Education Center

Category: , | Tags: , , , , , ,

Requirements for Recordal of a U.S. Federal Trademark Registration with U.S. Customs & Border Protection

Owners of U.S. Trademark Registrations may record their registration with U.S. Customs in order to prevent the importation and subsequent sale of counterfeit and/or infringing goods. In order to do so, the registrant must provide the following details: Country of manufacture of goods bearing the genuine trademark. Is the trademark owner a U.S. citizen (corporate or personal)? If not a U.S. citizen, provide the citizenship of trademark...

Read Article

Category: , | Tags: ,

TTAB’s Washington Redskins Decision: the Enforceability and Commercial Impact of Cancelled Trademarks

The cancellation of a U.S. trademark registration on any grounds, including disparagement, does not always mean the end of enforceable rights in the mark. However, cancellation may create both legal and financial repercussions in the United States and abroad, as illustrated in the recent case of Blackhorse v. Pro Football, Inc. The recent cancellation decision included registrations for “REDSKINNETTES,” two “REDSKINS” marks, and three...

Read Article

Category: | Tags: , , , , , , , , , , , , , , ,

SUMMARY OF THE U.S. TRADEMARK APPLICATION PROCESS

Obtaining a trademark registration in the United States is a process consisting of several phases and takes several months to several years, depending on various factors and issues raised. We highlight below the various stages of the application process, including: (I) pre-filing considerations; (II) filing; (III) examination; (IV) publication and opposition; (V) allowance (where applicable); and (VI) registration.  If you require more specific...

Read Article

Category: ,

TTAB upholds mere descriptiveness refusal to register Swatch’s TOURBILLON mark

By Dennis Prahl and Cassidy Merriam In In re The Swatch Group Management Services AG (Serial No 85485359, April 18 2014), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has affirmed, on the ground of mere descriptiveness, a refusal to register the mark TOURBILLON (and design) by The Swatch Group Managements Services AG for “jewellery, horological and chronometric instruments” in Class 14 of the Nice...

Read Article

Category: | Tags: , ,

A Primer on the European Community Trademark

Introduction Trademarks used to be protected in Europe, for the most part, by registering them before the trademark office of each nation of interest. However, trademark registrations obtained under the national laws have sometimes been used as barriers to legitimate free trade within the European Union (EU). The free flow of goods and services between member states is one of the fundamental freedoms enshrined in the Treaty of Rome, which...

Read Article

Category: , ,

An Overview of the BlackBerry v. Typo Products Case

By John Richards, Tommas Balducci, and Luciano RicondoOn January 3, 2014, BlackBerry Limited filed suit against Typo in the Northern District of California, alleging that the Typo iPhone keyboard case infringes BlackBerry's utility patents, U.S. Pat. No. 7,629,964 (the “’964 patent”) and U.S. Pat. No. 8,162,552 (the “’552 patent”), and design patent, U.S. Pat. No. D685,775 (the “D’775 patent”), as well as itsrights in its trade...

Read Article