Augusto Perera | International Trademark Attorney

First-to-File vs. First-to-Use: Why Understanding the Difference Can Save Your Brand

Augusto Perera — Tue, 16 Jun 2026 17:38:13 +0000

First-to-File vs. First-to-Use: Why Understanding the Difference Can Save Your Brand

For many business owners, securing a trademark seems straightforward: create a brand, use it in the marketplace, and your rights are protected. While that may be true in the United States, trademark protection works very differently in most other countries.

Understanding the distinction between first-to-use and first-to-file trademark systems is critical for any business that manufactures, distributes, sells, or plans to expand internationally. Failing to recognize these differences can expose your brand to trademark squatters, costly legal disputes, and even the loss of rights to your own trademark.

Across multiple presentations, one message stood out: in today’s market, brand identity, copyrighted content, and digital assets often drive both deal value and legal risk.

For companies involved in M&A, careful intellectual property due diligence is essential to protect enterprise value and avoid post-closing disputes.

The United States: A First-to-Use System

The United States follows a first-to-use trademark system. Under U.S. trademark law, trademark rights are generally established through actual use of the mark in commerce, not merely by filing an application.

This means that a business that is the first to use a trademark in interstate commerce may have superior rights over another party that files an application later. Registration with the United States Patent and Trademark Office (USPTO) provides significant benefits and strengthens those rights, but ownership is rooted in use.

For example, if Company A begins selling products under a trademark before Company B files an application for the same mark, Company A may have priority rights based on its earlier use.

Most of the World: A First-to-File System

Unlike the United States, most countries operate under a first-to-file system. This includes many major markets such as:

China
The European Union
The United Kingdom
Most countries in Latin America
Many countries throughout Asia and Africa

In these jurisdictions, the first party to file a trademark application generally obtains the rights to the mark, regardless of who used it first.

In a first-to-file system, prior use is often irrelevant. If another party files an application before the legitimate brand owner, that filing can create significant obstacles for the actual business behind the brand.

The Trademark Squatter Problem

One of the most significant risks in first-to-file countries is the rise of trademark squatters.

Trademark squatters are individuals or companies that register trademarks belonging to others with the intention of profiting from the brand’s reputation and goodwill. Because many first-to-file jurisdictions do not require proof of use at the time of filing, squatters can often obtain registrations without ever intending to use the trademark legitimately.

Once the registration is secured, the squatter may:

Demand payment to transfer the trademark.
Block the true owner from entering the market.
Prevent imports or exports of branded products.
Initiate enforcement actions against the legitimate business.

In some cases, even lawful distributors, manufacturers, or local business partners may take advantage of a first-to-file system by registering a foreign company’s trademark in their own name.

Why Recovery Can Be Expensive

Recovering a trademark from a squatter is rarely quick or inexpensive.

Depending on the jurisdiction, a brand owner may need to:

File an Opposition

If the trademark application is still pending, the rightful owner may be able to oppose the registration before it becomes final.

Initiate Cancellation Proceedings

If the trademark has already been registered, cancellation proceedings may be necessary to challenge the registration based on bad faith or other legal grounds.

These proceedings often require substantial legal fees, evidence gathering, translations, local counsel, and significant time. In some situations, businesses determine that paying the squatter to transfer the registration is less expensive than pursuing lengthy litigation.

Unfortunately, that outcome rewards the bad actor while creating unnecessary costs for the legitimate brand owner.

International Expansion Requires International Protection

Many businesses assume that a U.S. trademark registration automatically protects them worldwide. It does not.

Trademark rights are generally territorial, meaning protection must be obtained country by country or through applicable international filing systems.

If your company plans to:

Manufacture products overseas,
Distribute products internationally,
Sell through international e-commerce platforms,
Expand into foreign markets, or
Work with foreign distributors or suppliers,

it is highly recommended that you seek trademark protection in those jurisdictions before problems arise.

Early filing can be far less expensive than attempting to recover a trademark after someone else has registered it.

How to Protect Your Brand from Trademark Squatters

Because a trademark represents a company’s identity, losing control of it can be devastating.

The most effective and cost-efficient strategy is proactive trademark registration in key jurisdictions where you currently operate or plan to do business.

A comprehensive trademark strategy may include:

Registering trademarks before entering foreign markets.
Filing in countries where products are manufactured.
Protecting trademarks in countries where distributors operate.
Monitoring trademark filings that may conflict with your brand.
Working with experienced trademark counsel to develop an international protection plan.

Taking these steps early can help avoid costly disputes and preserve valuable brand rights.

Final Thoughts

The difference between first-to-use and first-to-file trademark systems is more than a legal technicality—it can determine who owns your brand in a particular country.

While U.S. businesses benefit from first-to-use protections, those protections often disappear once business crosses international borders. In many countries, the first person to file owns the trademark, regardless of who created the brand or used it first.

If your company manufactures, distributes, or sells products internationally, now is the time to evaluate your trademark portfolio and identify jurisdictions where protection may be needed.

If you are considering international expansion or want to ensure your trademarks are protected worldwide, contact a qualified trademark attorney to develop a proactive trademark strategy before a squatter has the opportunity to claim your brand.

The post First-to-File vs. First-to-Use: Why Understanding the Difference Can Save Your Brand appeared first on Augusto Perera | International Trademark Attorney.

Taylor Swift’s Voice Trademark: Can AI Clone a Brand Identity?

Augusto Perera — Mon, 11 May 2026 16:14:14 +0000

Taylor Swift’s Voice Trademark: Can AI Clone a Brand Identity?

Taylor Swift’s recent trademark filings mark a notable shift in how celebrities are protecting their brands in the era of generative AI. Instead of focusing solely on names, lyrics, or logos, Swift is attempting to trademark something far more elusive: her voice.

Specifically, she has filed applications for short audio clips promoting her new album, along with an image of her performing on stage. While sound trademarks aren’t new, using them to protect a celebrity voice against AI imitation is largely uncharted territory.

And it raises a fundamental question: Can trademark law—built on “use in commerce”—really protect something as fluid as a human voice?

Trademark Law 101: It Starts With Use, Not Filing

At its core, U.S. trademark law is grounded in a simple principle: rights come from use in commerce, not just registration.

To qualify for protection, a trademark must:

Be used in connection with goods or services
Identify the source of those goods or services
Be distinctive enough to distinguish that source from others

Swift’s filings appear carefully structured to meet this standard. The audio clips aren’t sound recordings—they’re commercial endorsements tied to specific platforms (Amazon Music and Spotify). That context matters.

By embedding her voice in a commercial message, she strengthens the argument that the sound functions as a source identifier, not just creative expression.

Why AI Changes the Trademark Landscape

Historically, artists relied on copyright law to protect recordings. But AI has exposed a gap: you can now generate a new recording that sounds like Taylor Swift without copying any existing track.

That’s where trademark law becomes appealing.

Trademark infringement doesn’t require exact duplication. It hinges on whether something is “confusingly similar” to a protected mark. If Swift successfully registers these sound marks, she could potentially argue that AI-generated imitations of her voice create consumer confusion—especially in commercial contexts.

This is a significant shift. It moves the legal focus from copying content to misleading audiences.

The Challenge: Proving Distinctiveness Through Use

Here’s where things get complicated.

Not every sound—or voice—qualifies as a trademark. To be protected, it must be:

Distinctive
Consistently used in commerce
Recognized by consumers as a brand identifier

Iconic examples like the NBC chimes or MGM lion roar meet this bar because they are:

Repeated frequently
Used in consistent commercial settings
Instantly recognizable as tied to a specific source

Swift’s challenge will be proving that specific phrases in her voice function the same way.

And that brings us back to “use in commerce.” Filing an application is only the beginning. To maintain and enforce these rights, she must show:

Ongoing commercial use of the audio clips
Consumer recognition of those clips as uniquely tied to her brand
A likelihood of confusion when others use similar-sounding audio

A New Playbook for Brand Protection?

Swift isn’t alone. Matthew McConaughey and other celebrities are exploring similar strategies, signaling what may become a broader trend: turning identity itself into trademarked property.

For businesses and creators, this has real implications.

If courts accept this approach, we may see:

Influencers trademarking signature phrases or vocal styles
Brands protecting synthetic voices used in ads or AI assistants
Expanded enforcement against deepfakes under trademark law—not just copyright or publicity rights

What Businesses Should Take Away

Even if you’re not a global pop star, the underlying lesson is highly relevant:

Think Beyond Names and Logos

Trademarks can include sounds, visuals, and other nontraditional elements—if they function as brand identifiers.

Anchor Everything in Commercial Use

A clever idea or unique asset isn’t protectable unless it’s actively used in the marketplace.

Be Consistent

Repetition and consistency are what turn a creative element into a legally protectable mark.

Document Your Use

Keep clear records of how and where your mark appears in commerce. This is critical in any dispute.

The Bigger Picture

Swift’s filings highlight a broader reality: the law is racing to catch up with technology.

Trademark law, with its emphasis on consumer perception and marketplace use, may become one of the most flexible tools available to combat AI-driven impersonation. But its success will depend on how courts interpret these new types of marks.

For now, one thing is clear: in a world where voices can be cloned and identities replicated, “use in commerce” is no longer just a legal technicality—it’s the foundation of digital identity protection.

The post Taylor Swift’s Voice Trademark: Can AI Clone a Brand Identity? appeared first on Augusto Perera | International Trademark Attorney.

Intellectual Property in M&A: Protecting Trademarks & Copyrights in the AI Era

Augusto Perera — Tue, 07 Apr 2026 20:25:09 +0000

Intellectual Property in M&A: Protecting Trademarks & Copyrights in the AI Era

As businesses continue to grow through mergers, acquisitions, and strategic investments, trademarks and copyrights are becoming some of the most valuable assets in any transaction. This was a major focus of the 2026 The Business of M&A: Navigating the Convergence of Intangible Assets and Capital in the Age of AI Conference held last month in New York City.

Across multiple presentations, one message stood out: in today’s market, brand identity, copyrighted content, and digital assets often drive both deal value and legal risk.

For companies involved in M&A, careful intellectual property due diligence is essential to protect enterprise value and avoid post-closing disputes.

Why Trademarks and Copyrights Matter in M&A

A company’s brand is often one of its most valuable business assets. Trademark portfolios, logos, slogans, advertising campaigns, website content, and other copyrighted materials can significantly influence valuation.

The conference’s Brand Integration and Post-Merger Strategy panel highlighted the importance of consolidating trademark portfolios, managing legacy licensing agreements, and preserving brand authenticity after a deal closes.

Key legal issues include:

ownership and chain-of-title review
trademark registration status and renewals
copyright assignments and licensing rights
rebranding and consumer-facing communications
preservation of goodwill and brand recognition

These issues can directly impact the success of the transaction and the long-term strength of the acquired brand.

Due Diligence and Post-Merger Integration

The conference also emphasized that the legal work does not end at signing.

Presentations on due diligence and post-merger IP integration stressed the need to identify ownership gaps, unresolved licenses, and conflicting brand rights before and after closing.

Without a strategic integration plan, businesses may face:

conflicting brand portfolios
gaps in ownership records
outdated licensing agreements
inconsistent use across markets
increased enforcement risks

For companies operating internationally, cross-border trademark and copyright rights add another layer of complexity.

The Growing Role of AI and Digital Assets

As AI and digital content continue to shape modern transactions, legal diligence now extends to digital marketing assets, branded content, and copyright ownership in AI-assisted works.

These assets are increasingly part of valuation discussions and post-close integration strategies.

How Our Firm Can Help

Our trademark and copyright attorneys help businesses protect the value behind their brands and creative assets throughout the M&A lifecycle.

We advise clients on:

trademark and copyright due diligence
portfolio consolidation and ownership review
licensing and assignment agreements
post-merger brand integration
cross-border IP strategy

If your business is planning a merger, acquisition, or strategic transaction, contact our team to help safeguard your trademarks, copyrights, and long-term brand value.

The post Intellectual Property in M&A: Protecting Trademarks & Copyrights in the AI Era appeared first on Augusto Perera | International Trademark Attorney.

Trademark Appeals Board: “CHATGPT” Is Descriptive but Can Still Be Registered ⚖️

Augusto Perera — Mon, 09 Mar 2026 15:37:45 +0000

Trademark Appeals Board: “CHATGPT” Is Descriptive but Can Still Be Registered ⚖️

On March 4, 2026, the U.S. Trademark Trial and Appeal Board (TTAB) issued a decision in In re OpenAI OpCo, LLC, addressing whether the mark CHATGPT can be registered as a trademark in the United States.

The Board agreed with the USPTO that “CHATGPT” is descriptive, meaning the name directly describes the technology behind the product. However, the application can still move forward because OpenAI showed the mark has acquired distinctiveness through use in the marketplace.

What OpenAI Applied to Register

OpenAI applied to register CHATGPT for software and services related to artificial intelligence, including:

Software that generates text and speech
Natural language processing tools
Machine-learning language models
Chatbot software that simulates conversations
Online AI research and development services

Why the USPTO Refused the Mark

The Trademark Examining Attorney refused the application because the name CHATGPT was considered “merely descriptive.”

Under trademark law, a term cannot be registered on the Principal Register if it simply describes a feature or function of the product.

How the TTAB Analyzed the Name

The Board broke the mark into two parts:

“CHAT”

The Board found that “chat” directly describes the conversational function of chatbot software. The evidence showed that chatbots are designed to “chat” or communicate with users through messages or dialogue.

Because OpenAI’s software allows users to interact conversationally, the word CHAT immediately describes how the technology works.

“GPT”

The Board also found that GPT is widely recognized as an abbreviation for “Generative Pre-Trained Transformer,” a type of machine-learning model used to generate human-like text.

Evidence included dictionary definitions, news articles, and industry publications showing the term is commonly used to describe the underlying AI model.

Putting the Terms Together

When combined, the Board concluded that CHATGPT simply describes a chatbot powered by a generative pre-trained transformer model.

Because the two descriptive terms retain their meaning when combined, the full mark does not create a unique or unexpected meaning.

Why the Application Still Survives

Although the Board agreed the mark is descriptive, OpenAI had already claimed acquired distinctiveness under Section 2(f).

This means the company argued that, through extensive public use and recognition, consumers now associate CHATGPT specifically with OpenAI.

The Board affirmed the descriptiveness refusal but allowed the application to proceed based on acquired distinctiveness.

Why This Decision Matters

This case highlights an important point in trademark law:

Even highly recognizable brand names can be descriptive.
A descriptive term can still be registered if the owner proves the public associates the name with a single source.

For technology companies—especially in fast-moving AI markets—choosing a name that describes the technology may make marketing easier, but it can also make trademark protection more difficult. If you are developing a new brand or product name, our trademark team can help you evaluate risks, secure protection, and build a stronger brand strategy. Contact us to discuss your trademark needs. ⚖️

The post Trademark Appeals Board: “CHATGPT” Is Descriptive but Can Still Be Registered ⚖️ appeared first on Augusto Perera | International Trademark Attorney.

Want to Trademark a Sound? Here’s How Brands Like Intel, NBC, and MGM Did It

Augusto Perera — Tue, 10 Feb 2026 15:49:03 +0000

Want to Trademark a Sound? Here’s How Brands Like Intel, NBC, and MGM Did It

When you think of a trademark, you might picture a logo, wordmark, or slogan. But did you know that a sound can also be protected as a trademark?

From the deep roar of MGM’s lion to NBC’s iconic three-note chimes to Intel’s futuristic audio logo, sound marks are a powerful way for brands to stand out—and stick in our minds.

This blog post explains what sound marks are, how they work, and what it takes to register one with the U.S. Patent and Trademark Office (USPTO)—featuring real, registered examples from famous brands.

What Is a Sound Mark?

A sound mark is a trademark that identifies the source of a product or service through sound rather than through a visual design. For a sound to function as a trademark, it must:

Assume a distinctive structure, and
Create a strong mental association between the sound and the brand in the minds of consumers.

(In re Gen. Electric Broad. Co., 197 USPQ 560 (TTAB 1978))

Sounds that meet these standards can be registered on the Principal Register—the same as word or logo marks.

Real Examples of Registered Sound Marks

🔊 Intel’s Five-Note Chime

Tu navegador no soporta audio HTML5.

Serial No. 75332744

Industry: Computer hardware and software, operating systems

You probably hear this one in your head already: the five-note “Intel Bong” chime that plays at the end of their commercials. Simple, modern, and futuristic, it perfectly encapsulates Intel’s brand identity. It’s been registered as a sound mark, securing it as a piece of the company’s intellectual property.

✅ Why it qualifies: It is arbitrary, unique, and used consistently in marketing to trigger brand recognition.

🎵 NBC’s Three-Note Chimes

Tu navegador no soporta audio HTML5.

Reg. No. 72349496

Industry: Broadcasting and entertainment

NBC’s chimes—three tones representing the notes G, E, and C—are one of the earliest and most famous sound marks in the U.S. The chime has been used since the 1920s and remains a signature audio cue for the network’s programming.

✅ Why it qualifies: The tones are not functional or commonplace—they are distinctive and immediately tied to NBC’s brand, especially in the context of broadcasting.

🦁 MGM’s Roaring Lion

Tu navegador no soporta audio HTML5.

Serial No. 73553567

Industry: Film and entertainment

Before any MGM movie begins, you’ll hear the unmistakable roar of a lion. It’s more than an opening cue—it’s a brand in itself. MGM successfully registered the lion’s roar as a sound mark to protect its use in film and media.

✅ Why it qualifies: It’s a non-functional, attention-grabbing sound that signals the start of MGM entertainment—uniquely connected to the brand experience.

What Makes a Sound Mark Registrable?

Not all sounds can be trademarked. To be eligible for registration, a sound must be:

Distinctive or arbitrary (i.e., not a sound the product naturally makes)
Used in commerce to identify and distinguish the brand
Capable of creating a lasting association in the consumer’s mind

Sounds considered “commonplace”—like alarm beeps, ringtones, or electronic chirps—typically require proof of acquired distinctiveness, meaning the brand must show that consumers already associate the sound with their goods or services.

How to Apply for a Sound Mark

Registering a sound mark requires several unique steps:

No Visual Drawing

Because sound marks are non-visual, you don’t submit a traditional logo drawing. Instead:

Select “Sound Mark” as the mark type
Include a detailed description of the sound (e.g., “a sequence of five musical notes”)
Upload an audio file of the mark (.mp3, .wav, etc., under 5MB)

Specimen of Use

You must provide a specimen showing how the sound is used in commerce. Acceptable specimens include:

A video advertisement that uses the sound
A product demo or app interface featuring the audio mark
An online video or media player showcasing the mark in use

Supplemental Materials

If applicable, include:

Sheet music (for musical marks)
A written description of the sound
A statement clarifying the mark is non-visual

Tips for a Successful Sound Mark Application

✅ Make it distinctive – The more unique your sound is, the more likely it is to qualify.

✅ Use it consistently – Integrate the sound into your branding (e.g., commercials, app openers, product packaging).

✅ Build association – Ensure customers recognize the sound as a key part of your brand.

✅ Prepare to prove acquired distinctiveness – If your sound is borderline commonplace, gather advertising and consumer recognition data.

Why Sound Marks Matter in Branding

In a noisy digital world, a memorable sound can trigger instant recognition. Just like a logo or color scheme, a well-crafted audio identity can:

Increase brand recall
Reinforce emotional connection
Differentiate you in a crowded market

By protecting that sound with a trademark, you’re legally reinforcing your brand identity—just like Intel, NBC, and MGM have done.

Considering a sound mark for your brand? If your audio branding is distinctive and consistently used, it might be your next great IP asset.

The post Want to Trademark a Sound? Here’s How Brands Like Intel, NBC, and MGM Did It appeared first on Augusto Perera | International Trademark Attorney.

Are You Liable for Copyright Infringement if Users Post Infringing Art on Your Website or Social Network?

Augusto Perera — Fri, 09 Jan 2026 16:34:39 +0000

Are You Liable for Copyright Infringement if Users Post Infringing Art on Your Website or Social Network?

If you run a website, social network, or any kind of platform where users can upload or share content — artwork, videos, music, or anything else — you might be wondering: Am I legally responsible if one of my users uploads something that infringes copyright?

The short answer: Not necessarily — but only if you meet certain legal requirements.

Understanding the DMCA and “Service Provider” Status

Under U.S. copyright law — specifically the Digital Millennium Copyright Act (DMCA) — platforms that host or transmit user-generated content are generally referred to as “service providers.”

Importantly, this term isn’t limited to internet access companies like Comcast or Verizon. In the eyes of the law, it includes:

Social networks
Online marketplaces
Image-sharing platforms
Video hosting sites
Forums and community websites
Any platform that stores or distributes content on behalf of users

So if your website allows users to post or upload content, you’re likely considered a service provider under the DMCA.

The Safe Harbor: A Legal Shield — If You Qualify

The DMCA offers what’s known as “safe harbor” protection to service providers. This protection shields your business from financial liability if your users upload infringing content — such as copyrighted artwork — as long as you follow certain rules.

To qualify for DMCA safe harbor, your platform must:

Act quickly to remove infringing content when you receive a proper takedown notice.
Not have actual knowledge of the infringement (or be “willfully blind” to it).
Avoid benefiting financially from the infringing content, if you also have the right and ability to control it.
Adopt and enforce a repeat infringer policy (and actually follow through on it).
Accommodate standard technical measures used by copyright holders to identify and protect their content.
And — critically — designate and register a DMCA agent.

The Often-Overlooked Requirement: Registering Your DMCA Agent

To fully qualify for safe harbor, service providers must designate a DMCA agent to receive copyright infringement notifications. But this step involves two mandatory actions:
1. Register your agent with the U.S. Copyright Office, and
2. Post the agent’s contact information on your website, in a place accessible to the public
Failing to do both means you are not eligible for DMCA protection — regardless of how well you comply with the other rules.
Also, safe harbor protections are not retroactive. If your site is accused of infringement that occurred before your DMCA agent was registered, you can’t backdate compliance to shield yourself later.

What This Means for You

Let’s say you operate an online art-sharing platform. A user uploads a piece of copyrighted art without permission. If:

You’ve registered a DMCA agent
You post the agent’s info on your website
You remove the artwork promptly upon receiving a valid notice
You have and enforce a repeat infringer policy

Then your platform is likely protected from liability.

But if you miss even one key step — especially failing to register your DMCA agent — you may lose that protection completely.

Key Takeaway

You’re not automatically liable for your users’ copyright violations — but you’re not automatically off the hook either. The law gives you a path to avoid liability, but only if you act responsibly and meet the DMCA’s requirements, but only if you act responsibly and meet all of its requirements — including agent registration.

If your website or app allows users to post content of any kind, understand the rules, build compliant policies, and take infringement seriously. It’s not just about protecting artists — it’s about protecting your business.

Need Help Navigating DMCA Compliance?

If you’re unsure whether your platform qualifies for safe harbor protection — or you need help creating a repeat infringer policy, takedown process, or terms of service — now is the time to act. Don’t wait for a legal threat to force your hand.

👉 Reach out today to discuss how to protect your platform from copyright liability and stay compliant with the law.

Protect your users. Protect your business. Protect your future.

The post Are You Liable for Copyright Infringement if Users Post Infringing Art on Your Website or Social Network? appeared first on Augusto Perera | International Trademark Attorney.

Why the Twitter® Trademarks Are Being Challenged: Understanding Abandonment Under U.S. Trademark Law

Augusto Perera — Tue, 09 Dec 2025 16:23:25 +0000

Why the Twitter® Trademarks Are Being Challenged: Understanding Abandonment Under U.S. Trademark Law

When a company stops using a brand, the law does not allow that company to indefinitely block others from using it. In the United States, trademark rights exist to protect active commercial use, not to preserve “museum pieces” of branding that no longer function in the marketplace.
That principle is at the heart of a petition recently filed to cancel several legacy TWITTER and TWEET registrations previously owned by Twitter, Inc. and now assigned to X Corp. This filing is an excellent opportunity to help clients understand what trademark abandonment is, how the law defines it, and why this matters for anyone developing or protecting a brand.

What Does “Abandoned” Mean Under the Lanham Act?

The governing definition is found in the Lanham Act, 15 U.S.C. §1127, which states that a mark is considered abandoned when:

Use has been discontinued,
With intent not to resume such use,
And “nonuse for 3 consecutive years” constitutes prima facie (presumed) abandonment.

In other words, a trademark owner must continue real commercial use of its registered marks and have an intent to keep using them. If either element disappears, rights can be lost.

The purpose of this rule is simple: U.S. trademark law protects active indicators of source, not historical names that no longer represent goods or services in the marketplace.

How Abandonment Applies to the Former Twitter Brand

The petition to cancel the TWITTER-related trademarks outlines a detailed timeline showing that Twitter—after being acquired and merged into X Corp.—stopped using the TWITTER and TWEET brands entirely.

Major events supporting abandonment include:

Public announcement of the rebrand:

Elon Musk stated on July 23, 2023 that the company would “bid adieu to the Twitter brand and, gradually, all the birds.”

This signal of intent not to resume use is a key factor.

Complete visual rebrand:

The iconic blue bird logo was removed from apps, websites, and company headquarters and replaced with the X logo.

Functional changes:

Twitter “tweets” were no longer called tweets—just “posts” or “xeets.”

Domain shift:

As of May 17, 2024, the platform had migrated fully to x.com, eliminating active commercial use of the TWITTER name.

Discontinued filings and lapsed registrations:

Numerous TWITTER-formative applications and registrations were allowed to abandon or lapse—further evidence of no intent to resume use.

Under the Lanham Act, these actions collectively indicate both nonuse and intent not to resume use, the two elements required for abandonment.

Why a Cancellation Petition Was Necessary

When another party (in this case, Operation Bluebird, Inc.) seeks to register a new mark—here, versions of TWITTER and TWEET for new services—the USPTO may refuse registration because older registrations still exist.
Even if the previous owner has stopped using the marks, the USPTO cannot simply remove them. A formal Trademark Trial and Appeal Board (TTAB) proceeding is required.
That is exactly what this petition does: it asks the TTAB to cancel registrations because X Corp. has legally abandoned the marks and continues to block new applications.
The petition explains that Bluebird’s applications have been suspended or refused based on these older registrations, giving them a legal basis (“entitlement to a statutory cause of action”) to seek cancellation.

What Clients Should Take Away from This

Whether you are building a new brand or protecting an existing one, abandonment principles matter greatly:

Trademark rights require active use Failing to use a mark—especially after a rebrand—can result in a loss of exclusive rights.
Public statements and conduct matter If a company signals it is ending a brand and then stops using it, those actions can be used as evidence of abandonment.
Old registrations can block new applications Even unused marks remain on the registry until someone petitions for cancellation.
Cancellation can clear the path for new branding If a legacy brand is truly abandoned, others may obtain rights legally—but only after the registrations are removed.

Final Thoughts

The transformation from Twitter to X is one of the most high-profile corporate rebrands in modern history. But rebranding does not just involve new logos and new names—it also has serious trademark implications. The law requires ongoing commercial use to maintain rights, and when that use stops, the registrations no longer serve their purpose.

Understanding how abandonment works under the Lanham Act empowers businesses to protect their brands strategically—whether they are retiring a mark or looking to adopt one that may have been left behind.

If you have questions about whether a mark has been abandoned—or whether you can safely adopt a previously used name—professional legal guidance is essential.

The post Why the Twitter® Trademarks Are Being Challenged: Understanding Abandonment Under U.S. Trademark Law appeared first on Augusto Perera | International Trademark Attorney.

Federal Ban on Intoxicating Hemp Products Deepens Trademark Uncertainty for CBD Brands

Augusto Perera — Mon, 17 Nov 2025 21:39:14 +0000

Federal Ban on Intoxicating Hemp Products Deepens Trademark Uncertainty for CBD Brands

The regulatory landscape for hemp and CBD products has grown more complex following the recent enactment of a federal ban targeting intoxicating hemp-derived cannabinoids. While the 2018 Farm Bill had opened the door for hemp’s lawful production and removed it from the Controlled Substances Act (CSA), that opening has narrowed once again—this time through bipartisan congressional action and executive approval.

The new law, signed in 2024, prohibits hemp-derived cannabinoids that produce intoxicating effects—such as delta-8 THC and similar synthetic or semi-synthetic compounds—even if they are sourced from federally legal hemp. This represents a marked shift in federal enforcement posture and introduces further challenges for businesses seeking to build and protect hemp-based brands, particularly those operating in the grey area between cannabis legality and consumer product innovation.

Exam Guide 1-19: Still the USPTO’s Standard

Since 2019, trademark examiners at the United States Patent and Trademark Office (USPTO) have applied Examination Guide 1-19, which interprets the 2018 Farm Bill to allow trademark registration for some hemp-derived goods—but only if they do not violate other federal laws, most notably the Federal Food, Drug, and Cosmetic Act (FDCA).

Under this guidance:

Goods containing CBD or other cannabinoids must be derived from hemp (≤0.3% THC).
Ingestible products such as supplements, pet treats, and beverages are still refused registration because the FDA prohibits CBD as an ingredient in such products.
Any cannabinoid deemed a controlled substance, or used in a manner inconsistent with FDA regulation, renders the mark unregistrable under the Trademark Act due to unlawful use in commerce.

With the newly enacted federal ban, the situation becomes even more complicated. Products containing delta-8, HHC, THCO, and other similar cannabinoids—once marketed as Farm Bill-compliant—may now fall squarely into the category of federally prohibited substances. Accordingly, any attempt to register trademarks for these goods will be rejected on grounds of illegality under both the CSA and the FDCA.

A Widening Gap Between Market Activity and Trademark Protection

The booming market for hemp-derived cannabinoids has been met with tightening federal oversight. This legal disconnect leaves brand owners with legitimate concerns:

Many businesses invested heavily in developing hemp-based products that were previously considered lawful.
Federal trademark protection remains unavailable for a wide swath of hemp-derived goods—particularly those that are ingestible or potentially intoxicating.
The new law now criminalizes the very products that helped sustain large segments of the hemp industry after the 2018 Farm Bill.

The USPTO is expected to revise or expand its examination guidelines to reflect this change in federal law, particularly as it relates to intoxicating cannabinoids. When that update comes, we may see stricter scrutiny across the board—not only for delta-8 and similar compounds but for any product that may blur the line between hemp and marijuana or raise health and safety concerns under the FDCA.

Trademark Implications Going Forward

If you’re thinking about launching an “equivalent” perfume line, here are a few red flags to avoid:
- Misleading marketing. Claims like “100% identical” or “the same as” can trigger legal trouble.
- Poorly displayed disclaimers. Hiding your disclaimers in small print won’t protect you.
- Confusing packaging. Using bottle shapes, colors, or fonts that resemble well-known brands increases the likelihood of confusion.
- Inconsistent quality. Even if the scent is similar, differences in wear time or ingredients can make “equivalence” claims risky.

The Importance of Trademark Protection

For businesses in the hemp sector, the shifting legal framework underscores the importance of staying aligned with evolving definitions of legality at the federal level. Even products that are legal under state law—or that were once considered federally compliant—may now fall outside the bounds of lawful use in commerce under the Lanham Act.

Until the USPTO updates its guidance to reflect this new federal ban, Exam Guide 1-19 remains the operative standard. But for many CBD and hemp businesses, especially those producing now-prohibited cannabinoids, the path to federal trademark protection has effectively narrowed—if not closed entirely.

Conclusion

The federal ban on intoxicating hemp products marks a major turning point for the CBD and hemp industries. While the 2018 Farm Bill once offered hope for expanded access to federal trademark protection, recent developments have reversed course for many businesses. With Exam Guide 1-19 still in force and no new USPTO guidance yet issued, brand owners are left navigating uncertainty.

Until federal agencies issue clear and updated frameworks, the key question remains: can your product be lawfully sold in interstate commerce under both the CSA and the FDCA? If the answer is no, then federal trademark protection will remain out of reach.

The post Federal Ban on Intoxicating Hemp Products Deepens Trademark Uncertainty for CBD Brands appeared first on Augusto Perera | International Trademark Attorney.

Why Trademark Protection Matters in the Fragrance Industry: The Truth Behind “Inspired By” Perfumes

Augusto Perera — Tue, 04 Nov 2025 16:51:26 +0000

Why Trademark Protection Matters in the Fragrance Industry: The Truth Behind “Inspired By” Perfumes

The perfume world is full of creativity, luxury, and competition—but it’s also filled with confusion. If you’ve ever walked into a store or browsed online and seen perfumes labeled “similar to” or “inspired by” major luxury brands, you may have wondered: Is that even legal?

If you’re a brand owner—or an entrepreneur considering entering the fragrance industry—this article is for you. We’ll explore the fine line between fair competition and trademark infringement, and why protecting your brand is more important than ever.

The Rise of “Equivalent” Perfumes

Many companies in the U.S. market create and sell fragrances that mimic the scent profiles of iconic luxury perfumes. These “dupes” are often marketed using phrases like:

“Inspired by [Brand]”
“Equivalent to [Brand]”
“Similar to [Brand]”

While these phrases may sound harmless, they walk a very thin legal line. Why? Because they rely on the reputation, identity, and goodwill of well-known trademarks—without permission.

When Is It Legal? When Is It Risky?

Under U.S. law, certain types of “comparative advertising” are allowed. Businesses can refer to another brand if it’s done truthfully and in a way that doesn’t mislead consumers. For example, it may be legal to say your product smells like a popular perfume—as long as:

You clearly identify your own brand as the source.
You don’t imply endorsement or affiliation with the original brand.
You avoid using logos, distinctive packaging, or slogans that might confuse buyers.
You include disclaimers like: “Not affiliated with [Brand].”

However, there are limits.

If the claims are exaggerated, deceptive, or suggest that your fragrance is an exact replica—especially when it’s not—you risk violating trademark law. This can lead to lawsuits, forced rebranding, and even financial penalties.

Common Pitfalls for Perfume Startups

If you’re thinking about launching an “equivalent” perfume line, here are a few red flags to avoid:
- Misleading marketing. Claims like “100% identical” or “the same as” can trigger legal trouble.
- Poorly displayed disclaimers. Hiding your disclaimers in small print won’t protect you.
- Confusing packaging. Using bottle shapes, colors, or fonts that resemble well-known brands increases the likelihood of confusion.
- Inconsistent quality. Even if the scent is similar, differences in wear time or ingredients can make “equivalence” claims risky.

The Importance of Trademark Protection

If you are a brand owner, protecting your trademark is essential to preserving your market position, reputation, and customer loyalty. Here’s why it matters:
- Prevents copycats from trading on your brand’s reputation.
- Creates legal leverage to stop infringing marketing or packaging.
- Builds brand value that can be licensed, franchised, or sold.
- Gives you exclusive rights to use your name and logo in your industry.
Even if your product isn’t patented (as is often the case with fragrances), your trademark still provides powerful protection against unfair competition.

What About Other Countries?

Trademark law is not the same everywhere—and if you’re planning to expand internationally, this matters. In the European Union, the Court of Justice of the EU (CJEU) has granted stronger protection to well-known trademarks. In some cases, even mentioning a famous third-party brand can be considered trademark infringement or unfair competition—regardless of whether the claim is truthful. Here, the rights of brand owners often take priority over the consumer’s right to information or a competitor’s right to market their products.
In contrast, the U.S. and the U.K. take a more flexible approach, generally allowing comparative advertising that is truthful, clear, and non-confusing. This legal environment favors consumer awareness and allows businesses more room to compete—as long as they don’t cross the line into deception or brand dilution.
Bottom Line: Compete with creativity, not confusion
Creating perfumes inspired by well-known brands can be legal in the U.S.—as long as your marketing is honest, transparent, and avoids misleading consumers. But this isn’t always the case globally.
For instance, in the European Union, courts take a much stricter view. Merely referencing a well-known trademark can be considered infringement, even when there is no confusion or false claim. This is a sharp contrast to the more flexible approach in places like the U.S. and U.K., where consumer rights and competitive freedom are more protected.
That’s why it’s so important to understand the legal boundaries of each market you operate in. Whether you’re launching locally or expanding abroad, investing in trademark protection and legal strategy doesn’t just protect your brand today—it lays the foundation for long-term, secure growth.

Need Help Navigating the Trademark Landscape?

At Augusto Perera, P.A., we help fragrance companies and brand owners understand and enforce their rights. Whether you’re protecting your own identity or avoiding infringement pitfalls, we’ll guide you through the legal complexities with clarity and confidence.

Call us at (305) 489-1901

Email: ap@tmmiami.com

Visit: www.tmmiami.com

Secure your scent. Protect your brand.

The post Why Trademark Protection Matters in the Fragrance Industry: The Truth Behind “Inspired By” Perfumes appeared first on Augusto Perera | International Trademark Attorney.

U.S. Federal Government Shutdown: Impacts on Trademark and Copyright Filings

Augusto Perera — Tue, 07 Oct 2025 14:36:00 +0000

U.S. Federal Government Shutdown: Impacts on Trademark and Copyright Filings

As the U.S. federal government experiences a lapse in funding, many agencies have adjusted or suspended operations. Below is an update on how the shutdown affects trademark and copyright filings.

Trademark Filings – USPTO Remains Open and Fully Operational

The United States Patent and Trademark Office (USPTO) has confirmed that it will continue normal operations during the shutdown:

USPTO operating status during a lapse in federal appropriations
At present, the USPTO will remain open and fully operational until further notice under operating reserves from the prior year’s fee collections.

Key takeaway: The USPTO remains open and is processing trademark applications, renewals, and other filings as usual. Businesses can continue to file and maintain their trademark rights without disruption.

Copyright Filings – Office Closed, but Online Submissions Accepted

The U.S. Copyright Office has announced the following:

Notice: Due to a lapse in government funding, the U.S. Copyright Office is closed, as is the Library of Congress. As such, the office is unable to update the information on this website, respond to inquiries, or process transactions. Registration and recordation submissions will be accepted for the purpose of securing date of receipt but will not be processed. Website updates and all normal business activity will resume when the government reopens. If you would like to file a copyright registration or submit a document recordation, our online systems are available. Filing your registration claim now will help ensure the earliest possible effective date of registration, although submissions will not be processed until the Copyright Office reopens.

Key takeaway: The Copyright Office is closed, but online filings are still possible. Filing now can help secure your effective date once the office resumes operations.

What This Means for You:

Trademarks: Continue business as usual—applications, renewals, and responses are being processed.
Copyrights: Online submissions are accepted and will be date-stamped, but processing is paused until the government reopens.

Our team is monitoring these developments closely and is available to assist with any filings or questions to help protect your intellectual property during the shutdown.

The post U.S. Federal Government Shutdown: Impacts on Trademark and Copyright Filings appeared first on Augusto Perera | International Trademark Attorney.