Insights & Tips


No. It is true that an internet site may be accessed through the domain name by internet users anywhere in the world. Courts in the United States have ruled that mere registration of a domain does not constitute use of the domain name as a trademark. T …

Category: Intellectual Property Law

A particularly egregious form of trademark infringement is called counterfeiting. Counterfeiting consists of the use of a substantially identical copy of a registered trademark on the same goods or services for which the original mark is registered. Th …

Category: Intellectual Property Law

Section 43(c) of the Lanham Act defines three defenses to a claim of dilution under the federal statute: comparative advertising, noncommercial use, and news reporting and commentary. The comparative advertising defense is conditioned on the challenged …

Category: Intellectual Property Law

Trademark dilution is the use of a mark or trade name in a way that dilutes the distinctive quality of a famous mark. Unlike traditional infringement claims, to establish a claim for dilution, the owner of a famous mark does not need to demonstrate tha …

Category: Intellectual Property Law

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 …

Category: Intellectual Property Law

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 …

Category: Intellectual Property Law

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 …

Category: Intellectual Property Law

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 …

Category: Intellectual Property Law

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 …

Category: Intellectual Property Law

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 …

Category: Intellectual Property Law

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 …

Category: Intellectual Property Law

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 …

Category: Intellectual Property Law

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