Patent applications may be filed by an individual inventor(s) or the assignee of an inventor(s) patent rights. Even under the latter scenario, the application must still include the name of each and every inventor. The Federal Circuit Court of Appeal’s April 2, 2026 decision in Fortress Iron LP V. Digger Specialties, Inc. is reminder that patent applicants should ensure that the application names all of Read More
The Trademark Licensor’s Responsibilities for Maintaining the Licensed Mark’s Active Registration Status
BACKGROUND A trademark or service mark is a distinctive word, phrase, logo, or graphic symbol that allows consumers to identify the manufacturer, merchant, or service provider responsible for providing the goods or services. Basically, a trademark or service mark is a brand. In contrast to inventions and creative works, both of which have an express basis in the Constitution, trademarks are not specifically Read More
The Potential Pitfalls of Intent-To-Use Trademark Applications: Lack of Bona Fide Intent and Ownership Errors
Introduction Mark validity issues for registered marks originating with intent-to-use (1b) applications typically arise during cancellation and trademark infringement proceedings. Questions concerning the validity of registered marks originating from 1b applications may also arise during IP due diligence activities. Here, the potential acquirer of registered trademark rights will want to assure that Read More
STRATEGIC PLANNING FOR PATENT MONETIZATION
This blog is the result of a meeting I recently had with a longtime patent client. When I meet with a patent client who is new to the entrepreneurial world, the discussion involves not only the nature of the invention itself, potential patentability issues, etc. but also matters related to invention monetization. Why? Because patent procurement is an arduous process; entrepreneurs seek patents not as some vanity Read More
Seagen Inc. v. Daiichi Sankyo, et al.: THE IMPORTANCE OF THE WRITTEN DESCRIPTION AND ENABLEMENT REQUIREMENTS IN PATENT LAW
Most are familiar with the requirement that a patent application must contain an adequate written description to justify the application’s claims and invention enablement under 35 U.S.C. § 112(a). These two requirements for patentability are in addition to the requirement that the application’s claims are not anticipated or obvious over the prior art. The written description and enablement requirements also apply Read More
TACTICAL PLANNING FOR TRADEMARK REGISTRATION SUCCESS AND POSITIVE BRAND PERCEPTION
Registered trademark protection for brands is available to any business, whether a small business or a large multi-national company, providing the requirements for trademark registration are met. Large companies generally have a marketing department for addressing brand development, i.e., developing a brand for new services/products for which registered trademark protection will be sought whether Read More
IN RE: BAYOU GRANDE COFFEE ROASTING CO.: THE CAFC FINDS IN FAVOR OF THE TRADEMARK APPLICANT IN A RARE REVERSAL OF THE TRADEMARK TRIAL AND APPEAL BOARD
On Dec. 9, 2025 in In Re: Bayou Grande Coffee Roasting Co., the U.S. Court of Appeals for the Federal Circuit (the “CAFC”) held that the mark KAHWA for cafes and coffee shops was registrable after the mark had been rejected for registration by both the examining attorney and the Trademark Trial and Appeal Board (the “Board”) on genericness and mere descriptiveness grounds. The examining attorney had relied on the Read More
OBTAINING US REGISTERED MARKS BY FOREIGN APPLICANTS UNDER SECTIONS 44(d) and 44(e) of the TRADEMARK ACT
TAKE HOME POINTS INTRODUCTION Trademark rights are territorial; for trademark owners to have trademark protection in a particular country, the owner must have a registered trademark in that country. Any trademark owner, whether U.S. based or non-U.S. based can file a trademark application under 35 U.S.C. §1051(a) [mark already in use in commerce] or §1051(b) [the applicant has a bona fide intent Read More
WILL A CONSENT AGREEMENT OVERCOME REJECTION OF A TRADEMARK ON LIKELIHOOD OF ANALYSIS GROUNDS? DON’T COUNT ON IT!
Background The overarching public policy behind trademark law is two-fold: 1) to protect the consumer from confusion in the marketplace as to the actual source of a good(s) and/or service(s); and 2) to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. When applied-for marks are examined by the USPTO, they are thoroughly checked for likelihood of confusion Read More
BE AWARE OF TRADEMARK PRIORITY RIGHTS & COMMON LAW RIGHTS
Take Home Points Priority of use in trademark law is an often-misunderstood concept. Priority of use simply means which mark (whether a registered or common law mark) was used first in commerce; the mark need not be registered for a priority of use dispute to arise. However, the possibility of likelihood of confusion between the earlier and later used marks must be found to exist; otherwise, the priority of use Read More
