Insights & Tips
Unfair competition is the same as trademark infringement except without the requirement of the existence of an enforceable trademark. Seriously, unfair competition is the creation of a false impression as to the source, origin, sponsorship or endorseme …
The key issue in determining infringement is whether there is a likelihood of confusion caused by the alleged infringer’s use of the owner’s mark (or something similar). The courts look at several factors in assessing likelihood of confusion. The facto …
If at any time after a mark has been registered, a third party believes that the registration is statutorily invalid, that party may file a petition for cancellation of the registration. Cancellation proceedings are similar to oppositions and are also …
All trademark applications that have been approved for registration are published in a weekly Official Gazette. Any party that believes it will be injured by the issuance of a trademark registration may oppose that registration by filing a Notice of Op …
When the original version of a mark is replaced with a newer or updated version there is a risk that a third party can claim the mark has been abandoned. For purposes of determining priority there is a risk that the new version may be so altered so as …
The owner must take action against third party infringers of the mark. In short the owner must “police” his mark. Failure to prosecute infringers can substantially weaken the strength of the mark and thus the owner’s ability to stop future unauthorized …
While a trademark can be licensed to another by the owner, the owner must exercise control over the quality of the licensee’s goods. Therefore, in order for the owner to license its mark and keep ownership of it at the same time, certain responsibiliti …
Trademark rights can also be lost when the mark is used as the generic name for a product or service and thus ceases to serve its function of identifying the source (and quality) of the product or service. When a trademark owner itself uses the mark as …
Because trademark rights are based on use, when a trademark owner discontinues its use of a mark, this can result in abandonment. However, the fact that use of the mark has stopped does not, by itself, mean that it has been abandoned. In order for a ma …
Unlike copyrights or patents which have a limited life, trademarks, at least theoretically, can exist indefinitely. However, under certain circumstances, trademarks can be “lost.” A trademark is “lost” when it ceases to identify the origin or quality o …
The T and SM symbols are symbols that a trademark owner may use to indicate that a term is considered a trademark (T) or service mark (SM) when the term has not been registered. Use of these symbols puts third parties on notice that trademark rights ar …
The ® symbol may only be used in connection with marks that are registered with the PTO and only when used in connection with the goods or services covered by the registration. The symbol should be displayed next to the word, logo, or drawing which is …
