Trademarks/Trade Marks

A Practice Note discussing potential insurance coverage for patent, trademark and copyright infringement claims as advertising injury claims under commercial general liability (CGL) policies. It addresses the framework for evaluating whether an insurer has a duty to defend or indemnify for a particular claim and common policy exclusions. It also discusses key cases assessing advertising injury coverage for intellectual property (IP) claims.  

A practice note explaining where to find EU law content from a topic page.

A note outlining the changes to the law on the change of a company's name under the Companies Act 2006 (2006 Act). For a link to the 2006 Act, see Companies Act 2006: publication of final text. For general background to the 2006 Act, see Practice note, Companies Act 2006: materials. Part 5 (a company's name) of the 2006 Act came into force on 1 October 2009 apart from objections to company names (sections 69-74, 2006 Act) and trading disclosures (sections 82-85, 2006 Act) which came into force on 1 October 2008.

This note discusses the changes made to the law by the Companies Act 2006 that have implications for intellectual property and information technology. The majority of the relevant changes came into force on 1 October 2009. However, sections of the Act providing for a new right for any person to object to an adjudicator if a company's name is the same as a name associated with the objector in which he has goodwill, or sufficiently similar to such a name that it would be likely to mislead came into force on 1 October 2008.

An overview of comparative advertising law in the US, focusing on the treatment of comparative advertising claims by the Federal Trade Commission and the National Advertising Division of the Council of Better Business Bureaus, and the challenges of contesting comparative advertising claims under the Lanham Act.

A discussion of the Louboutin v. YSL litigation where Christian Louboutin, owner of a federal trademark registration for a laquered red sole for women's designer footwear, sued Yves Saint Laurent under the Lanham Act and New York state law for trademark infringment, dilution and unfair competition arising out of YSL's use of red soles in connection with footwear. The main issue was whether and to what extent a single color may be protected under the Lanham Act as a trademark for fashion items, particularly footwear.

This practice note considers how the UK intellectual property regime applies to employees and consultants.

This Note discusses the main categories of intellectual property (IP) rights in the US and their management, including IP ownership, assignment and licensing.  It also examines the issues that arise surrounding business transactions involving IP, including M&A and finance transactions as well as their basic tax treatment under federal law. 

A Practice Note discussing the protection of trademark and other brand rights on the internet. The Note focuses on cybersquatting claims and remedies under ICANN's dispute resolution services and the federal Anticybersquatting Consumer Protection Act. The Note also addresses other online trademark issues including pop-up advertisements, keyword advertising and screenscraping.

This Note discusses US law relating to the transferability of agreements that contain intellectual property (IP) licenses. It includes guidance on evaluating assignability, dealing with non-assignable licenses in M&A transactions and drafting tips for assignment provisions in favor of a licensor or licensee. It also considers issues relating to the transferability of IP licenses in the context of bankruptcy and secured transactions and change-of-control provisions.

A practice note that discusses legal issues likely to arise on an assignment of intellectual property of any kind.

Analysis of the legal issues raised by the use of metatags and advertising keywords, a practice developed by web businesses in order to exploit the commercial potential of the web. NOTE: We are in the process of updating this note to reflect the High Court's decision in Interflora Inc and another v Marks and Spencer plc and another [2013] EWHC 1291 (Ch), 21 May 2013 (see Legal update, High Court rules Marks & Spencer's use of advertising keywords infringed Interflora's trade marks).

A note summarising the procedure for applying to register a change of name or address of a proprietor, licensee, agent for service of documents or other named person or entity on the UK Trade Marks Register.

A Practice Note explaining the key issues that counsel should consider when preparing a client's response to a cease and desist letter objecting to the client's use of an allegedly infringing trademark.

This Note discusses various forms of sponsorship arrangements and summarizes key legal and business issues to consider when negotiating a sponsorship agreement.

This practice note summarises the relevant statutory provisions and key cases concerning threats to sue for infringement of intellectual property rights and provides practical advice on how these may affect any intellectual property (IP) disputes.

This practice note sets out key legal and commercial considerations for brand-owners wishing to exploit their trade marks, including the licensing and sale of marks, the use of heads of agreement, local law issues, formalities, taxation, and the application of EU and UK competition law.

This practice note summarises the main considerations relating to registration and protection of UK, EU and international trade marks, including a detailed consideration of what can be registered.  It also sets out key issues for the management of a trade mark portfolio.

A Practice Note discussing trademark infringement and dilution claims under the Lanham Act. It addresses infringement claims for federally registered marks under Section 32, infringement claims for unregistered marks under Section 43(a) and dilution claims under Section 43(c). It also outlines available remedies, including injunctive relief and monetary damages, principal defenses, and related Lanham Act and state claims.

A Practice Note discussing the use of online consumer surveys in trademark disputes. It addresses important considerations for selecting, designing and conducting trademark surveys generally and online surveys in particular, including admissibility, respondent selection, universe requirements, stimuli requirements, validation, cost and time considerations. The Note also reviews recent court decisions assessing online surveys. 

This Note discusses searching and clearing a trademark for use in the US and federal registration with the US Patent and Trademark Office (USPTO). It covers the relevant considerations from the initial search request to filing a trademark application, including the purposes and benefits of trademark clearance. It also discusses the searching and clearance process, including the initial collection of information from the client, structuring an effective search, types of searches, the contents and analysis of a full trademark search report, conducting additional investigations, trademark availability opinions, investigations, ways to address potential conflicts and considerations for filing trademark applications.

A Practice Note discussing important aspects of practice and procedure in opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office. Topics covered include the notice of opposition and petition for cancellation, the answer, counterclaims, discovery mechanisms and procedures, pre-trial motions, trial and post-trial procedures.