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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 …

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EXCUSABLE NON-USE OF A TRADEMARK DURING A PANDEMIC

In Trademarks by Stacey Kalamaras

In the United States, trademarks are valid so long as they are in continuous use in commerce. What happens if you are not able to use your trademark in association with your registered goods and/or services due to circumstances beyond the trademark owner’s control? Given the current global climate and with more than 50% of the U.S. population currently ordered …

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PLEASE STOP FILING TRADEMARKS FOR COVID AND CORONAVIRUS

In Trademarks by Stacey Kalamaras

Please stop wasting your money and filing U.S. trademarks to protect the terms COVID, COVID-19 or CORONAVIRUS.  They are not trademarks! As of this morning, there are more than 35 new applications on file, with more than 20 of them all for clothing and apparel items, that claim some type of exclusive branding protection over one of these three terms.  …

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USPTO Requires E-mail Address

In Trademarks by Stacey Kalamaras

Starting in February, all U.S. trademark applicants must provide e-mail address In 2019, the USPTO released many systems and rules upgrades, and not all of them provided increased efficiency. Effective February 15, 2020, all trademark applicants will be required to provide an e-mail address on their trademark applications at the USPTO, regardless of whether they are represented by counsel. According …

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Top Office Action Refusals and Strategies to Get Your Trademark Application Approved

In Trademarks by Stacey Kalamaras

Have you recently applied for a trademark with the United States Patent and Trademark Office (USPTO) and received an Office Action, and aren’t sure how to respond or what this means?  An Examiner with the USPTO will review your application to make sure it complies with all rules and regulations.  If there are any issues with your application or your …

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The “Scoop” on the TTAB’s Latest Trademark Refusal

In Trademarks by Stacey Kalamaras

Last week the Trademark Trial and Appeal Board denied (in a precedential opinion) the trademark SCOOP on grounds of merely descriptiveness, failure to function as a trademark, and for inadequate specimen provided by the trademark owner.  Since the TTAB opinion was issued as precedential, the details of the opinion provide significant learning and guidelines for all trademark owners and applicants. …

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U.S. Supreme Court Strikes Down “Immoral or Scandalous” Clause as Unconstitutional

In Trademarks by Stacey Kalamaras

On June 24, 2019, in the Brunetti case, a decision consistent with its 2017 Tam decision (read here), the U.S. Supreme Court in a 6-3 decision held that the U.S. Patent and Trademark Office (PTO) could no longer refuse federal registration that “consists of or comprise immoral or scandalous trademarks” holding that such a refusal by the PTO of such …