The recent U.S. Supreme Court decision in Iancu v. Brunetti will likely not be the last word on the subject of scandalous trademarks being granted registration. That certainly suggests there is room for further interpretation in the future, especially if Congress elects to amend the Lanham Act. Further, four Justices voiced some degree of concern about scandalous marks being granted registration.
Category - "Trademark"
New US Counsel Rule For Foreign TMs Promises Sea Change
This month’s dramatic announcement by the U.S. Patent and Trademark Office that all foreign domiciled trademark applicants, registrants and parties to USPTO trademark proceedings will now be required to retain U.S. counsel is expected to result in the most significant practical change to domestic trademark prosecution practice in years.
For casual observers, this new rule — set to be effective on Aug. 3, 2019 — may have arrived as an unexpected, or even shocking, development. After all, with this announcement, literally tens of thousands of active, foreign-domiciled participants in the trademark processes of the USPTO will suddenly now require representation by a U.S. attorney, altering years of common practice.
Moreover, the time from announcement to implementation — only 32 days — is remarkably short for agency action of any kind, let alone a new rule set to transform the role of trademark practitioners in relation to a massive class of new clients.
Refresh Your Logo While Keeping Your Old U.S. Trademark Registration
We are tickled pink when we get to work with trademark registrations that issued before we were born. (We won’t say when that was.) It’s nifty to be the steward of a trademark that has stood the test of time and that may endure long after we’ve headed off to the Great Principal Register in the Sky (no Supplemental Register for us, no sirree).
But what if your old, venerable logo is due for some sprucing up? Please don’t immediately assume that a logo refresh means that you will need to start over with a new trademark application and allow your old logo registration to lapse. You may be able to amend your national U.S. trademark registration to cover the most current version of your logo, so long as the new logo isn’t a “material alteration” of the original registered logo. This allows you to preserve your original priority date that is associated with your old registration! (Note: this won’t work for registrations obtained in the USA via the Madrid Protocol. Sorry.)
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Mindful Management of Marks and Money (Or, Spring Cleaning: Do You Really Need to Renew That Trademark Registration?)
This post is for those who gain pleasure from tidying up. It’s springtime here in DC, so let’s roll up our sleeves and declutter! Your trademark portfolio, that is. You’ll gain a sense of accomplishment AND you can humble-brag about your magical money-saving skills.
Tips & Tricks to Trademark Licensing
As the proud owner of a trademark, you will encounter a number of situations that may prompt you or your company to consider granting a trademark license. Navigating the process of selecting a mark, conducting a trademark search and securing a trademark registration is no small feat. Now that you have accomplished these goals, it is important to make sure you are getting the most out of your investment of time, energy and money. A trademark license may be the most effective way to ensure that your trademark rights primarily benefit you and not a third party.
To Claim or Not to Claim … Seniority (Guest Post from EU Firm Cleveland Scott York)
Businesses operating in the European Union may be familiar with the concept of “seniority.” By claiming seniority, an owner of an EU trademark registration may be able to claim prior rights based on existing national trademark registrations in EU member countries. To illustrate when a business might claim seniority, take the following example:
The Seven Secrets of Security Interests
Well, they’re not really secrets. But whether you’re representing the bank taking a security interest, an owner granting one, or a buyer who wants to ensure that outstanding security interests are released before a deal closes, here are a few things to keep in mind when it comes to IP security interests.
Three Reasons NOT to do a Full Trademark Search
What? A trademark lawyer suggesting that you needn’t always conduct a full-scale trademark search before you file a new trademark application? Isn’t that tantamount to driving without a seat belt? Hear us out.
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Correctable Errors in Trademark Owner Names
You’ve acquired a new trademark portfolio. Hooray! But wait … as you’re sorting through the marks you’re now handling, you notice some errors and inconsistencies in the owners’ information.
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The “Don’ts” of IP Due Diligence
Last time we talked about some important Do’s of IP due diligence. But what might the buyer want to avoid during due diligence?
Here are the top 5 Don’ts to consider: