Archives: Trademark

No Luck Needed for Lucky Brand at the Supreme Court

By Kevin Bovard on May 15, 2020 Posted in Trademark

The Supreme Court yesterday issued its second trademark decision of this term. In Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc., Case No. 18-1086 (S. Ct. May 14, 2020), the ultimate question before the Court was the applicability of “defense preclusion.” Specifically, the Court considered whether and under what circumstances a defense may be … Continue Reading

[Insert Yell Here]: Rapper Pitbull Receives Trademark Registration for “EEEEEEEYOOOOOO!” Sound Mark

By Savannah Merceus on May 7, 2020 Posted in Trademark

Platinum-selling music artist Pitbull has received two trademark registrations for a signature yell used in his music. The United States Patent and Trademark Office (USPTO) issued two sound mark registrations, U.S. Reg. Nos. 5877076 and 5877077, for “entertainment services in the nature of live musical performances” and “musical sound recordings; musical video recordings,” respectively. For … Continue Reading

SCOTUS Livestreams Oral Arguments on BOOKING.COM Trademark Registerability

By Deborah A. Wilcox and Christina Moser on May 5, 2020 Posted in Trademark

On Monday, we listened in real time to the livestreamed Supreme Court oral arguments in the trademark registration case United States Patent and Trademark Office v. Booking.com B.V. Because of COVID-19, the arguments were done telephonically, but with the added twist of a live broadcast. The event itself was remarkable, considering the impact of the … Continue Reading

A Finding of Willfulness Is Not Required for an Award of Profits in a Trademark Infringement Case

By Nancy R. Frandsen, Kevin Wallace and Megan Corrigan on April 24, 2020 Posted in Trademark

The Supreme Court has definitively answered the question of whether a plaintiff in a trademark infringement suit is required to show, as a precondition to a profits award, that a defendant willfully infringed the plaintiff’s trademark. By a unanimous vote, the Supreme Court said NO. In Romag Fasteners, Inc. v. Fossil Group, Inc., Romag, a … Continue Reading

Color Me Protectable: A Color Mark on Packaging May Be Inherently Distinctive

By C. Dennis Loomis on April 14, 2020 Posted in Trademark

On April 8, 2020, the U.S. Court of Appeals for the Federal Circuit issued a precedent-setting opinion adding further clarity to the evolving body of law on a vexing question: Under what circumstances can a producer obtain U.S. trademark registration for a mark consisting solely of color? The specific issue presented in the matter of … Continue Reading

7th Circuit Upholds Trademark ‘Fair Use’ Doctrine

By John Mueller on April 11, 2020 Posted in Trademark

In an August 2019 decision, the 7th U.S. Circuit Court of Appeals upheld the earlier finding by the Northern District of Illinois of summary judgment that PepsiCo’s Gatorade division’s use of the phrase “Gatorade The Sports Fuel Company” on its Gatorade family of products did not infringe SportFuel Inc.’s SPORTFUEL trademark because the use of … Continue Reading

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

By Nancy R. Frandsen on March 26, 2020 Posted in Trademark

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

By Fabian Koenigbauer on March 17, 2020 Posted in Patents, Trademark, USPTO

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

By C. Dennis Loomis on March 17, 2020 Posted in Trademark

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?

By Deborah A. Wilcox on January 31, 2020 Posted in Trademark

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?

By Jason Oliver on January 15, 2020 Posted in Trademark

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?

By Jacqueline Lesser on December 31, 2019 Posted in Trademark

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?

By Robert Horowitz on November 11, 2019 Posted in Trademark

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

Five Counterfeit Hotspots in New York that Brand Owners Must Be Aware Of

By Heather McDonald and Robb Beckerlegge on November 8, 2019 Posted in Trademark

The issue of fake goods in New York City has been widely covered for a number of years. For example, earlier this year, the South China Morning Post looked at the “rising counterfeit market” in New York, especially around luxury goods. It pointed out a recent investigation from the US government that led to the … Continue Reading

Kanye West Denied Trademark Registration for ‘SUNDAY SERVICE’ Mark

By C. Dennis Loomis on October 23, 2019 Posted in Trademark

Global rap icon Kanye West is one of the most visible and controversial personalities on the contemporary scene. He has long been recognized as one of the best rap creators and performers of his generation. More recently, his prominence has transcended the world of music with his highly publicized embrace of President Donald Trump, making … Continue Reading

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

By Savannah Merceus on October 21, 2019 Posted in Trademark

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

By Heather McDonald on October 8, 2019 Posted in Trademark

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

By Christina Moser on September 20, 2019 Posted in Trademark

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

By John Mueller on September 13, 2019 Posted in Trademark

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

China: New Trademark Law Will Come Into Effect on Nov. 1, 2019

By Miranda Wang on July 29, 2019 Posted in Trademark

On April 23, the Thirteenth Standing Committee of the National People’s Congress passed the fourth amendment to the Trademark Law of China. The new trademark law will come into effect Nov. 1, 2019. The revisions are designed to curb bad faith filings, willful infringements and counterfeit commodities. Businesses with brand interests in China will have … Continue Reading

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

By Katina Banks on July 24, 2019 Posted in Trademark

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

By Kevin Bovard on June 26, 2019 Posted in Trademark

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.

By Jacqueline Lesser on June 25, 2019 Posted in Trademark

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

By John Mueller on May 30, 2019 Posted in Trademark

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