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Features

Trademark Coexistence May Become a Necessity As Market for Trademarks Grows Image

Trademark Coexistence May Become a Necessity As Market for Trademarks Grows

Ben Thompson & Robert Moorman

Trademark publication can be an anxious part of the application process, with fear of aggressive opposition and costly proceedings looming in the background. But many oppositions, whether they are only threatened or actually filed, afford the applicant a discussion with the opposer that can ultimately be helpful in nonobvious ways.

Features

Due Diligence Can Mitigate Trademark Risk Image

Due Diligence Can Mitigate Trademark Risk

Jared A. Stark

How can one launching a new trademark mitigate the risk of rejection or infringement on the basis of likelihood of confusion with an existing mark? The primary strategy is trademark searching.

Features

Reckless Disregard for the Truth of a Material Statement Made to the USPTO Is Sufficient for Proving the Intent to Deceive Image

Reckless Disregard for the Truth of a Material Statement Made to the USPTO Is Sufficient for Proving the Intent to Deceive

Li-Jen Shen, Cory Smith & George C. Chen

The Trademark Trial and Appeal Board (TTAB) has finally filled a gap left by the U.S. Court of Appeals for the Federal Circuit in the standard for finding deceptive intent when trying to prove fraud on the USPTO.

Features

Trademarks Making Advertising Claims Create Sticky Situations Image

Trademarks Making Advertising Claims Create Sticky Situations

Kyle-Beth Hilfer

The SharkNinja case as well as other well-established precedents serve as powerful reminders to advertisers of certain best-practices in choosing their trademarks or evaluating whether to challenge their competitors' trademarks.

Features

Eighth Circuit Permits Recovery for 'Initial-Interest Confusion' In Trademark Cases Image

Eighth Circuit Permits Recovery for 'Initial-Interest Confusion' In Trademark Cases

Eric Alan Stone & Catherine Nyarady

The likelihood of confusion analysis is often focused on confusion at the time of purchase, but the U.S. Court of Appeals for the Second, Third, Fifth, Sixth, Seventh, Ninth, Tenth and Federal Circuits permit mark holders to allege infringement based on presale, initial-interest confusion. Earlier this year, the Eighth Circuit joined the majority of circuits in permitting recovery for initial-interest confusion in certain circumstances.

Features

Tenth Circuit Adds to Split on Lanham Act's International Applicability Image

Tenth Circuit Adds to Split on Lanham Act's International Applicability

Christopher Jackson & Jessica Smith

the Tenth Circuit held that the Lanham Act can have extraterritorial application, if certain conditions are met. In doing so, the appellate court recognized — and further deepened — an ongoing circuit split.

Columns & Departments

IP News Image

IP News

Howard Shire & Jóna Mays

Nike Seeks $150 Million In Sanctions from Six Chinese Banks, and Loses

Features

USPTO Looking to Beef Up Its Own Trademark Protection Image

USPTO Looking to Beef Up Its Own Trademark Protection

Scott Graham

The agency announced that the Department of Commerce has applied to register the USPTO's marks in a bid to crack down on scammers who are impersonating the agency.

Features

New Report Finds Declines In Copyright, Trademark Suits Image

New Report Finds Declines In Copyright, Trademark Suits

Tom McParland

Copyright lawsuit filings declined significantly over the last two years, according to a new report by Lex Machina, which found that overall cases had dipped from a 2018 peak that was driven primarily by surges in file-sharing litigation.

Features

Counterfeiting vs. Infringement: Second Circuit Weighs In Image

Counterfeiting vs. Infringement: Second Circuit Weighs In

Eric Alan Stone & Catherine Nyarady

In two recent cases, the Second Circuit provided guidance as to the circumstances that may give rise to liability for counterfeiting, as distinct from mere infringement, and addressed liability for contributory infringement for counterfeiting.

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