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What Is a Trademark Opposition and What Should I Do if My Application is Opposed?

In Trademarks by Stacey Kalamaras

A trademark opposition is a type of litigation proceeding at the Trademark Trial and Appeal Board (Board) where a third party can object to your application before it is granted a registration. Essentially, when someone files an opposition against your application, they are telling the USPTO that they would be harmed if your trademark could be registered. What does it …

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Intellectual Property Considerations When Brands Adapt For Racial Justice

In Intellectual Property by Stacey Kalamaras

There are many reasons why brands might need to change their name or undergo a rebranding effort. For the past three months, outcries for racial justice reform has been in the spotlight and many brands have stepped up to ensure their brands and imagery reflect racial equality and inclusiveness for all. Many established brands, however, are not strangers to evolving …

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Understanding the Fair Use Doctrine Under the Copyright Act

In Copyrights by Stacey Kalamaras

Lately, I’ve been seeing a lot of misinformation online and in groups I belong to on the topic of copyright law and the fair use doctrine as a defense to copyright infringement. The people giving this advice are not licensed attorneys, but rather, are fellow business owners who are just trying to help. The problem is they are giving bad …

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Supreme Court: Booking.com is Not a Generic Term

In Trademarks by Stacey Kalamaras

On June 30, 2020, the U.S. Supreme Court (“SCOTUS”) had no reservations in finding that Booking.com is a recognized trademark and not a generic term as the United States Patent and Trademark Office (“USPTO”) had argued. In the highly anticipated 8-1 majority opinion written by Justice Ginsburg, SCOTUS ultimately ruled that the adding of the “.com” top level domain (“TLD”) …

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Coming soon – the GEORGE FLOYD production company? No!

In Trademarks by Stacey Kalamaras

An unrepresented individual filed a trademark application last week for GEORGE FLOYD for “production and distribution of television shows and movies” and his name is not George Floyd, obviously. This kind of opportunism must stop. Since George Floyd’s death, there have also been ten trademark applications filed for I CAN’T BREATHE or close variations thereof, mostly for clothing and surgical …

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U.S. Supreme Court Denies “Defense Preclusion” Doctrine Coined by the Second Circuit

In General by Stacey Kalamaras

On May 14, 2020, the U.S. Supreme Court (SCOTUS or Court) denied the “defense preclusion” doctrine coined by the Second Circuit. SCOTUS ended the legal battle that spanned nearly 20 years between Lucky Brand and Marcel Fashions Group, Inc. in Lucky Brand’s favor. The Court was tasked with a case of first impression in deciding whether the legal doctrine of …

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Nike’s Slogan JUST DO IT is a Famous Trademark

In Trademarks by Stacey Kalamaras

We all recognize this logo. It goes with three little words – JUST DO IT. Last week, the Trademark Trial and Appeal Board (TTAB) held that Nike’s slogan JUST DO IT is a famous trademark and refused to register the mark JUST DREW IT! for various types of athletic apparel. Nike argued that its JUST DO IT mark is a …

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U.S. Supreme Court Strikes Down Willfulness Requirement for Trademark Profits

In Trademarks by Stacey Kalamaras

On April 23, 2020, a unanimous U.S. Supreme Court (“SCOTUS”) ruled that the Lanham Act does not require that a trademark infringer must willfully violate the law in order to award profits in a trademark case. SCOTUS held that while “willfulness” is still an important factor for courts when considering awarding profits, it cannot justify a strict precondition for a …

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USPTO Extends Deadlines Amid COVID-19 Pandemic

In Trademarks by Stacey Kalamaras

UPDATED 4/28/2020 Last week on March 31, 2020, the USPTO announced it was providing extensions of time on some trademark deadlines due to circumstances related to the COVID-19 pandemic. Yesterday, the USPTO issued more guidance about its recent announcement.  Some of you may wonder why the USPTO waited so long to provide relief to trademark owners. Until Congress passed the …