bona fide intent

Intent to Use Trademark Applications: 7 Factors to Consider

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,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,

trademarking a scent

Trademarking a Scent: Hasbro Not Succeeding Yet

It was reported back in March 2017 that Hasbro, Inc., submitted an application to trademark the distinctive scent of Play-Doh, the Hasbro-owned toy modeling clay that we all probably remember playing with as children. Hasbro describes Play-Doh’s smell as “a unique scent formed through the combination of a sweet, slightlyIt was reported back in March 2017 that Hasbro, Inc., submitted an application to trademark the distinctive scent of Play-Doh, the Hasbro-owned toy modeling clay that we all probably remember playing with as children. Hasbro describes Play-Doh’s smell as “a unique scent formed through the combination of a sweet, slightly

7 Lessons in Trademarks: Smashburger/In-N-Out Burger Battle Royale

According to recent news reports, fast-food hamburger chain, In-N-Out Burger (“In-N-Out”) has filed a federal lawsuit alleging trademark infringement against Smashburger, another fast-food hamburger chain. The trademark fight is over names for various burgers. The case has an interesting history and provides some useful lessons about trademark procedure and law.According to recent news reports, fast-food hamburger chain, In-N-Out Burger (“In-N-Out”) has filed a federal lawsuit alleging trademark infringement against Smashburger, another fast-food hamburger chain. The trademark fight is over names for various burgers. The case has an interesting history and provides some useful lessons about trademark procedure and law.

trademark first use in commerce

5 Reasons for Trademark Refusal

The US Patent and Trademark Office will not register a trademark unless it functions as a mark (see 15 U.S.C. §§1051, 1052, 1053, 1127). To do so, the mark must serve as an indicator of the source of the goods, identifying and distinguishing them from other goods and services. This pointsThe US Patent and Trademark Office will not register a trademark unless it functions as a mark (see 15 U.S.C. §§1051, 1052, 1053, 1127). To do so, the mark must serve as an indicator of the source of the goods, identifying and distinguishing them from other goods and services. This points

How Coexistence Agreements Work

In trademark law, coexistence agreements are contracts whereby two trademark owners agree to use their similar marks, but agree to limitations. For example, the two owners might agree that their respective goods or services will be offered in different geographic areas. A consent agreement is a type of a coexistenceIn trademark law, coexistence agreements are contracts whereby two trademark owners agree to use their similar marks, but agree to limitations. For example, the two owners might agree that their respective goods or services will be offered in different geographic areas. A consent agreement is a type of a coexistence

Do I Need To Trademark Under State Law?

Many are familiar with trademark registration under federal law. Some may not know that trademark registration is also available under state laws. In general, registering a trademark under state law is unnecessary, but there are some circumstances in which state trademark registration has value – when federal registration is notMany are familiar with trademark registration under federal law. Some may not know that trademark registration is also available under state laws. In general, registering a trademark under state law is unnecessary, but there are some circumstances in which state trademark registration has value – when federal registration is not

More Details on Matal v. Tam: Are Other Parts of The Lanham Act at Risk?

As we recently discussed here, in June, the US Supreme Court declared the disparagement clause of the Lanham Act unconstitutional as a violation of the free speech clause of the First Amendment. In general, the disparagement clause prohibited registration of trademarks that might disparage a person, groups, or institutions. MatalAs we recently discussed here, in June, the US Supreme Court declared the disparagement clause of the Lanham Act unconstitutional as a violation of the free speech clause of the First Amendment. In general, the disparagement clause prohibited registration of trademarks that might disparage a person, groups, or institutions. Matal

International Trademark Classes: What is the Nice Agreement?

Filing for a trademark through the United States Patent and Trademark Office (“USPTO”) is probably a mysterious process for most people. There are several types of trademark applications and many different filing bases.   Given the importance of a brand to any business, you and your business would be bestFiling for a trademark through the United States Patent and Trademark Office (“USPTO”) is probably a mysterious process for most people. There are several types of trademark applications and many different filing bases.   Given the importance of a brand to any business, you and your business would be best

The Detroit Red Wings’ Trademark Case Against Right Wing “Identitarians”

It is difficult not to talk about the absolute tragedy, disaster, or other-worldliness of the events in Charlottesville, VA. Plenty of smart people have weighed in on its implications and our President’s response. I won’t add to that dialogue. I am here to talk about Charlottesville and…trademark law. As aIt is difficult not to talk about the absolute tragedy, disaster, or other-worldliness of the events in Charlottesville, VA. Plenty of smart people have weighed in on its implications and our President’s response. I won’t add to that dialogue. I am here to talk about Charlottesville and…trademark law. As a

Cannabis Trademark Opposition: A Fanciful Counterfactual Illustration

Parties file oppositions against pending trademark applications for a wide variety of reasons. Often, a party filing an opposition or requesting an extension of time to do so will contact the Applicant before filing or at the same time.  Whether an opposition is expected or not, there are often win-winParties file oppositions against pending trademark applications for a wide variety of reasons. Often, a party filing an opposition or requesting an extension of time to do so will contact the Applicant before filing or at the same time.  Whether an opposition is expected or not, there are often win-win