Trademark Modernization Act: Expungement proceedings.
Regulations implementing the Trademark Modernization Act of 2020 (TMA) went into effect on December 18, 2021. Two ex parte proceedings to cancel unused registered trademarks: expungement and reexamination proceedings provide a faster, more efficient, and less expensive alternative to a contested inter partes cancellation proceeding at the Trademark Trial and Appeal Board (TTAB). These new […]
Can a municipality register a trademark comprised of its own flag, coat of arms or other insignia?
Section 2(b) of the Trademark Act, 15 U.S.C. § 1052(b), prohibits registration on either the Principal or Supplemental Register of a mark that “[c]onsists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.” […]
Parody defense and the case of The Wrigley Co. versus Cannabis Distributor.
Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services. Common defenses to trademark infringement: fair use, nominative fair use, laches, unclean hands and trademark misuse, fraud in obtaining the […]
METAVERSE, WEB3, AND THE NEW FRONTIER OF INTELLECTUAL PROPERTY.
Recently we had an opportunity of participating on the Seminar “METAVERSE, THE NEW FRONTIER OF INTELLECTUAL PROPERTY MYTH OR REALITY? Organized by the Inter-American Association of Intellectual Property in Costa Rica. During 3 intensive days of conferences, by experts in the filed, we learned about the challenges intellectual property owners are facing in this new […]
Trademarks and the Metaverse.
The Metaverse; is a video game, is a virtual world, or something else? Basic definitions of the metaverse indicate that “A metaverse is a network of 3D virtual worlds focused on social connection”. The Metaverse does exist in the virtual world on platforms such as Sandbox, Decentraland, Roblox, and Fortnite. Infringement of Intellectual Property in […]
World Intellectual Property Day
Today, the world celebrates World Intellectual Property Day, a day to applaud entrepreneurs who use their energy, ingenuity, curiosity, and creativity to steer a course towards a better future. Today, we celebrate our clients, who day by day use their energy, ingenuity, curiosity, and creativity to create value for their businesses. Thank you for the […]
Can I use and register an old and abandoned trademark?
It depends! That a trademark registration shows on the Trademark Office databases as “DEAD” do not necessarily mean that they are abandoned or not in use. Under Section 45 of the Act, 15 U.S.C. § 1127, a mark is considered abandoned when “its use has been discontinued with intent not to resume such use,” and […]
Policing your trademarks: Letter of Protest.
Besides registering and using their brands, trademark owners are required to enforce the rights granted under the law. Policing your brand means to monitoring the Trademark Registry and the market for identical or confusingly similar marks. Failure to enforce your trademark rights could mean losing those rights. In the case of monitoring the Trademark Registry […]
Protecting CBD trademarks.
The 2018 Farm Bill, signed into law on December 20, 2018, amended the Agricultural Marketing Act of 1946 (AMA) and changed certain federal authorities relating to the production and marketing of “hemp,”. “These changes include removing “hemp” from the CSA’s definition of marijuana, which means that cannabis plants and derivatives such as CBD that contain […]
Someone has prior use of our mark, what can I do?
In the United States trademark law is based on the common law first to use in commerce theory. “Common law” trademark rights are acquired automatically when a business uses a mark in commerce and are enforceable in state courts. Marks registered with the U.S. Patent and Trademark Office are given a higher degree of protection […]