Trademark Law Updates

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Starbucks v. Wolfe’s Borough Coffee: “Substantial Similarity” Not Required to Prove Dilution by Blurring

By Thomas F. Zuber and Jan Jensen of Zuber & Taillieu LLP

The Second Circuit U.S. Court of Appeals held that the Trademark Dilution Revision Act of 2005 (“TDRA”) does not require proof of “substantial similarity” between the marks in question for a trademark owner to establish dilution by blurring. In Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2nd… More...

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Page 1 of 1 of Trademark Law Summaries » New Statutes, Regulations and Rules

USPTO Revises Trademark Practice Rules on Recognition of Reps, and Changing Correspondence Address

Changes in Requirements for Signature of Documents, Recognition of Representatives, and Changing Correspondence Address  |  37 CFR Parts 2 and 11, Docket No. PTO–T–2008–0021  |  10/26/2009

The United States Patent and Trademark Office (“USPTO,” or ‘‘Office’’) has revised the Trademark Rules of Practice to set forth the requirements for signature of documents filed in the Office, recognition of representatives, and establishing and changing the correspondence address in trademark cases. More...

Amendments to Trademark Rules of Practice to Take Effect on January 16, 2009

Miscellaneous Changes to Trademark Rules of Practice  |  37 CFR Parts 2, 3, 6 and 7, Docket No. PTO–T–2005–0018, RIN 0651–AB89  |  11/17/2008

The United States Patent and Trademark Office (‘‘USPTO’’) is amending the Trademark Rules of Practice to clarify certain requirements for applications, intent to use documents, amendments to classification, requests to divide, and Post Registration practice; to modernize the language of the More...

USPTO To Implement New Rules Governing Disciplinary Proceedings and Agency Practice

Changes to Representation of Others Before the United States Patent and Trademark Office  |  37 CFR Parts 1, 2, 7, 10, 11, and 41 (Docket No.: PTO–C–2005–0013) RIN 0651–AB55  |  8/14/2008

Starting on September 18, 2008, the United States Patent and Trademark Office (“USPTO”)  will implement new rules governing the conduct of disciplinary investigations, issuance of warnings when closing such investigations, disciplinary proceedings, non-disciplinary transfer to disability inactive More...

President Bush Signs into Law Bill on Appointment of Admin Trademark and Patent Judges, But Constitutional Questions Still Linger

To amend Title 35, United States Code, and the Trademark Act of 1946  |  H.R.6362, S.3295  |  8/12/2008

U.S. President George Bush signed into law on August 12, 2008 a bill that transfers back the power to appoint administrative trademark and patent judges from the U.S. Patent and Trademark Office to the Secretary of Commerce, but constitutional questions still linger. Previously, under the More...

Amendments to Rules Implementing the Fastener Quality Act of 1999

Docket No. 070404076–7077–01, RIN 0693–AB57, 15 CFR Part 280  |  6/4/2007

The Director of the U.S. Patent and Trademark Office (USPTO), together with the Director of the National Institute of Standards and Technology (NIST), U.S. Department of Commerce, has issued these amended rules that put into effect the Fastener Quality Act of 1999.  These implementing rules provide More...

Miscellaneous Changes to Trademark Trial and Appeal Board Rules

PTO–T–2005–014, 37 CFR Part 2, RIN 0651–AB56  |  8/1/2007

The United States Patent and Trademark Office (USPTO) of the Department of Commerce has issued amendments to the Trademark Rules of Practice (trademark rules): (1) directing plaintiffs in Trademark Trial and Appeal Board (TTAB) inter partes proceedings to serve on defendants their complaints or More...

Page 1 of 1 of Trademark Law Summaries » New Statutes, Regulations and Rules
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Companies Mentioned

Trademark Law

The following companies are mentioned in Trademark Law Updates:

Collegiate Licensing Company

NTU Electronics, Inc.

Midway Services, Inc.

Internet Specialties West, Inc.

MDCO, Inc.

Custom Manufacturing and Engineering, Inc.

Automated Engineering Corp.

Woofies, LLC d.b.a. Woofie’s Pet Boutique

Louis Vuitton Malletier S.A.

International Trademark Association

Haute Diggity Dog, LLC

JA Apparel Corp.

Houndstooth Corp.

Harringbone Creative Services, Inc.

Mars, Inc.

Chute Gerdeman, Inc.

Tiffany (NJ) Inc.

Tiffany & Co.

eBay, Inc.

Take-Two Interactive Software, Inc.

Rockstar Games, Inc. d.b.a. Play Pen

Volkswagen of America, Inc.

Shokan Coachworks, Inc.

Audi AG

University of Southern California

University of Oklahoma

Smack Apparel Company

Ohio State University

Louisiana State University

All Headline News Corp.

Super Duck Tours, LLP

U.S. Patent and Trademark Office

AHN Media Corp.

Boston Duck Tours, L.P.

Trademark Trial and Appeal Board

OBX-Stock, Inc.

University of Wisconsin System

Spirits International B.V.

Bicast, Inc.

Phoenix Software International, Inc.

Milon-DiGiorgio Enterprises, Inc.

Princess Paper, Inc.

Dessert Beauty, Inc.

ISPWest

Sysco Corp.

The Craig Allen Company, LLC

Payless Shoesource, Inc.

John Allan Company

Ace-Web Internet

Adidas-Salomon AG

Additional Resources

Trademark Law