Lewis Roca Blog

Over the years many clients have forwarded to us scam trademark mailings. These mailings come from various official-sounding sources, all of which seek money to allegedly take action regarding the client’s trademarks. However, we have learned of a new, bolder scam.  We have multiple reports of clients receiving telephone calls claiming to be from the United States Patent and Trademark Office (USPTO). The caller claims an immediate payment is needed to maintain a trademark filing, when no such payment is in fact needed. The caller is armed with specific data about the filing (which is all public record) and often calls within a day or two of when an application is filed. One caller even spoofed the USPTO telephone number, and pointed their potential victim to that number on the USPTO website in an effort to legitimize their claims.

On June 21, 2022, The Ohio State University (OSU) obtained a federal trademark registration (U.S. Reg. No. 6,763,118) for the standard character mark THE for “t-shirts, baseball caps, and hats; all of the foregoing being promoted, distributed, and sold through channels customary to the field of sports and collegiate athletics.”

The Metaverse is a virtual environment whose digital attributes persist even if the user is not logged online. What makes the Metaverse more complex is its integration with new technology. Wearable technology such as the Oculus give the Metaverse the capability to virtualize almost all facets of the real world. The similarities to the real world and high functionality can lead to legal issues, including trademark issues.

A new internet frontier is opening, one that is not associated with or controlled by the Internet Corporation for Assigned Names and Numbers (ICANN) and shares little in common with the more well-known and used TLDs such as .com, .net, .org., and .biz.

Social media influencers' name, image and likeness can be protected by “the right of publicity.” Intellectual property attorneys Oliver Bajracharya and Drew Wilson address the legal issues surrounding the right of publicity and how the law views this “right” which differs from state to state.

Can a generic word combined with “.com” ever be eligible for trademark protection in the United States? Yes, under the Supreme Court’s 8-1 decision in United States Patent And Trademark Office v. Booking.com  B.V., issued today.

The USPTO has twice announced extensions of certain trademark and patent deadlines in accordance with the Coronavirus Aid, Relief, and Economic Security Act (CARES Act). The most recent extensions will lapse on May 31, 2020, but the USPTO will continue to offer some relief.

The USPTO has announced extensions of certain patent and trademark deadlines in accordance with the Coronavirus Aid, Relief, and Economic Security Act (CARES Act). Under some conditions, discussed below, deadlines for filing certain patent and trademark related documents and paying certain required fees that would otherwise have been due between March 27 and May 31 may now be filed on or before June 1.

The Supreme Court today resolved a long-standing circuit split, unanimously holding that willfulness is not a requirement for an award of profits in a trademark infringement lawsuit. The case is Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233 (April 23, 2020).

On April 8, 2020, the Federal Circuit vacated the decision of the Trademark Trial and Appeal Board (the "TTAB") - which had denied registration of Forney's multi-color product packaging mark - and held that "color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design."

The USPTO, like many other trademark offices worldwide, has responded to the COVID-19 outbreak by offering extensions of time for certain deadlines related to trademark applications and registrations. A 30-day extension of time is now available.

On February 6, 2020, the United States Patent & Trademark Office (“USPTO”) published an Examination Guide announcing new rules scheduled to go into effect on February 15. Among the new rules, is a requirement that any trademark owner (e.g. applicant, registrant, or party to a litigation matter before the Trademark Trial & Appeal Board) provide a valid email address for correspondence, even if there is an appointed U.S. attorney.

The United States Patent and Trademark Office (USPTO) now requires all foreign-domiciled trademark applicants and registrants to retain licensed counsel in the United States to prosecute trademark applications, file post-registration maintenance documents, file submissions in Madrid applications, or respond to Trademark Trial and Appeal Board (TTAB) proceedings.

A new adult-themed domain name blocking mechanism has announced a promotional price incentive that expires on December 31, 2019. We recommend considering this option for your most valuable marks.

The impetus for the upcoming August 3, 2019 rule change requiring all foreign-domiciled trademark applicants and registrants to retain licensed counsel in the United States is an increase in foreign trademark applicants acting pro se and who are failing to comply with the rules of the United States Patent and Trademark Office (“USPTO”)....

What exactly is an “immoral” or “scandalous” trademark, and should the government be the arbiter of making such a determination? In the second landmark trademark decision in two years, the Supreme Court invalidated the Lanham Act’s prohibition on registering “immoral” or “scandalous” trademarks. Iancu v. Brunetti, 588 U.S. ___ (2019). The Court’s decision expands the …

Trademark and IP litigation attorney Michael McCue shares his thoughts on the growth and importance of IP-related legal services in Nevada with Nevada Business Magazine. Read the full article by clicking here.

The post Protecting Your Intellectual Property – Law Practices Booming appeared first on The Intellectual Property Blog.

For those unfamiliar, Grumpy Cat is a “viral meme” of a “stern-looking house cat named Tardar Sauce.”1 A former Time Warner cable technician first posted the photo of his sister’s “Grumpy Cat” on Reddit in September 2012.

“There is no blue without yellow and without orange.” — Vincent Van Gogh (June 1888). It is extremely difficult to secure trademark rights to a single color. Success stories are few and far between. Recently, General Mills, maker of Cheerios, sought trademark protection for the color yellow “as the predominant uniform background color on product …

Oil States Energy Services LLC v. Greene’s Energy Group, LLC 639 F.App’x 639 (Fed. Cir. 2016), cert. granted (June 12, 2017) (No. 16-712) Supreme Court of the United States The Supreme Court has granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group, LLC to examine the constitutionality of inter partes review proceedings …

California recently enacted a bill prohibiting concessionaires from claiming trademark rights in a mark that “incorporates or implies an association with a state park venue, or its historical, cultural, or recreational resources.” The full text of the California Heritage Protection Act, AB 2249, can be found at https://leginfo.legislature.ca.gov/faces/billNavClient.xhtml?bill_id=201520160AB2249.  The bill, which goes into effect January […]