We all recognize this logo. It goes with three little words – JUST DO IT. In late April 2020, the Trademark Trial and Appeal Board (TTAB) held that Nike’s slogan JUST DO IT is a famous trademark and refused to register the mark JUST DREW IT! for various types of athletic apparel. Nike argued that its JUST DO IT mark …

On April 23, 2020, a unanimous U.S. Supreme Court (“SCOTUS”) ruled that the Lanham Act does not require that a trademark infringer must willfully violate the law in order to award profits in a trademark case. SCOTUS held that while “willfulness” is still an important factor for courts when considering awarding profits, it cannot justify a strict precondition for a …

UPDATED 4/28/2020 Last week on March 31, 2020, the USPTO announced it was providing extensions of time on some trademark deadlines due to circumstances related to the COVID-19 pandemic. Yesterday, the USPTO issued more guidance about its recent announcement.  Some of you may wonder why the USPTO waited so long to provide relief to trademark owners. Until Congress passed the …

In the United States, trademarks are valid so long as they are in continuous use in commerce. What happens if you are not able to use your trademark in association with your registered goods and/or services due to circumstances beyond the trademark owner’s control? Given the current global climate and with more than 50% of the U.S. population currently ordered …

Please stop wasting your money and filing U.S. trademarks to protect the terms COVID, COVID-19 or CORONAVIRUS.  They are not trademarks! As of this morning, there are more than 35 new applications on file, with more than 20 of them all for clothing and apparel items, that claim some type of exclusive branding protection over one of these three terms.  …

Starting in February, all U.S. trademark applicants must provide e-mail address In 2019, the USPTO released many systems and rules upgrades, and not all of them provided increased efficiency. Effective February 15, 2020, all trademark applicants will be required to provide an e-mail address on their trademark applications at the USPTO, regardless of whether they are represented by counsel. According …

Have you recently applied for a trademark with the United States Patent and Trademark Office (USPTO) and received an Office Action, and aren’t sure how to respond or what this means?  An Examiner with the USPTO will review your application to make sure it complies with all rules and regulations.  If there are any issues with your application or your …

Last week the Trademark Trial and Appeal Board denied (in a precedential opinion) the trademark SCOOP on grounds of merely descriptiveness, failure to function as a trademark, and for inadequate specimen provided by the trademark owner.  Since the TTAB opinion was issued as precedential, the details of the opinion provide significant learning and guidelines for all trademark owners and applicants. …

On June 24, 2019, in the Brunetti case, a decision consistent with its 2017 Tam decision (read here), the U.S. Supreme Court in a 6-3 decision held that the U.S. Patent and Trademark Office (PTO) could no longer refuse federal registration that “consists of or comprise immoral or scandalous trademarks” holding that such a refusal by the PTO of such …

UPDATED SEPTEMBER 23, 2019 On July 2, 2019 the United States Patent and Trademark Office (“USPTO”) formally adopted a new rule requiring that all foreign trademark applicants must be represented by U.S. counsel.  The new rule went into effect on August 3, 2019.  Below, we explain the rationale for the new rule and how it affects foreign trademark owners. Summary Beginning …