Tag Archives: trademark

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The Trademark Trial & Appeal Board recently issued a nonprecedential decision that serves as a good reminder that distinctiveness is not automatically acquired simply by long-standing use.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

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

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

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

In re Tam: Still No Trademark Registration for The Slants

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

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

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

Drawing a Line in the Floor—Courts Are Struggling With the Overlap Between Design Patent and Copyright

In 2003 the U.S. Supreme Court in Dastar Corp. v. Twentieth Century Fox Film Corp. emphasized that “[t]he rights of a patentee or copyright holder are part of a ‘carefully crafted bargain,’ … under which, once the patent or copyright monopoly has expired, the public may use the invention or work at will and without … Continue Reading

USPTO Pilot Program: Trademark Registrations May Now Be Broadened To Account For Evolving Technology

Trademark Office rules generally prohibit the broadening of goods and services identified in existing trademark registrations. But on September 1, the USPTO announced a new pilot program that will create a limited exception to this rule. Beginning September 1, trademark owners may now petition to broaden their registrations’ identified goods and services where such changes … Continue Reading

Favoring a Holistic Approach, the Federal Circuit Overturns TTAB Decision to Refuse Paw Print Logo

Last week, the United States Court of Appeals for the Federal Circuit reviewed a TTAB decision that had refused outdoor apparel company Jack Wolfskin’s application to register its paw print logo. Jack Wolfskin Ausrustung fur Draussen GmBH & Co. KGaA v. New Millennium Sports SLU, 14-1789 (Fed. Cir. August 19, 2015). New Millennium Sports SLU … Continue Reading

In re Tam – Federal Circuit Orders En Banc Review of Trademark Act’s Ban Against Registration of Disparaging Marks

The Slants is a Portland-based band composed of musicians of Asian-American descent who characterize their genre as “Chinatown Dance Rock.” The band’s bassist, Simon Tam, filed a trademark application for THE SLANTS for “Entertainment, namely, live performances by a musical band.” The examining attorney refused registration on the basis that the mark THE SLANTS is disparaging … Continue Reading

Trademark practice tip: Request Interlocutory Attorney attendance at discovery/settlement conferences in opposition proceedings to avoid costs of motions to strike affirmative defenses

In trademark opposition proceedings the affirmative defense of failure to state a claim is commonly pleaded, yet it is often an inappropriate affirmative defense. Other affirmative defenses that are severely limited in opposition proceedings include laches (consideration of this affirmative defense is taken as of the time an application is published for opposition purposes, not … Continue Reading
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