Archives: Trademark

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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

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
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