USPTO Requires Non-US Trademark Applicants to Retain US-Licensed Attorneys The U.S. Patent and Trademark Office (USPTO) has announced new rules that went into effect 3 August 2019. Under the new rules, all filings, including new applications and renewal applications, filed by a person or entity not domiciled in the U.S. must be filed by an attorney licensed to practice...
ArticlesIntellectual PropertyJohn E. Ottaviani Comments In World Trademark Review on “Return To Normal” In Trademark Filings
August 9, 2019
As he did earlier this month, John E. Ottaviani once again provided his insight to World Trademark Review, analyzing the rollercoaster in filings before the United States Patent and Trademark Office (USPTO). Earlier this month, John discussed the unprecedented surge in trademark filings in advance of a new USPTO rule that went into effect August 3....
Client AlertsIntellectual PropertySaving Costs In the U.S. Trademark Process – Draft The Identification Of Goods And Services Narrowly
July 30, 2019
By John E. Ottaviani One of the most common reasons U.S. trademark applications receive Office Actions is that the identification of goods and services covered by the application is indefinite or too broad. The U.S. Patent and Trademark Office (USPTO) requires that the identification of products and services be very specific. This practice is different...
Client AlertsIntellectual PropertyU.S. Supreme Court Opens The Door To Registering “Immoral” And “Scandalous” Trademarks
June 24, 2019
In a 6-3 decision in Iancu v. Brunetti, the U.S. Supreme Court has declared a provision of the federal trademark law unconstitutional and in violation of the First Amendment protection of free speech. The provision in question permits the U.S. Patent and Trademark Office (USPTO) to refuse to register trademarks that consist of or comprise “immoral”...
Don’t Forget To Preserve Evidence Of Your Bona Fide Intention To Use The Mark Businesses often have misconceptions about trademark issues in the United States. One very common “trap for the unwary” results from the ability to file a trademark application without having to demonstrate that the mark is in use at the time the...
By John E. Ottaviani & Geri Rosman 1. IMMORAL AND SCANDALOUS MARKS. You may have read about this trademark case — ANDREI IANCU v. ERIK BRUNETTI, 18-302 (SCOTUS) — pending before the Supreme Court of the United States (SCOTUS) right now, regarding whether the U.S. Patent and Trademark Office can refuse to register marks that are...
Client AlertsIntellectual PropertyUSPTO Requires Non-US Trademark Applicants To Retain US-Licensed Attorneys
June 10, 2019
By John E. Ottaviani The U.S. Patent and Trademark Office (USPTO) has announced new rules that will go into effect 3 August 2019. Under the new rules, all new applications and renewal applications filed by a person or entity not domiciled in the U.S. must be filed by an attorney licensed to practice before the USPTO. Prior...
Client AlertsIntellectual PropertySaving Time and Costs In The U.S. Trademark Registration Process
May 29, 2019
The complex U.S. trademark registration system makes many trademark owners from other countries reluctant to file national applications or extend international applications to the U.S. One reason often given is the higher cost of obtaining trademark protection in the U.S. due to the statutory requirements and the formalities that must be observed. It is frequently...
Client AlertsIntellectual PropertyNew USPTO Guidelines Provide Little Relief For Trademark Applications For Cannabis-Related Products And Services
May 10, 2019
On May 2, 2019, the U.S. Patent and Trademark Office (USPTO) issued new guidelines as to how the agency will handle trademark applications for marijuana-related, hemp-related and CBD-related goods and services, in light of the federal Farm Bill that became law on December 20, 2018. Unfortunately, the new Guidelines raise as many questions for applicants...
Client AlertsIntellectual PropertyRhode Island Proposes New Consumer Privacy Protection Act
April 1, 2019
By Colin A. Coleman, John E. Ottaviani, or Brian Reilly On March 29, 2019, a bill was submitted to the Rhode Island General Assembly entitled “Consumer Privacy Protection Act – 2019 H 5930” (the Proposed Act). If enacted, the Proposed Act would place more stringent requirements on the collection and retention of consumers’ personal information by a...
