Archives: Trademark

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

By Shannon McCue on Posted in Trademark, USPTO Litigation
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

By Jessica Watkins on Posted in Trademark
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

Carrie LongstaffBy Carrie Longstaff on Posted in Trademark
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

By Charlie Lyu on Posted in Trademark
“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

By Thomas Hartin on Posted in Trademark
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

Lesley GrossbergBy Lesley Grossberg on Posted in Trademark
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

Erin CaldwellBy Erin Caldwell on Posted in Trademark
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

Kevin BovardBy Kevin Bovard on Posted in Trademark
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

By Suzanne Alton de Eraso on Posted in Trademark
  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

By Margaret Abernathy on Posted in Trademark
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

By Jessica Watkins on Posted in Trademark
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

By Kimberly M. Maynard on Posted in Trademark
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

Lesley GrossbergBy Lesley Grossberg on Posted in Trademark
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

By Charlie Lyu on Posted in Patent, Trademark
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

Federal Circuit Holds Trademark Infringement Must Be Willful to Warrant Award of Infringer’s Profits, Highlighting Continuing Circuit Split

Lesley GrossbergBy Lesley Grossberg on Posted in Trademark
The Federal Circuit, applying Second Circuit trademark law, has weighed in on the issue of whether an infringer’s profits are recoverable absent a finding of willful infringement. In Romag Fasteners, Inc. v. Fossil, Inc. (Fed. Cir. Mar. 31, 2016), a jury had found Fossil liable for patent and trademark infringement of Romag’s magnetic snap fasteners … Continue Reading

Serial: A Story Stopped Short by the USPTO

Michelle UsitaloBy Michelle Usitalo on Posted in Trademark
Serial is an award-winning podcast narrated by journalist Sarah Koenig. It is a long-form story examining a criminal legal case. Season 1 focused on the 1999 murder of Hae Min Lee and the resulting conviction of her former boyfriend, Adnan Syed. Season 1 was downloaded over 100 million times, and is even credited with creating … Continue Reading

In re Tam: Still No Trademark Registration for The Slants

Nancy R. FrandsenLisa Bollinger GehmanBy Nancy R. Frandsen and Lisa Bollinger Gehman on Posted in Federal Circuit, Trademark
In the continuing saga of whether Section 2(a) of the Lanham Act is unconstitutional because it violates the First Amendment, the rock band The Slants will have to wait a little longer before it knows whether it can register its trademark THE SLANTS. The Slants, a band composed of Asian-American musicians, has received a significant … Continue Reading

Fourth Circuit Holds No Use in the U.S. Required to Bring Claims Under the Lanham Act

By Charlie Lyu on Posted in Trademark
On March 23, 2016, the Fourth Circuit reversed the district court’s decision in Belmora LLC v. Bayer Consumer Care AG, 84 F. Supp. 3d 490 (E.D. Va. 2015) and remanded the case. The Fourth Circuit held that contrary to the district court’s decision, the plaintiff, Bayer Consumer Care AG (“BCC”), owner of a foreign trademark registration … Continue Reading

TTAB Retreats From Precedential Houndstooth Mafia Decision

Jacqueline LesserBy Jacqueline Lesser on Posted in Trademark
Trademark proceedings are contentious proceedings, but the battle for registration of the HOUNDSTOOTH MAFIA trademark has been largely overshadowed by the now-ended dispute between the Trademark Trial and Appeal Board (TTAB) and the reviewing U.S. District Court for the Northern District of Alabama. After a three-year struggle, the TTAB vacated The Board of Trustees of … Continue Reading

The Use and the Fury: Faulkner Estate’s New Enforcement Efforts

Oren J. WarshavskyBy Jessie Schweller and Oren J. Warshavsky on Posted in Copyright, Fair Use, Trademark
In a pair of lawsuits filed about a week ago, Faulkner Literary Rights, LLC (“Faulkner Literary”), the owner of the literary rights to the late William Faulkner’s works, sued Sony Picture Classics (“Sony”), as well as Northrop Grumman Corporation (“Northrop Grumman”) and Washington Post Company (“Washington Post”) in the federal district court for the district … Continue Reading
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