Archives: Trademark

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Mission Products v. Tempnology: The Supreme Court Speaks

In February, following oral argument before the U.S. Supreme Court in Mission Product Holdings, Inc. v. Tempnology, LLC,[1] we wrote about the hugely important trademark law issue presented by this case, namely: If a bankrupt trademark licensor “rejects” an executory trademark license agreement, does that bankruptcy action terminate the licensee’s right to continue using the … Continue Reading

Fifth Circuit Decision Highlights Trademark Protection for Fictional Elements

As previously reported on this blog, the Southern District of Texas ruled in Viacom International Inc. v. IJR Capital Investments LLC that Viacom could assert common-law rights in the trademark THE KRUSTY KRAB for a fictional restaurant on the animated show SpongeBob SquarePants. When defendant IJR took action to launch a real-life THE KRUSTY KRAB … Continue Reading

Is it ‘anything goes?’ – The US expansive view of trademarks supports a wide variety of ‘nontraditional trademarks.’

“Trademark” is broadly defined in Section 45 of the Lanham Act, 15 U.S.C. §1127, as “any word, name, symbol, or device, or any combination thereof” that identifies and distinguishes goods and indicates source. The same definitional breadth applies to service marks, certification marks and collective membership marks. The Supreme Court has supported such breadth where … Continue Reading

Patent and Trademark Fees in Venezuela

On Feb. 1, 2019, the Venezuelan Ministry of National Commerce sent a notification that patent and trademark fees shall be paid in the Venezuelan cryptocurrency “PETRO.” HOWEVER, the United States government, by Executive Order 13827 (March 19, 2018), expressly prohibits such transactions by U.S. persons, including individuals and companies, relating to any digital currency, digital … Continue Reading

Mission Products v. Tempnology: Is Bankruptcy the End for Trademark Licenses?

Oral argument before the Supreme Court was held on February 20 in the much-watched and even more intensely discussed trademark dispute Mission Product Holdings, Inc. v. Tempnology, LLC.[i] The case presents the difficult and multifaceted question: Does bankruptcy law insulate the right of a trademark licensee to continue using the licensed mark despite the bankrupt … Continue Reading

The Federal Circuit Weighs In on Evidentiary Considerations for Famous Marks and Analyzes Third-Party Usage

The Court of Appeals for the Federal Circuit recently held that the Trademark Trial and Appeal Board (TTAB) erred in concluding that there is no likelihood of confusion between Omaha Steaks International’s registered trademarks and Greater Omaha Packing Company’s (Greater Omaha) GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF trademark. Most significantly, the Federal Circuit held … Continue Reading

Beware of Fraudulent Requests to USPTO to Change Official Trademark Registration Records

We have been alerted by the United States Patent and Trademark Office (USPTO) of unauthorized attempts by unknown parties to amend our clients’ trademark registration records.  Filing Correspondents and Attorneys of Record must remain vigilant for notices from the USPTO and respond to them swiftly to verify whether the requested change was authorized.  We have … Continue Reading

Trademark Office Takes Tougher Stance on Registering Rights to Colors on Packaging

Trademark law recognizes that a color can be used to identify the source of products and therefore, enjoys protection under trademark law. Let’s test your color brand awareness: • What can Brown do for you? – shipping services • The little Purple pill – gastrointestinal medicine If these colors brought UPS and Nexium to mind, … Continue Reading

Federal Circuit Finds Lanham Act Clause Banning Immoral and Scandalous Trademarks Unconstitutional

On December 15, 2017, the Court of Appeals for the Federal Circuit struck down as unconstitutional the clause within 15 U.S.C. § 1052(a) (“Section 2(a)”) banning registration of a trademark that “[c]onsists of or comprises immoral…or scandalous matter.” The In re Brunetti decision came in the wake of Matal v. Tam, a recent Supreme Court … Continue Reading

GOOGLE Mark Is Not a Victim of Genericide

On May 16, 2017, internet search engine and content provider Google Inc. was handed a win by the United States Court of Appeals for the Ninth Circuit in Elliot v. Google Inc. The court ruled that the GOOGLE trademark had not become a victim of genericide, unlike other now generic terms such as ASPIRIN, CELLOPHANE … Continue Reading

Registration of “Phantom Marks” Denied

“Phantom marks” are trademarks that contain a variable element, such as the mark T.MARKEY TRADEMARK EXHIBITION 2***, in which the asterisks represent elements that change to indicate different years. Trademark Manual of Examining Procedure (TMEP) § 1214.01 (Apr. 2017). While a phantom mark refusal would not be necessary in this example, the Trademark Office generally … Continue Reading

Living it up at the HOTEL CALIFORNIA

Legendary rock band Eagles, Ltd. (The Eagles), filed suit on May 1 against the owners of the Hotel California Baja LLC in the U.S. District Court for the Central District of California. The suit alleges trademark infringement and common law unfair competition by the owners, Debbie and John Stewart (owners). The hotel originally opened in … Continue Reading

Court Finds Infringement of THE KRUSTY KRAB Mark

In Viacom International Inc. v. IJR Capital Investments, LLC, 2017 WL 1037294 (S.D. Tex. Mar. 17, 2017), Viacom successfully asserted common-law rights in the trademark THE KRUSTY KRAB for a fictional restaurant, which appears in the cartoon SpongeBob SquarePants. The defendant, IJR, had filed an intent-to-use trademark application for the mark THE KRUSTY KRAB for … Continue Reading

Protecting a Scent Makes Sense

Although seldom seen in applications or registrations, a scent that identifies the source of a good or service may be eligible for protection as a trademark. Registration of a scent mark carries many of the same requirements that apply to a word mark or a design mark. The scent must be used in commerce.[i] Also, … Continue Reading

No Bull: Acquired Distinctiveness Is Not a Given

The Trademark Trial & Appeal Board recently issued a nonprecedential decision that serves as a good reminder that distinctiveness is not automatically acquired simply by long-standing use. Klickitat Valley Chianina, LLC, Serial No. 76715490 (March 16, 2017). Nor are declarations attesting to exclusive use for five-plus years automatically sufficient to pass a trademark application through … Continue Reading

Court Dismisses Suit Against Coach and Its Counsel for Wrongful Seizure of Website Due to Lack of Personal Jurisdiction

  A recent decision from the United States District Court for the Southern District of Ohio held that Coach and its Illinois-based counsel could not be sued for collateral harm caused in a trademark dispute that played out in a federal case in Illinois. See Order, Brenda Buschle v. Coach, Inc. et al., Civil Action … Continue Reading

Proof of Life: USPTO Ushers in New Audit Power for Proof-of-Use

Effective earlier this year, recently amended 37 C.F.R. §§ 2.161(h) and 7.37(h) empower the USPTO to require a registrant to submit additional documentation as “reasonably necessary” to prove use of the mark in connection with each and every good or service identified in the registration.  This is to ensure that the register “accurately reflects marks … Continue Reading

New TTAB Rules of Practice

On Jan. 14, 2017, the Trademark Trial and Appeal Board (TTAB) Rules of Practice were amended in what the United States Patent and Trademark Office described as an effort “to benefit the public by providing for more efficiency and clarity in inter partes and ex parte proceedings.” The first such amendment in roughly nine years, … Continue Reading

Sole Relief from the International Trade Commission

On June 23, 2016, the U.S. International Trade Commission (“ITC”) issued a decision in the closely watched Converse proceeding, invalidating one of Converse’s trademarks for its iconic Chuck Taylor shoes and issuing a broad exclusion order prohibiting the import of any shoes that infringe certain of Converse’s other trademarks. The decision highlights the benefits of … Continue Reading

New Changes to European Trademark Prosecution

As of March 23, 2016, the “Community Trade Mark” (CTM) is going by a new name: the “European Union Trade Mark” (EUTM),  reflecting the evolution of the European Community into the European Union. By force of Regulation No. 2015/2424, the Office for Harmonization in the Internal Market (OHIM), the body responsible for administering the European … Continue Reading

Amended PTAB Rules to Take Effect on May 2, 2016

On May 2, 2016, amended rules governing post-grant proceedings before the Patent and Trial Appeal Board (“PTAB”), including inter partes review (“IPR”), post-grant review (“PGR”), and covered business methods (“CBM”), will take effect. The rules apply to all currently pending and future proceedings before the PTAB. The primary amendments are: Testimonial Evidence Permitted in Patent … Continue Reading
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