Native American tribes permitted to add tribal insignias in the USPTO’s database for free

Official tribal insignias of federally or state-recognized American Indian and Alaska Native tribes can now be included in the USPTO database for no cost.  These marks will be considered when examining pending trademark applications. Click here for full article

Overview of the Trademark Modernization Act

The recent COVID-19 relief bill included a number of changes to trademark law.  The Trademark Modernization Act has now been signed into law and allows third parties to:  File Petitions for Expungement or Reexamination Submit evidence supporting a refusal to register a trademark Click here for full article and additional changes to the law

Do the Scots own BURNS NIGHT?

The Scotch Whisky Association recently filed an opposition to the mark BURNS NIGHT filed by an Atlanta distiller of American malt whiskey.  The Association claims that BURNS NIGHT is “highly evocative of Scotland when used on a whisky product,” and is likely to cause a consumer to believe that the spirit being purchased is aContinue reading “Do the Scots own BURNS NIGHT?”

What Constitutes a Counterfeit?

Rolex has recently filed suit against laCalifornienne for allegedly dealing in fake watches. LaCalifornienne has been adding non-Rolex sanctioned dials, crystals, and other accessories to pre-owned Rolex® watches and reselling them as genuine Rolex® watches.  Rolex considers any watch that includes a non-Rolex part to be a counterfeit. Rolex filed a similar case against aContinue reading “What Constitutes a Counterfeit?”

Can the Owner of a Building Control Reproductions of its Likeness?

Canadian Parliament is considering whether building owners can control the reproduction of a famous building’s likeness.  Author James Bow was set to release a new book featuring a cover-art collage which included an image of the CN Tower, a large radio antenna and tourist attraction located in Toronto.  A representative from CN Tower requested theContinue reading “Can the Owner of a Building Control Reproductions of its Likeness?”

Trademark Scam Letters – Things to Look For

More and more of my clients have been receiving trademark scam letters purporting to be from the United States Patent and Trademark Office.  These letters often appear official in nature and include scary notations such as “CANCELLATION PENDING.”  These companies have defruaded trademark owners of millions. If you have received this type of note, theContinue reading “Trademark Scam Letters – Things to Look For”

“Scandalous” Trademarks on the Heels of Matal v. Tam

Proctor & Gamble has recently filed two trademark applications for  “WTF” and “FML” – two colorful acronyms containing the word “F*CK”.  These marks would have formerly been rejected on the basis that they are “scandalous” or “immoral;”  however, recent decisions validating registration of THE SLANTS (a band with Asian members) and REDSKINS (an NFL team)Continue reading ““Scandalous” Trademarks on the Heels of Matal v. Tam”

Walmart Ordered to pay $95.5M for Trademark Infringement

Walmart was recently ordered to pay Variety Stores after a jury found that the company infringed Variety’s registered trademark BACKYARD. The jury concluded that Walmart’s use of the mark in a line of grilling products constituted willful infringement, resulting in a $95.5M treble damage award. Click here for back story

Is it Safe to Use a “Dead” Trademark?

Cancellation of a trademark registration does not extinguish common law trademark rights. If the owner continues to use the mark after abandonment or cancellation by the USPTO, that owner will still enjoy common law protections allowing for use within the current “zone of commerce.”  While it may possible to register a canceled or abandoned mark,Continue reading “Is it Safe to Use a “Dead” Trademark?”