We counsel clients how to best protect trademarks, service marks and trade dress. To that end, we research potential marks for conflicting third-party rights. Through this clearance process, clients can avoid issues before investing resources into a mark.
Once cleared, we proceed with securing the mark though domestic and foreign registrations. We are very experienced in filing and prosecuting trademark applications through the USPTO and for the added convenience of clients, we also utilize a network of foreign attorneys to secure registration throughout the world.
One of the primary requirements for trademark registration is that the mark is “Use in Commerce”, or that the mark was used in commerce in connection with a good or service for which it is being registered. The exact definition of the extent of “use” required was vague however.
The important take-away from this case is first, the affirmation the Lanham Act can be applied extraterritorially. Second, the fact that the Lanham Act can reach into areas where other doctrines had previously barred relief, such as the “first-sale doctrine”.
The only rights that are affected by the Brexit are those that are governed by unified EU regulations.
“Disparaging” is Not Grounds to Deny: USPTO Not Allowed to Deny Trademark Registration For Being Disparaging Under §2(a)
This case revolved around an Asian-American rock band with the potentially racially charged name of “The Slants”. The band was denied federal registration of their trademark of the same name, but appealed claiming this was unconstitutional; Federal Circuit Court of Appeals agreed stating, “content-based regulations are presumptively invalid.” Refusal of trademark registration on the grounds of being disparaging is an improper limiting of speech.
The interesting part about this case, and the issue writ large, is the collision of best intentions with undesired consequences. In this case, those consequences are infringements on constitutionally protected speech by the government. This article explores the legal implication of attempts to limit this type of speech, and the implications of this ruling on current litigation
In what appears to be another slew of trademark battles, Red Bull energy drinks has challenged the use of the word “ox” in the brand name of a small craft brewery in Virginia. Red Bull filed its opposition with the USPTO against trademark applications from “Old Ox Brewery,” which opened in the northern Virginia suburb of Ashburn in June 2014. Old Ox Brewery is scheduled to produce over 4,000 kegs of beer by December, set for distribution to only a small area of Virginia.
This is only one example of many instances where larger corporations try to stretch the protection of their marks. In the same token, companies and individuals are beginning to seek trademark protection on seemingly generic terms as a means of revenue generation, creating licensing schemes for widely used song lyrics for example. This article explores both practices, their merits, and general strategies when confronting an issue such as these.