Tag Archives: trademark

CAFC Holds the Lack of a Property Interest in a Trademark Does Not Prevent the Commencement of a Cancellation Proceeding

Photo of Robert HorowitzBy Robert Horowitz on Posted in Trademark
The Court of Appeals for the Federal Circuit (“CAFC”), in a 2-1 vote, held in Australian Therapeutic Supplies Pty., Ltd. v. Naked TM, LLC, Appeal No. 2019-1567 (Fed.Cir. July 27, 2020) (accessible at http://www.cafc.uscourts.gov/node/26425), that a property interest in a mark is unnecessary for a cancellation petitioner to establish a statutory right to commence a … Continue Reading

Booking.com Remand on USPTO Attorney Fee Issue Portends Closure on Circuit Split

Photo of Lesley GrossbergBy Lesley Grossberg on Posted in Patent
As followers of this blog may recall, in December 2019, the Supreme Court resolved a circuit split as to whether the United States Patent and Trademark Office (USPTO) may recover its “attorneys’ fees” (effectively, the pro rata salaries of its legal personnel) in appeals from the Patent Trial and Appeal Board (PTAB) and Trademark Trial … Continue Reading

SCOTUS Holds that ‘generic.com’ Trademarks Like Booking.com May Be Capable of Registration

Photo of Deborah A. WilcoxPhoto of Christina MoserBy Deborah A. Wilcox and Christina Moser on Posted in Trademark
Today, the Supreme Court issued its opinion in the trademark registration case United States Patent and Trademark Office v. Booking.com B.V., holding “A term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” Justice Ginsburg delivered the majority opinion, in which justices … Continue Reading

Fast-Track Examination for COVID-19-Related Trademarks and Service Marks

Photo of Lisa Bollinger GehmanBy Lisa Bollinger Gehman on Posted in Trademark
The U.S. Patent and Trademark Office (USPTO) issued a notice on June 12 announcing a new, accelerated examination program for certain COVID-19-related trademark applications. The USPTO will begin accepting petitions for fast-track examination on June 16, 2020. This is great news for those developing and researching new products to help combat COVID-19. Applications are typically … Continue Reading

No Luck Needed for Lucky Brand at the Supreme Court

Photo of Kevin BovardBy Kevin Bovard on 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 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

Photo of Deborah A. WilcoxPhoto of Christina MoserBy Deborah A. Wilcox and Christina Moser on 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

Photo of Nancy R. FrandsenPhoto of Kevin WallacePhoto of Megan CorriganBy Nancy R. Frandsen, Kevin Wallace and Megan Corrigan on 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

7th Circuit Upholds Trademark ‘Fair Use’ Doctrine

Photo of John MuellerBy John Mueller on 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?

Photo of Nancy R. FrandsenBy Nancy R. Frandsen on 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

Trademark Fraud Sparks Rare Bipartisan Action

Photo of C. Dennis LoomisBy C. Dennis Loomis on 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

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?

Photo of Jason OliverBy Jason Oliver on 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

Session not Season

Photo of Christina MoserBy Christina Moser on 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

Photo of John MuellerBy John Mueller on 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

Canada: New Trademark Laws Go Into Effect

Photo of Kevin BovardBy Kevin Bovard on 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.

Photo of Jacqueline LesserBy Jacqueline Lesser on 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

Photo of John MuellerBy John Mueller on 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

Is it ‘anything goes?’ – The US expansive view of trademarks supports a wide variety of ‘nontraditional trademarks.’

Photo of Robert HorowitzBy Robert Horowitz on Posted in Trademark
“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

Photo of John MuellerBy John Mueller on Posted in Trademark
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

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
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