Recent appellate court decisions have invalidated longstanding trade dress registrations, raising questions about trade dress vulnerabilities. However, despite the precedent of TrafFix and these decisions, there are still ways to acquire robust trade dress rights. Join us for a webinar on Thursday, June 13 at 4:00pm (ET) where Banner Witcoff partner Rich Stockton will walk you through recent trade dress decisions and arm you with strategies to help clients obtain, maintain, and enforce robust trade dress rights. In particular, he’ll cover: Origins and requirements of US trade dress TrafFix&nb ..read more

Deborah Hampton is a seasoned and knowledgeable trademark administrator (TMA), a passionate advocate for TMA rights, is Vice President and Group Officer for the Advocacy Group of INTA, and also serves on the Executive Committee for the Board of Directors. Her strong and powerful voice has made her the first in several fields as well as a role model and mentor for TMAs and others over the years. To help her share her expertise with everyone, she’s generously offered to be interviewed as part of a quarterly series where she answers community questions. Join the Trademark Administrators’ Exchange ..read more

The Patent and Trademark Office The USPTO is hosting a webinar to discuss how legal professionals should use AI tools in practice. For more about this topic, including the ethical implications of AI use, check out this article. How might changes to USPTO patent fees lead to changes in patent strategy? In not a philosophical or an epistemological context but a practical one, the USPTO has issued guidance defining the word “means.” Factor2 Multimedia Systems is alleging patent infringement by the USPTO. I guess now a judge will have to assess Factor2’s claim authentication. Asia L ..read more

This article was originally published on August 11, 2020. It was re-published with updates on April 9, 2024. Trademark and patent filings have many deadlines to track, and it is important for IP professionals to have a reliable docketing system to monitor deadlines. Docketing is particularly important in IP matters, where missing deadlines can result in expensive fees to recover actions. In a worst-case scenario, missing deadlines can result in abandonment of a mark and ultimately a loss of client rights. Read more about the true costs of missing IP deadlines here. With so many different types ..read more

This article was originally published on April 12, 2021. It was published with updates on April 26, 2024. IP and Trademark Docketing Software Cost IP docketing software is a powerful tool that helps attorneys stay on top of their deadlines, organize their trademark, patent, and other filings, and create reports for both internal and external stakeholders. Having an efficient docketing system helps IP professionals maximize profits by reducing the costs of missed deadlines and the time/costs of manual docketing. It is also important from an ethical perspective to understand technology and imple ..read more

Litigating Circumstances This case about Bank of America’s Erica virtual assistant underscores the significance of actual and demonstrable use in commerce. Go here to watch the recording of last week’s wonderful webinar about trademark litigation. Here’s a nice (client-targeted) reminder that successful copyright claims can come with attorney fee awards. Adidas is appealing its defeat in its suit against Thom Browne. I don’t know how many times they’ll try that, but I think the rule is three stripes you’re out. I Object Someone has filed a trademark application for DIDDY DO IT ..read more

A Rare Vintage Chanel is seeking a permanent injunction to prevent secondhand retailer What Goes Around Comes Around from using their trademarks. WGACA is asking a judge to dismiss the injunction, of course. This do-over lawsuit in the UK about a resold counterfeit Hermès Birkin bag is complex and fascinating. The article is a handy second-hand accounting of a second lawsuit about a second-hand handbag. Penn State v. Vintage Brands will hinge on whether ornamental use is an adequate defense against allegations of trademark infringement. AI Where are all the lawsui ..read more

This article was originally published on March 18, 2020. It was republished with updates on March 31, 2024. At its most basic level, trademark docketing is keeping track of statuses and the numerous deadlines associated with trademark applications and registrations. Before the advent of software and databases, docketing would have been done manually with a journal or calendar. Some attorneys still use manual processes like these although most are discouraged for malpractice reasons (more on that here and here). Indeed, most calendaring and journaling today is done electronically. Why do I need ..read more

Fake Me Out There is an artist on Spotify who has released over 2500 songs using over 650 different fake names. Collectively, his songs have a higher play count than does Metallica, and he’s “well on his way to overtaking The Beatles.” Apparently counterfeit goods in Italy bring in a lot of cash for the mafia. The issue is so bad that the EUIPO estimates it costs the fashion sector 1.7 billion Euros per year. This article about fake firms and fake takedown requests is next level. For real. Food for Thought People are burning mad that Momofuku applied for a trademark for&nbs ..read more

Conducting trademark clearance searches is both an art and a science, and it is a fundamental element of an overall trademark strategy. Not all searches are the same in scope or intent, and conveying results to the client in a way that they can understand and act upon takes careful consideration. Join us on Thursday, May 9 at 4:00pm(ET) for a webinar where Saunders & Silverstein LLP attorney Matt Saunders will guide you through selecting the appropriate search strategy for different situations and clearly communicating that strategy to clients in opinion letters. Topics will include: Whic ..read more