Category: Trademark

Picking a mark to represent your brand can be one of the most important decisions you make. Think about the brands we see everyday. Apple. Coca Cola. Microsoft. These are immediately identifiable both with the company and the products they produce. Just how strong is your trademark? On one end of the spectrum, are descriptive […]

Most nations with fully-developed trademark legal frameworks allow for opposition proceedings with regard to newly filed applications for trademarks. Most jurisdictions, like the United States, provide that opposition proceedings shall occur during the registration process, prior to issuance of the relevant Certificate of Registration. However, about 10 jurisdictions allow for opposition proceedings ONLY post-grant of […]

Trademark protection in the United States is based on “use in commerce.” Sometimes, competing businesses arrive at the same branding concept at about the same time, raising questions of trademark priority. With respect to trademark priority, as discussed below, too much secrecy can be risky. Many businesses legitimately want to shroud in secrecy various aspects […]

Lessons in Trademarking Trade Dress The long-running legal battle between Samsung and Apple over the shape of their respective smart phones provides some interesting lessons regarding trade dress law and how common law trade dress rights work. See news article here. Apple vs. Samsung: Design Patents and Trademarks for Apple’s iPhone In 2007, Apple, Inc. […]

We wrote recently about registering trademarks in China and the importance of not getting “hustled” by trademark squatters. See here. This is a follow-up article proving some additional information on the China system of registering trademarks. There a some similarities and large differences between the China system and the trademark system in the United States. […]

Many people are aware that the Lanham Act allows you to register a trademark. Many are less familiar with the fact that there are two registers: the Principal Register and the Supplemental Register. The Supplemental Register is governed by Sections 23-28 of the Lanham Act, codified at 15 U.S.C. §§ 1091-1096. What is the Supplemental […]

In the United States (U.S.), trademark law is, for the most part, supposed to protect consumers. With this purpose in mind, it makes sense that trademark rights arise as soon as you start using a trademark in commerce in a manner that causes your consumers to view the mark as a source indicator. We refer […]

Trademarking colors has been a complex and confusing legal history question. Color has always been allowed as part of the mark design, but for many years trademarking was denied for stand-alone colors and schemes. Even now the TMEP begins from the principle that “[c]olor marks are never inherently distinctive.” The US Supreme Court finally overcame […]

How does Amazon avoid being held liable for trademark infringement? We can find some answers by examining a case recently filed by Daimler AG, maker of Mercedes-Benz cars, against Amazon. Daimler is alleging direct trademark infringement and unfair competition, but the case will inevitably deal with the legal doctrine of contributory trademark infringement. Facts of […]

As we discussed here, section 1(b) of the Lanham Act allows a person to file a trademark application prior to using the mark in commerce. 15 U.S.C. § 1051(b)(1). To do so, an applicant must have a bona fide intent to use the trademark in commerce, and, as discussed previously, we typically advise that our […]