Trademark

Trademarks help distinguish the source of a product or service from those of others. The Oblon Spivak 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 Spivak’s attorneys were Trademark Examining Attorneys at the U.S. Patent and Trademark Office (USPTO) before joining Oblon Spivak.   Currently, Oblon Spivak boasts of having 4 attorneys who began their careers at the USPTO. As a result of this experience, Oblon Spivak 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 Spivak 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 Spivak Trademark team.  Before joining Oblon Spivak 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 Spivak 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 Spivak’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. 

Trademark Representative Matters

Our client, Iconix Brand Group, is the owner of a diversified portfolio of fashion and home brands that touch every segment of retail distribution from the luxury market to the mass market. Iconix licenses its brands to leading retailers and manufacturers worldwide, including OP for Walmart; JOE BOXER and MOSSIMO for Target: Mudd for Kohl’s; and MATERIAL GIRL (Madonna) for Macy’s; among others. Oblon Spivak’s Trademark group helps protect these valuable marks beginning with due diligence and continuing with counseling, oppositions, management and maintenance of international trademark portfolios, including a significant amount of international licensing work.

Oblon Spivak provides a wide variety of trademark and copyright services within the United States for Heineken, which owns and manages one of the world’s leading portfolios of beer brands and is one of the world’s leading brewers in terms of sales volume and profitability. Its principal international brands are Heineken® and Amstel®, but the group brews and sells more than 200 international premium, regional, local and specialty beers and ciders, including Birra Moretti®, Foster’s®, Strongbow®, Newcastle Brown Ale®, and several others. Our work with Heineken ranges from researching availability of trademarks, client consultations and prosecuting applications to full litigation.

For nearly two decades, Oblon Spivak has represented Sugartown (doing business as Lilly Pulitzer) regarding all intellectual property matters, including trademark clearance, use, registration and enforcement of its marks. Lilly Pulitzer is known for its Palm Beach inspired clothing that is bright, colorful, and “preppy.” The marks that protect the design define the company and represent its most valuable asset.

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...

Wednesday, July 27, 2011

ICANN approved a .XXX top-level domain that is reserved for the adult entertainment industry and delegated ICM Registry to manage the .XXX top-level domain.  Sunrise B is the time when trademark owners and other IP holders not involved in the adult entertainment industry can apply to not be associated with the  .XXX top-level domain....

Tuesday, July 12, 2011

The USPTO today published a notice in the Federal Register regarding a proposed rule change, entitled “Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases”.  Click...

Thursday, May 12, 2011

“Trademark Bullying” -- USPTO reports it is unclear whether big companies are bullying smaller companies using unreasonable litigation tactics, or the threat of expensive litigation, but recommends “private sector” involvement in resolving this potential issue.