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A Black Hole in the Distinctiveness Continuum for U.S. Trademark Applications

Marks that border the line that divides descriptive from generic often topple into a virtual “black hole” on the distinctiveness continuum. The owner of such a mark may be required to meet an indefinite threshold of proof to establish with the U.S. Trademark Office that the mark has acquired secondary meaning to consumers as an identifier of source. This article will discuss specific instances in U.S. Trademark practice where this situation...

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Significance of Disclaimers in U.S. Trademark Law

In United States trademark applications, it is not uncommon for an Examining Attorney to issue a disclaimer requirement for descriptive portions of a mark. Disclaimers have particular significance in three steps of the trademark process: the conducting of a clearance search prior to filing an application, the prosecution stage when an Examining Attorney contends a portion of a mark is descriptive, and long after, when a previously-disclaimed...

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Ten Key Considerations on Chinese New Trademark Law

By Matthew D. Asbell and Dongfang Maggie Wang The Trademark Law of the People's Republic of China was recently amended and went into effect on May 1, 2014, though in some cases it applies to violations that occurred prior to the effective date and continue after that time. The main amendments of the law cover trademark registration, opposition, and review, as well as infringement liability. While the current law rectifies some problems that...

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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...

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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...

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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...

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