Stephanie Schmidt (US)

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TTAB Prohibits Sur-Sur-Rebuttals in Trademark Proceedings

By Stephanie Schmidt (US) on August 21, 2023 Posted in Trademark

In a recent precedential opinion in Monster Energy Company v. Coulter Ventures, LLC, Oppositions Nos. 91233515 (parent), 91233516, 91233517, 91242202, and 91252191 (August 7, 2023), the Trademark Trial and Appeal Board (“TTAB”) shed light on the procedural intricacies of expert reports. The decision focused on sur-rebuttals, sur-sur-rebuttals, and the Board’s authority to manage docket control. … Continue reading

Supreme Court Makes Waves With Abitron Ruling

By Stephanie Schmidt (US) on July 10, 2023 Posted in Trademark

On June 29, the Supreme Court issued its much-anticipated decision in Abitron Austria GmbH, et al., v. Hetronic International, Inc. (No. 21-1043). We wrote about the case history previously here. Briefly, the 10th Circuit had upheld a $90 million jury verdict against Abitron—a former distributor of Hetronic—based in large part on Abitron’s conduct in Europe, … Continue reading

Up in Smoke: TTAB Denies Registration for Cannabis Paraphernalia

By Stephanie Schmidt (US) on May 16, 2023 Posted in Trademark

The Trademark Trial and Appeal Board (“TTAB”) at the United States Patent and Trademark Office (“USPTO”) recently issued a precedential opinion concerning the registration of marks used in connection with goods deemed “drug paraphernalia” under the Controlled Substances Act (“CSA”). The decision, In re Abax Distributing LLC, involved two trademark applications for the mark BAKKED … Continue reading

Apple’s Tacking Attempt in Trademark Opposition Hits a Sour Note

By Stephanie Schmidt (US) on April 17, 2023 Posted in Trademark

On April 4, in Bertini v. Apple Inc., the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) clarified the limitations of tacking and its application in establishing priority in trademark disputes. This case sets an important precedent for tacking use of a mark in the trademark registration context and highlights the limitations of … Continue reading

TTAB Begins Pretrial Conference Pilot Program

By Stephanie Schmidt (US) on April 5, 2023 Posted in Trademark

This week, the United States Patent and Trademark Office (USPTO) introduced a new pilot program for holding Final Pretrial Conferences (FPC) in certain inter partes disputes (i.e., oppositions and cancellations) before the Trademark Trial and Appeal Board (TTAB). The goal of the pilot, according to the USPTO, is “to save time and resources of parties … Continue reading

Do Not Be Fooled (Part 2): USPTO Issues Warning of Spoof Calls from Scammers

By Stephanie Schmidt (US) on February 3, 2023 Posted in General, Trademark

We have written previously on this blog warning of misleading solicitations. For years, scammers have impersonated the United States Patent and Trademark Office (USPTO) in mailings, seeking payments from trademark owners for nonexistent services, such as trademark renewals. This week, the USPTO warned of a new scheme targeting trademark owners. The USPTO put out an … Continue reading

USPTO shortened office action response deadlines to go into effect in December

By Stephanie Schmidt (US) on October 19, 2022 Posted in Trademark

Starting on December 3, 2022, the timeframe for trademark applicants to respond to office actions at the U.S. Patent and Trademark Office (“USPTO”) will be shortened from six months to three months. This change is the result of the implementation of the Trademark Modernization Act of 2020 (“TMA”). You can find more information on the … Continue reading

USPTO adopts new communication and electronic filing requirements

By Alicia Groos (US) and Stephanie Schmidt (US) on February 13, 2020 Posted in Trademark

The U.S. Patent and Trademark Office (USPTO) has published a new Examination Guide, enacting certain requirements that will go into effect this Saturday, February 15, 2020. Among the new requirements are two important changes. Most significantly, the USPTO will now require all new applications to list an email address for the applicant, even where the … Continue reading

Do not be fooled — Misleading solicitations regarding your trademarks

By Alicia Groos (US) and Stephanie Schmidt (US) on November 30, 2018 Posted in Trademark

Misleading trademark solicitations are becoming an epidemic. Trademark owners beware! If you have registered a U.S. federal trademark, you may know that you must periodically make certain filings to maintain or renew your registration. For most post-registration maintenance filings, there is a one-year window in which to make the filing and a six-month grace period … Continue reading