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Who Owns Your Trademark?

In Uncategorized by Stacey Kalamaras

The answer is not as simple as you might think.  Ownership is a threshold issue at the USPTO and yet many applicants get this wrong on their application. If the application is filed in the name of the wrong  trademark owner, it may result in your trademark being worth less than the piece of paper it is printed on.  Here, …

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What Is an Office Action?

In Trademarks by Stacey Kalamaras

If you recently filed a trademark application with the USPTO in the past four months, you may have received an Office Action in response to your application.  What is an Office Action?  In its simplest form, an Office Action is a letter from the USPTO addressing any and all informalities with the application.  These can range from very simple procedural …

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What to Do When you Get a Cease & Desist Letter

In General by Stacey Kalamaras

First of all, and most importantly, do not panic.  What is a cease and desist letter, you ask?  Well, a cease and desist letter is a letter from a third party that objects to your use of a trademark (or other form of intellectual property) on the grounds that the third party believes your use of the trademark is so …

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IP TIPS FOR SMALL BUSINESS

In Intellectual Property by Stacey Kalamaras

Recently, I’ve been meeting with many small business owners who have many good questions about intellectual property and whether the federal IP protections apply to them.  The answer is a resounding YES!  If you are a business of any size with something unique to offer your consumer base, then you likely have some sort of brand, logo or slogan that …

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FAIR USE OR INFRINGEMENT?

In Copyrights by Stacey Kalamaras

Last month, the Second Circuit ruled that media-monitoring service TVEyes violated copyright law by re-distributing searchable audiovisual content clips from news outlets, including Fox News Network, reversing an earlier ruling that the service was protected by the fair use doctrine.  The Second Circuit held that TVEyes’ use was transformative, but since the redistribution made available virtually all of Fox News’ …

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What is the Difference Between My Company Name and my Trademarks?

In Trademarks by Stacey Kalamaras

Recently, I’ve been encountering a lot of confusion among business owners as to the difference between their company name (what is registered with the Secretary of State’s Office) and their trademark or brand name.  This can be especially confusing if your company name and your trademark are essentially the same, except for the corporate identity descriptor at the end (for …

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The Importance of Trademark Searching

In Trademarks by Stacey Kalamaras

Congratulations!  You’ve decided on a new name for your new company or brand.  How exciting!  Before you apply for federal trademark protection, it’s important to conduct some type of trademark searching.  But what kind?  Many clients tell me they have already conducted a search of the USPTO records; however, this only provides part of the story.  When we in our …

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U.S. Supreme Court Strikes Down Trademark Disparagement Clause as Unconstitutional

In Trademarks by Stacey Kalamaras

On June 19, 2017, a unanimous U.S. Supreme Court (Judge Gorsuch did not participate in the hearing or decision) held that the U.S. Patent and Trademark Office (PTO) could no longer refuse federal registration of “disparaging trademarks” holding that the “disparagement clause” of the Federal Trademark Act (also known as the Lanham Act) violates the Free Speech Clause of the First …

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Singing the Surname Blues

In Trademarks by Stacey Kalamaras

Last month, the Trademark Trial and Appeal Board (“TTAB” or “Board”) issued a precedential decision, affirming the Trademark Office’s refusal of registration for BELUSHI’S for “travel  reservations” and related services and “hotel…restaurant and catering services” and related services” on grounds that the mark is “primarily merely a surname.” Although the Board admitted in this case the surname is rare, it …

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Wasted Away Again in Marijuanaville?

In Trademarks by Stacey Kalamaras

What do marijuana and margarita have in common?  Well, according to the Trademark Trial and Appeal Board, both are terms that the public associates with representing a similar “state of mind” whether induced by a cocktail or the grassy substance.  Recently, the Board found that the marks MARIJUANAVILLE applied for various clothing items in Class 25 to be confusingly similar …