Archives: Trademark

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Really? Someone thinks I HEART COVID-19 should be awarded a US trademark registration?

Aside from I HEART COVID-19 (stylized) being an offensive slogan given the hundreds of thousands of people affected throughout the world by the coronavirus pandemic, the U.S. trademark application for this slogan, filed by an entity called Bad Covid, LLC, is likely to fail like most of the other opportunistic trademark filings for terms related … Continue Reading

USPTO Waives Petition to Revive Fees for Patents, Patent Applications, Trademarks and Trademark Applications Abandoned Because of an Inability to Respond Due to COVID-19

To give patent and trademark applicants as well as patent and trademark owners relief from the implications of the COVID-19 outbreak, the United States Patent and Trademark Office (USPTO) determined that the COVID-19 outbreak qualifies as an “extraordinary situation” and exercised its authority to waive certain petition fees. For patent owners and applicants unable to … Continue Reading

Trademark Fraud Sparks Rare Bipartisan Action

In a political environment in which even a global virus pandemic cannot seem to foster bipartisan legislative cooperation, the growing surge in fraudulent trademark applications – many of which are maturing into issued trademark registrations – has done just that. On March 11, 2020, House Judiciary Chairman Jerrold Nadler, D-N.Y., and Ranking Judiciary Member Doug … Continue Reading

What Does Brexit Mean for Your European Union Trademarks?

The United Kingdom withdraws from the European Union today. The implementation period runs for the next 11 months, through Dec. 31. During this time, European Union trademark filings (“EUTMs”) will continue in full force in the U.K. Unless the time is extended, beginning Jan. 1, 2021, EUTMs that have already registered will automatically be granted protection in … Continue Reading

Can Booking.com Trademark Its Company Name? How Will the U.S. Supreme Court Resolve Whether a Generic Term Plus a Top-Level Domain Is Protectable?

The legal battle between Booking.com BV and the U.S. Patent and Trademark Office (USPTO) began more than five years ago and concerns whether the online hotel booking company can secure a trademark registration for its name. After filing for trademark protection, Booking.com commenced a federal lawsuit in connection with the USPTO’s refusal to issue a … Continue Reading

Who Is Holding the Bag: How Will the Supreme Court Resolve the Circuit Split on Recovery of Profits in Trademark Cases?

Two weeks from now, on January 14, 2020, the Supreme Court will hear oral argument in Romag Fasteners, Inc. v. Fossil, Inc. on the long-standing circuit split over whether willful infringement is a necessary precondition for an award of profits in a Section 43(a) trademark infringement case. Under the Lanham Act, a victorious plaintiff in … Continue Reading

The theory of “trademark neutralization.” What is it and will it likely be adopted in the US?

Have you heard of the theory of “trademark neutralization?” It was developed by the European Union (EU) General Court and the European Union Court of Justice (“CJEU”) in 2006 (Case No. C-361/04 (ECJ Jan. 12, 2005)) holding PICASSO/PICARO not confusingly similar and was followed in Case C-206/04 (ECJ Mar. 23 2006) holding SIR/ZIRH not confusingly … Continue Reading

A Punctuation Mark: Off-White Files Trademark Application for “PRODUCT BAG”

Last summer, streetwear brand Off-White filed an application with the United States Patent and Trademark Office (USPTO) to register the mark “PRODUCT BAG.” With other Off-White goods bearing logos such as “MAKE UP,” “GOODS,” and “SCULPTURE,” those familiar with the brand know that founder Virgil Abloh is no stranger to the use of quotation marks. … Continue Reading

Oh! Mega Liability for Landlords Under Second Circuit’s Recent Trademark Infringement Ruling in Omega SA v. 375 Canal LLC

In March 2019, after a seven-year-long legal battle, a Manhattan jury found defendant landlord 375 Canal LLC contributorily liable for trademark counterfeiting and infringement and awarded Omega SA statutory damages of $1.1 million ($275,000 for each mark infringed).[1] In the suit, plaintiff Omega claimed that the Canal Street landlords knew about, had reason to know … Continue Reading

Session not Season

When the Supreme Court opens its new session on Oct. 7, one of the cases it will determine, Romag Fasteners, Inc. v. Fossil, Inc., et al. Case No. 2018-2417, is expected to resolve a stark difference among circuits over when a trademark owner is entitled to disgorgement of an infringer’s profits due to an infringing … Continue Reading

USPTO Proposes New Fee Schedule

On August 29, 2019, the Director of the USPTO notified the Trademark Public Advisory Committee (TPAC) of the Office’s intent to set or adjust trademark related fees and submitted a preliminary trademark fee proposal for comment. There are multiple timelines for public debate and comment on the proposed new fees, with a tentative implementation date … Continue Reading

New USPTO Rule Will Require Foreign Trademark Owners Be Represented by U.S.-Licensed Attorney

On Aug. 3, a new regulation promulgated by the U.S. Patent and Trademark Office (USPTO) will take effect and require all trademark applicants, registrants and parties to trademark proceedings that are domiciled outside the United States to be represented by an attorney who has a license to practice law in the U.S. Consequently, individuals and … Continue Reading

Canada: New Trademark Laws Go Into Effect

On June 17, Canada implemented long-awaited changes to its trademark laws. These updates are designed to modernize Canadian trademark practice and bring Canada more in line with international practice. Businesses with brand interests in Canada will want to be aware of these important changes, the most significant of which are described here. Madrid Protocol: Canada … Continue Reading

Protected and Unfiltered. Supreme Court Strikes Down the Lanham Act’s Scandalous and Immoral Restrictions.

In April at oral argument, the bench grappled with the issue of viewpoint discrimination based on the literal meaning of the statute and the genuine concern that without regulation, profane and obscene language and images will be imprinted with the ®. Ultimately, in a unanimous decision, the court held that the statutory language restricting scandalous and … Continue Reading

Update: Patent and Trademark Fees in Venezuela

As previously reported on this blog, the issue of payment of fees related to trademark applications/registrations in Venezuela is currently in a state of flux. Specifically, given the current U.S. sanctions generally forbidding U.S. corporations from transacting business with the Venezuelan government, it has been difficult for these U.S. entities to pay fees associated with … Continue Reading

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
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