Recent Developments in US Trademark Law

August 22, 2017

Marta Paul spoke on recent developments in US trademark law at the August practice group lunch. Topics included the Supreme Court’s decision in Matal v. Tam on “disparaging” trademarks, as well as how the USPTO is handling similar parts of the trademark statute in the wake of the decision. More news from the USPTO included a new examination guideline on “merely informational matter” and recent cases from the TTAB. Finally, Marta discussed a recent precedential decision from the Court of Appeal for the Federal Circuit, In re I.AM.SYMBOLIC, LLC, involving likelihood of confusion and the effect of subject matter limitations in the identifications of goods or services used in trademark applications. Download the presentation here.

July 2016 Trademark Prosecution Lunch Update

August 1, 2016

The July 2016 trademark section of the prosecution lunch featured a discussion of the USPTO’s proposal to require submission of additional specimens in trademark applications to ensure that the goods and services listed in the application are accurate. Additionally, the USPTO has issued a proposal to increase fees, including a large increase for paper filing. Recent trademark cases were also discussed, including a review of In re Morgan Brown, in which the TTAB found that trademarks for products which are legal under state law, but illegal under federal law are not registrable. Additional cases regarding descriptiveness (In re North Carolina Lottery) and sufficient evidence needed to show geographic descriptiveness (In re Vili Group Inc.) are also reviewed. The presentation may be downloaded here.

November 2014 Trademark Prosecution Lunch Presentation

December 3, 2014

November’s trademark prosecution practice luncheon included discussion of TTAB proceeding regarding descriptiveness, proving bona fide intent to use, and the “safe distance” rule. The presentation can be downloaded here.

October 2014 Trademark Prosecution Lunch Presentation

November 5, 2014

October’s trademark prosecution practice luncheon included discussion of specimens for service marks, a TTAB decision about “Cinderella” marks, and fraud in use-based trademark applications. The presentation can be downloaded here.

January 2014 Trademark Update

January 31, 2014

Topics covered in this month’s trademark update include a district court ruling that applicants must pay PTO fees when reviewing a decision by the Trademark Trial and Appeal Board (TTAB) regardless of whether the applicant wins or loses, a district court ruling reversing the TTAB’s descriptiveness rejection in Timex Group USA, Inc. v. Focarino (E.D.Va. Dec. 2013), and the TTAB’s ruling against registration of the 668 word mark in In re Prema Jyothi Light, Serial No. 76293326 (2013). The presentation is available for download here.

June 2013 Trademark Prosecution Group Luncheon Update

July 1, 2013

Topics covered in this month’s trademark prosecution luncheon include: a discussion of recent Trademark Trial and Appeal Board (TTAB) decisions Oakville Hills Cellar, Inc. dba Dalla Valle Vineyards v. Vina Casa Tamaya S.A. (evaluating likelihood of confusion) and In re Zico Beverage LLC (creation of a single commercial impression through double entendre), along with a discussion of Facebook Inc. v. LLC (N.D. Ill 2011). You can download the presentation here.

April 2013 Patent and Trademark Prosecution Group Luncheon

April 22, 2013

Patent topics covered in this month’s luncheon include: recent revisions to the USPTO’s rules of professional conduct; obviousness-type double patenting rejections that cannot be overcome by a terminal disclaimer (In re Hubbell); and strategy in design patent filing.

Trademark topics include: the success rate for appealing to the TTAB section 2(e) refusals; an Indiana case pertaining to cybersquatting and cyberpiracy; the new trademark clearing house for gTLDs; and a TTAB decision holding that the color black is aesthetically functional. You may download the presentation from here.

January 2013 Trademark Prosecution Group Luncheon

January 18, 2013

Trademark topics covered in this month’s prosecution group luncheon include: updates to the Nice Agreement 10th edition, a review of comments regarding amending the first filing deadline for declarations of use, and a review of recent TTAB decisions In re Trivascular, Inc., In re Rogowski, and In re Topson Downs of California.

To download a copy of the presentation click here.