Trademark Overview
Intellectual Property Law Group
What is a trademark? A trademark is any name, logo, shape, color, sound or even .
Federal Trademark Registration -- Just Do It
Tydings & Rosenberg LLP
In today's competitive markeplace, it is becoming increasingly important for merchants and manufacturers to differe.
Protection of Trademarks in Australia
Michael J. Stanton of Coudert Brothers LLP
A trademark may be the most effective and valuable marketing tool of an overseas company doing business in Austral.
New Law Extends Protection to "Famous" Trademarks
Pillsbury Winthrop Shaw Pittman LLP
On January 16, President Clinton signed The Federal Trademark Dilution Act of 1995, which extends protection to ".
Changes to U.S. Trademark Law Under GATT
Pillsbury Winthrop Shaw Pittman LLP
The GATT implementing legistation (GATT Act) contains two amendments to the U.S. Trademark Act, also known as the .
Making Your Mark on the World
Richard M. Berman of Faegre & Benson LLP
This article summarizes the United States Trademark laws and outlines factors a United States trademark owner should be aware of when doing business internationally.
Premature Assignment of Intent-to-Use Application Voids that Application and any Resulting Registration
Dykema Gossett PLLC
Designed to prevent "trafficking" in trademarks, Section 10 of the Trademark Act, 15 U.S.C. ?1060, prohib.
Enforcing a Service Mark or Trademark in the Federal Courts in New Jersey
Richard G. Berger of Schiffman, Abraham, Kaufman & Ritter, P.C.
Enforcement of federal trade and service marks under the Lanham Act, 15 U.S.C. sections 1116 generally involves a c.
Modernizing for the Millenium:The 1999 Amendments to the Trademark Law
John L. Welch of Lahive & Cockfield, LLP
This article provides a comprehensive analysis of the changes to the Trademark Law that will take effect on October 30, 1999.
The Federal Trademark Dilution Act -- Much Hobbled One Year After Victoria's Secret
Ira J. Levy of Goodwin Procter LLP
The purpose of the Federal Trademark Dilution Act is to protect famous trademarks from third party uses. However, with a few particular exceptions, the FTDA has failed to live up to its potential, and has failed to provide owners of famous marks the protection that they rightly or wrongly anticipated.
The Surprising Power of State Law Claims: Recent Cases Serve as Reminder That Federal Acts Need Not Be the Sole Means of Recovery
Ira J. Levy and Jessica L. Rothstein of Goodwin Procter LLP
The Lanham Act (Title 15, USC), the Federal Copyright Act (Title 15, USC) and the Patent Act (Title 35, USC) are all familiar territory for intellectual property practitioners. But a number of recent cases, including most notably Spike Lee v. Viacom, Inc. et al, which many unfamiliar with the available New York State laws dismissed out of hand, serve as an effective reminder of the power of the various state laws.
Recognition of Well-Known Trademarks
Ron Rongwei Cai and Yuping Wang of Davis Wright Tremaine LLP
Most countries do not process applications for recognition of well-known trademarks unless owners of such trademarks have demonstrated a need for such recognition, and most countries do not have a separate or independent application procedure for recognition of well-known trademarks.
U.S. Supreme Court Dilution Case -- Victoria's Secret
Preston C. Regehr of Parsons Behle & Latimer
On March 4, 2003, the U.S. Supreme Court delivered a blow to famous trademarks. In a unanimous ruling against Victoria Secret in its claim against a mom and pop Kentucky store selling lingerie and adult novelties under the brand "Victor's Little Secret", the court required a showing of actual damage from "blurring and eroding the distinctiveness" of the famous mark.
Catch A Tiger By The Tail: Guarding Trademarks As Your Business Expands
Estella S. Gold of White and Williams LLP
While White and Williams can't guarantee that a predatory tiger won't spring from the commercial underbrush to threaten a client?s treasured trademark, some preventive legal medicine can help avoid an unfortunate surprise attack. One prescription is to plan carefully when you use your existing trademark in a new business sector.
Federal Trademark and Local Zoning Laws Collide
L. Gail Gordon of Pillsbury Winthrop Shaw Pittman LLP
by Richard L. Kirkpatrick, Partner (San Francisco Office Trademark Group) L. Gail Gordon, Partner (Los Angeles .
The Use of Trademarks for Resale of Refurbished Goods
David Wolf of Wolf, Greenfield & Sacks, P.C.
The desire for used equipment has spawned in the United States alone a multi-billion dollar industry featuring the sale of pre-owned, refurbished goods. Jewelry, watches, cameras, automobiles, sporting equipment, computers, machinery, medical devices, and medical, office, and restaurant equipment are but a few of the many products purchased as used equipment. Typically such products are cosmetically reconditioned or refurbished, but more serious modifications are often required to condition the product for resale.
Supreme Court Opinion Rules that the Federal Trademark Dilution Act ("FTDA") Requires Proof of Actual Dilution
Bassam N. Ibrahim and Bryce J. Maynard of Burns, Doane, Swecker & Mathis, L.L.P.
In a surprising decision with important ramifications for owners of famous trademarks, the Supreme Court ruled unanimously on March 4, 2003 that the Federal Trademark Dilution Act ("FTDA") requires proof of actual dilution. Mosely v. V Secret Catalogue, Inc., No. 01-1015. Justice Stevens, writing for the Court, concluded that the FTDA "unambiguously requires a showing of actual dilution, rather than a likelihood of dilution."
Defending Levi Strauss: Findlaw Interview with Gregory S. Gilchrist of Townsend and Townsend and Crew
Jiminy C Twu of FindLaw M V
Gregory Gilchrist is a partner in Townsend and Townsend and Crew's San Francisco office. He recently defended Levi Strauss successfully against a class action filed by garment workers in Saipan.
I Know It When I See It: A Practitioner's Guide To Identifying Third Party Trademarks That Are Likely To Dilute
Stacy L. Taylor of Foley & Lardner LLP
Dilution. To a chemist, it refers to the process of reducing the concentration of a solute in solution, usually simply by mixing with more solvent. But to a trademark lawyer, it is the raison de'etre for the Federal Trademark Dilution Act (FTDA), which provides in part that the owner of a famous mark is entitled to relief against another person's commercial use in commerce of a mark, "if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark."
It's No Secret - The Supreme Court Rules on the Federal Trademark Dilution Act
Sandra Edelman of Dorsey & Whitney LLP
The United States Supreme Court does not accept many trademark cases for review, and so on those rare occasions when the Court interprets the Lanham Act, trademark lawyers and their clients are usually eager to read what the Court has to say.
Use It or Lose It: The Importance of Verifying Trademark Use
Elizabeth C. Buckingham and Johanna Sistek of Dorsey & Whitney LLP
A recent trademark administrative decision highlights the importance for in-house counsel and trademark managers of verifying the use of a trademark when obtaining or maintaining a U.S. trademark registration. The penalty for overstating the use of a trademark is losing the application or entire registration, which may turn a trademark owner with senior rights into a potential infringer with junior rights. This article will discuss the Medinol Ltd. v. Neuro Vasx case, and offer practical tips to trademark owners on how to satisfy use requirements.
Free Speech Defeats Barbie Claim
Jennifer A. Van Kirk of Lewis and Roca LLP
The United States Supreme Court recently let stand a Ninth Circuit decision holding that the First Amendment trumps trademark law when an artistic work uses a trademark to poke fun at the product it identifies. Mattel, Inc. v. MCA Records, Inc. 2003 U.S. LEXIS 920 (Jan. 27, 2003).
Intellectual Property in M&A Transactions: What Diligence is Due?
William B. Payne,Scott D. Rothenberger and Jamie N. Nafziger of Dorsey & Whitney LLP
Concern about intellectual property issues in M&A transactions has been growing. The importance of intellectual property and how it will be handled is dependent on the facts of each transaction, but since due diligence is simply an investigation into the status of a business, it includes discovery or confirmation about whatÃÂs right and whatÃÂs wrong as evidenced in patents and trademarks. This article focuses on those due diligence issues.
The Right Stuff to be a Trademark Lawyer
Eric J. Swetsky of Eric J. Swetsky, Barrister & Solicitor
Do you have the legal smarts to figure out how the courts ruled in these tricky cases?
The Pink Panther Goes to Court
Eric J. Swetsky of Eric J. Swetsky, Barrister & Solicitor
A legal case that shows the range of protection given to a "famous" trademark How typical of Clouseau not to be .
The Trademark Trial and Appeal Board is Not "Bullish" On Dilution
Pamela Deese and Rebecca L. Roby of Dorsey & Whitney LLP
In 1999, the Trademark Amendments Act revised the Lanham Act to add dilution as ground for opposing an application or canceling a registration before the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office.
Customs Update: Protecting Trademarks on Gray Market Imports
Pepper Hamilton LLP
This update examines the effect of Lever Bros. Co. v. United States on the importation of gray market goods.