Organisation: USPTO

Timberland gets the boot: trade dress and its “formidable” burden of proof

The decision highlights that an applicant seeking federal registration for trade dress bears a “formidable” burden of proof to show secondary meaning and distinctiveness.

16 May 2024

TTAB denies Meta Platforms' motion to dismiss in dispute with MyMeta Software

The case highlights the importance of determining the rights upon which an opposition may be brought when filing for an extension of time to oppose.

14 May 2024

“The implications are profound” – USPTO domicile rule heads to Supreme Court

A petition has been filed at the US Supreme Court to take up a case to end the USPTO’s domicile address requirement, with the trademark community urged to consider filing a petition in support of certiorari.

13 May 2024

“Disappointing” – USPTO suffers second data breach of applicant domicile addresses

USPTO confirms it has suffered a “data security incident” exposing the private domicile addresses of trademark users – the second such incident in less than a year.

10 May 2024

Professional wellbeing will be personal priority for new CITMA president

Promoting work-life balance, ensuring attorneys develop effective advocacy skills, and continuing work on address for service and rights of representation are all key priorities for the new Chartered Institute of Trademark Attorneys president, Kelly Saliger.

09 May 2024

Timberland denied trade dress registration over lack of distinctiveness

The Fourth Circuit has upheld a district court decision to deny footwear manufacturer Timberland trade dress protection for its boot design. The decision highlights the need for direct evidence of a unique, nonfunctional design when applying for protection of this kind.

09 May 2024

CIPO conducts record number of examinations in fight to reduce backlog

A new report from the Canadian Intellectual Property Office shows that trademark examination pendency is reducing – albeit slowly.

08 May 2024

Ninth Circuit clarifies power of district courts to cancel pending applications in infringement spat

In a dispute between two smoking product retailers, the Ninth Circuit has upheld a district court decision to cancel a pending trademark application. The decision sheds light on the jurisdiction of federal courts when it comes to resolving cases by cancelling pending applications.

02 May 2024

Why the USPTO’s Lawful Use rule is well past its prime

In this week’s opinion, Ritter Spencer Cheng’s Chelsie Spencer argues that, by insisting that cannabis-related marks must be for use in lawful commerce, the USPTO is overstepping its statutory authority and applying its own rules inconsistently.

27 April 2024

IP budgets forecast to rise in 2024; trademark clearance to cause headaches for in-house teams

A new impact study by UnitedLex shows that most US in-house and law firm IP practitioners expect IP filings and investment to increase in 2024, but trademark clearance and office action responses could be sources of operational drag.

18 April 2024