail address. | Legal Update: archive | 08-Dec-2011 |
| 84 | ECJ judgment on Interflora v Marks & Spencer advertising ... The ECJ has given its judgment on questions referred to it by the High Court that relate to infringement through the unauthorised use of third-party trade marks as advertising keywords (AdWords) on Google's search engine. (Free access.) | Legal Update: archive | 22-Sep-2011 |
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| 1 | ECJ rules on use of Nice Classification class headings in ... The ECJ has ruled on the effect of the use of Nice Classification class headings in trade mark applications. (Chartered Institute of Patent Attorneys v Registrar of Trade Marks, Case C-307/10, 19 June 2012.) | Legal Update: Case Report | 21-Jun-2012 |
| 2 | ECJ rules keywords case can be heard by courts of state in ... The ECJ has held that an action for trade mark infringement based on use of advertising keywords may be heard by the courts of the state in which the advertiser is established in addition to the state of registration of the mark. (Wintersteiger AG v Products 4U Sondermaschinenbau GmbH, Case C‑523/10, 19 April 2012.) | Legal Update: Case Report | 19-Apr-2012 |