Tag Archives: trademark

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

Challenging Delegated Top-Level Domains: ICANN’s Trademark Post Delegation Dispute Resolution Procedure

This year, hundreds of new generic top-level domains (gTLDs) are changing the landscape of the Internet.  The long-awaited result of ICANN’s new gTLD program, top-level domains such as .NYC, .WINE, and .WTF will now join the familiar ranks of domains such as .COM and .NET.  As we’ve written about previously, ICANN provided brand owners, trademark … Continue Reading

Starbucks Coffee, Burned Again

This past Friday, Starbucks received yet another blow in its 12-year long trademark dispute against Wolfe’s Borough Coffee Inc.  The Second Circuit affirmed U.S. District Judge Laura Taylor Swain’s decision and found that Starbucks failed to prove that Wolfe Borough’s “Charbucks,” “Mister Charbucks,” and “Mr. Charbucks” marks were likely to dilute its brand.  As such, … Continue Reading

Legislative Watch: Trade Facilitation and Trade Enforcement Reauthorization Act of 2013

Editor’s Note: This article was originally published as a BakerHostetler Executive Alert on November 13, 2013 Authored by: Heather J. McDonald and Jenna Felz A proposed U.S. Senate Bill has the potential to change the way in which intellectual property infringement is reported and enforced. U.S. Senate Bill 662 (“S. 662”), the Trade Facilitation and Trade Enforcement Reauthorization … Continue Reading

Prior Publication Exclusion Bars Coverage for Advertising Injury Claims, Despite Continued Advertisement of Additional Allegedly Infringing Products

Although the sale of its Navajo product line constituted “personal and advertising injury” within the meaning of its liability insurance policies, Urban Outfitters was not entitled to defense or indemnity for claims brought by the Navajo Nation Indian tribe because of the policies’ “prior publication” or “first publication” exclusions.  Hanover Insurance Co. v. Urban Outfitters, … Continue Reading

Know Your Remedy: ICANN’s New gTLD Objection Procedure and String Contention Auctions

Last month we wrote about ICANN’s new gTLD objection procedure.  Another aspect of the procedure is the possibility that disputing parties could be forced into an auction for the right to operate their applied-for gTLDs. For Legal Rights, Limited Public Interest, and Community Objections, the result of winning an objection is relatively straightforward—the application is … Continue Reading

Protecting Your “.trademark”: ICANN Clarifies Procedure for Objecting to New gTLDs

It has been almost two years since the Internet Corporation for Assigned Names and Numbers (ICANN) announced that it would accept applications for the registration of new generic top level domain names (gTLDs), increasing the number of domain name endings beyond .com, .net, and .gov. ICANN currently is conducting its initial evaluation of the approximately … Continue Reading

The Need for Careful Diligence in Drafting License Agreements Reinforced By Eighth Circuit Affirmation That a Perpetual, Royalty-Free Trademark License is an “Executory Contract”

One of the most powerful tools a chapter 11 debtor has is the ability to assume or reject executory contracts under section 365 of the Bankruptcy Code.  In bankruptcy parlance, when a debtor “rejects” an executory contract, it is considered as though the debtor breached the agreement as of the date it filed for bankruptcy … Continue Reading

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

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

Second Circuit to Rule on Whether Oprah Owns Her Power to Use Phrase

The October 2010 issue of O Magazine graced stands bearing a host of motivational commands:  “Tap Into Your Strength,” “Unlock Your Inner Superstar,” “Focus Your Energy,” “Let Your Best Self Shine,” and—most prominently—“Own Your Power.”  The issue promoted a sponsored event called “Own Your Power,” described as a panel discussion about power.  Afterwards, the Oprah … Continue Reading

Louboutin’s Soles are Red, Tiffany Boxes are Blue . . .

Single color trademarks are registerable, protectable, and enforceable.  So held the Second Circuit in its long awaited decision in the Christian Louboutin SA v. Yves Saint Laurent America Holding Inc. case.  In doing so, the Second Circuit rejected the District Court’s finding that Christian Louboutin’s trademark on red-soled shoes may be invalid in itself and … Continue Reading

Louis’ Hangover

A federal judge has dismissed Louis Vuitton Malletier SA’s trademark infringement suit against Warner Bros. Entertainment Inc. over the studio’s use of a knockoff bag in “The Hangover Part II.”  U.S. District Judge Andrew L. Carter Jr. granted Warner Bros.’ motion to dismiss after finding that public confusion as to the bag’s origin was unlikely, … Continue Reading
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