Posts by trademarkeditor

WIPO / ICANN Adjudication for Domain Name Disputes

Posted by on Nov 19, 2013

After a great deal of hue and cry, the US government asked the World IP Organization (WIPO) to come up with a way to regulate internet domain name disputes. After much debate, the idea of a non-profit corporation with a mandate to regulate domain names came about.  This corporation was called ICANN: Internet Corporation for Assigned Names & Numbers. ICANN has steadily shed any pretense at oversight or external control.  The US Department of Commerce has repeatedly given it more power and less oversight.  In October, 1999, ICANN approved the Uniform Domain Name Dispute Resolution Policy (“The Policy.”)  This administrative procedure is mandatory in the case...

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International Trademark Protection – The Madrid Protocol

Posted by on Nov 12, 2013

There are multiple ways to protect your brand overseas, but the most commonly referenced method is the Madrid Protocol.  The United States is a signatory to the Madrid Protocol, an international treaty that covers the mutual recognition of trademarks by its various member nations.  In broad scope, it provides a single, relatively convenient way for a trademark holder to obtain protection in multiple nations. Domestic Registration The first basis for international protection is receiving a valid trademark in one’s own country.  Actually the treaty is slightly more complicated than that, because theoretically one could obtain protection in a foreign country and then...

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Trademark Abandonment

Posted by on Nov 5, 2013

Under section 45 of the Lanham Act a mark will be abandoned under certain circumstances: (1) When its use has been discontinued with intent not to resume such use. There are two parts to this element.  “Intent” may be an actual statement, or implied by circumstances.  What continues a discontinuation of use is tougher to determine by implication, but we have a bright line rule that three consecutive years of nonuse is prima facie evidence of abandonment.  Prima facie is a fancy Latin expression generally taken to mean ‘legally sufficient’ but with the caveat that the presumption of sufficiency can be overcome or rebutted by counter-evidence of sufficient...

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David Versus Goliath in Whiskey Bottle Showdown

Posted by on Oct 29, 2013

One of the iconic, uniquely American products out there is Tennessee Whiskey.  With rugged, outlaw roots stemming from the days of moonshining and prohibition but now accepted the world over as a highly sought after beverage, even the term Tennessee Whiskey tends to evoke a certain image, perhaps even a certain nostalgia. Certainly these mental images, or customer associations in trademark-speak, can give rise to legal problems.  One such case was recently filed by Jack Daniel’s, maker of the iconic black-and-white labeled bottles of Sour Mash whiskey found in bars and restaurants the world over.  In their lawsuit for trademark infringement, the holders of the Jack...

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The Trademark Registration Process Part 3

Posted by on Oct 22, 2013

In Part 2 we looked at the process for obtaining Federal registration of a mark.  Today we conclude with some miscellaneous, but still important, issues in trademark registration. State Registration The first is state registration.  State registration is not as ‘strong’ as federal registration, mainly because there isn’t the kind of strong examination for conflicts with prior marks or abandoned or cancelled marks that there is via the USPTO examination.  However, there is one good reason to obtain state trademark registration – the idea of putting others on notice.  State registration is often very fast – a matter of weeks, instead of the six to twelve...

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