Trademark

Trademarks help distinguish the source of a product or service from those of others. The Oblon Trademark team has experience from all sides of the issues, from clearance to protection of trademarks and initiating and defending against trademark and related infringement lawsuits.  

Screening, Clearance and Registration

A number of Oblon’s attorneys were Trademark Examining Attorneys at the U.S. Patent and Trademark Office (USPTO) before joining Oblon.   Currently, Oblon boasts of having 4 attorneys who began their careers at the USPTO. As a result of this experience, Oblon knows the workings of the USPTO and the process from the ground up. 

In addition to extensive experience in reviewing searches, filing and prosecuting applications, the Oblon Trademark team is no stranger to the Trademark Trial and Appeal Board (TTAB). Jonathan Hudis is the editor of what has been identified as “a must-have resource”, A Legal Strategist’s Guide to Trademark Trial & Appeal Board Practice, with contributions by others on the Oblon Trademark team.  Before joining Oblon as Of Counsel, Beth Chapman was an interlocutory attorney at the TTAB and then served as an Administrative Trademark Judge. Prior to that, Ms. Chapman was as an Examining Attorney and supervisor at the USPTO. 

Litigation

Through litigation, Oblon assists clients in protecting and enforcing IP rights through trademark, trade dress, copyright, unfair competition and other federal and state laws. Our experience is not limited to protection of IP in these areas—it also includes defending against infringement claims.  

International Representation

We work with associates throughout the world to protect and enforce the trademark rights of our clients wherever the IP brings us. Through our active participation in various organizations, including the International Trademark Association (INTA), the American Intellectual Property Law Association (AIPLA), American Bar Association Section of Intellectual Property Law (ABA IPL) and the Intellectual Property Owners Association (IPO), we create and maintain contacts with a worldwide network of associates. This enables us to identify and work with those associates who can provide quality services at reasonable prices—both of which are important to our clients and us.  

Oblon’s Trademark Team also lectures extensively regarding trademarks dealing with issues from clearance to use to registration in the U.S. and elsewhere– in addition to authoring numerous articles, which can be located under the resources tab. 

Wednesday, January 21, 2015

     In the U.S., priority in trademark rights is awarded to the company that first uses its mark in commerce.  Under certain limited circumstances, a trademark owner can make certain modifications to its mark over time without losing priority.  That is, the user of a new mark may...

Tuesday, January 13, 2015

The U.S. Teams Up with the Native Americans Against Pro-Football, Inc.

A Notice of Intervention was filed on January 9, 2015 by the Solicitor General to defend the constitutionality of Section 2(a) of the Lanham Act, 15...

Monday, December 29, 2014

The World Intellectual Property Organization (WIPO) issued a warning on December 22, 2014, that an entity calling itself World Intelligent Property Office is sending letters to owners of international registrations and their representatives...

Thursday, December 04, 2014

Beginning January 2015, the Japanese Patent Office (JPO) will begin providing the World Intellectual Property Organization (WIPO) with registered trademark gazettes from January 2000 going forward. It is expected that the addition of Japanese pending and registered marks will facilitate global branding strategies.

Wednesday, November 26, 2014

The Defendants’ Motion to Dismiss the Appeal filed by Pro-Football Inc. was denied. On November 25, 2014, the Court ruled that the Native American Defendants are parties of interest and there is a case and controversy for the Appeal.  As a result, the Native American Defendants will remain players and the “game” before the Eastern District...

Monday, October 20, 2014

In Nationstar Mortgage LLC, v. Mujahid Ahmad (Opposition No. 91177036 decided Sept. 30, 2014), the Trademark Trial and Appeal Board (TTAB) made it clear that Applicants are “obligated to read and understand” what is being signed and “investigate the accuracy of his statements in the application to confirm they had evidentiary support...

Friday, March 28, 2014

            On March 25, 2014, in Lexmark International, Inc. v.  Static Control Components, Inc., Case No. 12-873 (S.Ct., March 25, 2014), the Supreme Court defined and described the test under which a non-competitor may bring a claim for false advertising under Trademark Act Section 43(a), 15 U...

Friday, June 01, 2012

Almost one year ago (July 2011), the USPTO published a proposed Rule to allow Examiners to require additional specimens to support that a registered mark is in use for the goods/services claimed in the registration (See ...

Friday, September 02, 2011

The U.S. Court of Appeals for the Second Circuit upheld the District Court’s decision that neither Patsy’s Italian Restaurant nor Patsy’s Pizzeria, located in New York City, has exclusive rights to the name PATSY’S.  The Court noted that this was the culmination of a...

Thursday, August 18, 2011

As previously discussed here Christian Louboutin S.A. (“Louboutin”) sought a preliminary injunction to prevent Yves Saint Laurent America, Inc. (“YSL”) from marketing any shoes that use the same or a confusingly similar shade of red as...