Trademarks

Plaintiff’s French press is on the leftPictured above, on the left, is plaintiff Bodum’s CHAMBORD French press coffeemaker, and on the right is that of defendant A Top. A French press, also known as a coffee plunger, stamp pot, or coffee press, depending on your locale. uses a mesh plunger ... Read More

[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] Examining Attorney Alison Keeley refused registration of the mark PRINCE KONG (in standard characters) for, inter alia, games, toys, and elbow pads and guards, finding the mark likely to cause confusion with the ... Read More

Professors Barton Beebe and Jeanne C. Fromer of New York University School of Law have published a new article on Section 2(a) "immoral or scandalous" refusals: "Immoral or Scandalous Marks: An Empirical Analysis," N.Y.U. Journal of Intell. Prop. & Ent. Law, Vol. 8, No. 2 (Spring 2019). (link here). The ... Read More

Robert MargolisDistrict court correctly held that trademark owner failed to raise genuine factual issue as to secondary meaning of the asserted mark. A federal district court correctly found that a non-profit corporation that promotes and helps run the annual Fiestas de le Calle San Sebastian festival in San Juan, Puerto ... Read More

The Board affirmed the USPTO's refusal to register the term UNLIMITED CARRYOVER for telecommunication services, finding that the phrase, as used on applicant's specimen of use (shown right), failed to function as source indicator for the recited services. In re TracFone Wireless, Inc., Serial No. 87221529 (June 10, 2019) [precedential] ... Read More

By Chantelle A. Gyamfi Edited by Elissa D. Hecker Below are stories from Entertainment, Arts, Sports, Media, and General News: ENTERTAINMENT Hollywood Big Shot to Raise Money for Battle Against Anti-Abortion Laws Hollywood producer Peter Chernin has launched a campaign to contribute to the $15 million that is needed to ... Read More

[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] Last week, the Board affirmed two Section 1 and 45 refusals to register on the ground that the respective specimens were unacceptable for registration.* * * * * * * * * * ... Read More

By Joshua Lahijani "Wobble Up" by Chris Brown never broke into the Billboard Hot 100, despite featuring popular artists Nicki Minaj and G-Easy. (https://www.billboard.com/music/Chris-Brown/chart-history) Released on April 18th, it is a hip-hop single that is to feature on Brown's upcoming album "Indigo". Despite the lukewarm response to the song, the ... Read More

The new NAFTA – dubbed the USMCA or CUSMA depending on where you live – took a significant step forward recently with the introduction of Canadian legislation designed to ratify the treaty. The economic implications of the agreement are enormous, particularly with respect to digital issues and intellectual property. Myra ... Read More

The Board sustained an opposition to registration of the mark NATIONAL MIDGET SERIES, finding it merely descriptive of, but not generic for, "entertainment services, namely, arranging and conducting automobile racing events and sanctioning, supervising, and officiating of automobile races" [SERIES disclaimed]. Applicant USAC asserted a Morehouse defense based on its ... Read More

The Board sustained an opposition to registration of the product configuration mark shown below, for footwear in class 25, on the ground of ornamentality and lack of acquired distinctiveness. In September 2013, the Board reversed a refusal to register the applied-for mark, finding the design not to be aesthetically functional ... Read More

The Canadian Intellectual Property Office will be taking its efiling systems for trademarks down from Thursday, June 13, 2019, at 00:00 EDT to Monday, June 17, 2019, at 06:00 EDT, for system upgrades and enhancements. How does this affect Applicants... Read more ... Read More

Straightforward dismissal on 12b6 – Website ran an article criticizing Ebony Magazine’s policies – article used an illustration parodying Ebony cover (see above). Court runs through LoC factors and 2d Circuit three factor nominative fair use test. See 43(b)log analysis of EBONY parody decision here. Download [585.54 KB] ... Read More

[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] The USPTO refused registration of the marks GUEPARDO, in standard characters and also in the design form shown below, both for vehicle wheels, finding the marks likely to cause confusion with the registered ... Read More

Aditi GuptaIntroduction Defendant Masking is a strategy used in India by plaintiffs in IPR suits to avoid detection of the matter in the Cause List by masking the ‘main defendant’ with the other defendants. The Cause List in Indian jurisprudence are schedules of cases to be heard by the courts ... Read More

Reversing the TTAB's June 19, 2017 decision [TTABlogged here], the U.S. District Court for the Eastern District of Virginia found the mark VAGISAN for various feminine hygiene products likely to cause confusion with the registered mark VAGISIL for overlapping products. Appellant Combe's survey evidence, sales figures, advertising, and unsolicited media ... Read More

There may be less to this lawsuit than some commentators think. Toronto Raptor star Kawhi Leonard, who is reported to have among the largest hands in the NBA, signed an endorsement deal with Nike in 2011, which ran through September of last year. Some Nike merchandise used the ‘Klaw,’ a ... Read More

[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] In a rather surprising decision, the Board reversed a Section 2(e)(4) refusal to register SIRON for, inter alia, computer software. The Examining Attorney initially rejected the mark as primarily merely a surname, citing ... Read More

Hat tip to Ted Davis for allowing me to post a link (here) to his 2019 outline of trademark decisions, "Recent Developments in Trademark and Unfair Competition Law." The outline (73 pages) covers both federal court litigation and many TTAB cases. Thanks also to all of you who attended the ... Read More

Louise Thorning AhleWe need all the help we can get to fight counterfeit goods. Counterfeit goods are produced and distributed by organised criminal groups and this crime represents as much as 2.5 per cent of world trade, or USD 461 billion. For more information see Europol’s webpage here: https://www.europol.europa.eu/crime-areas-and-trends/crime-areas/intellectual-property-crime/counterfeiting-and-product-piracy. A ... Read More

Ricardo AntequeraForeign companies continuing to protect their IP rights in Venezuela face yet more changes related to payment of government fees. These new changes aim to circumvent the US sanctions being monitored and regulated by the US Department of the Treasury and will allow companies to once again pay government ... Read More

The Trademark Trial and Appeal Board (TTAB) has scheduled nine (9) oral hearings for the month of June 2019. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. Briefs and other papers for these cases may be found at TTABVUE via the links ... Read More

If your heart is beating and your lungs are taking in oxygen, you know that Game of Thrones recently reached its epic conclusion. It’s sad, but true. After eight glorious seasons, the most watched television series in history has ended. Even as I put the words to paper, or rather, ... Read More

The USPTO refused to register the mark EL PATRÓN for "perfumes and colognes," finding a likelihood of confusion with the registered mark BOSS for "perfumery for personal use, namely, perfumes, eau de parfum." Applicant Talyoni argued that it is unlikely that consumers would "stop and translate" its mark because the ... Read More

Here is a short but sweet collection of Section 2(b) cases from the TTABlog. Section 2(b) prohibits an "applicant" from registering a mark that "consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any ... Read More

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Blair AlbomThe mark owner had sent a cease-and-desist letter to the defendant—a competing seller of equipment to the cosmetics industry—more than four years before filing suit, establishing that it knew of the infringement at that time. Although cosmetics equipment company A.C.T. 898 Products, Inc. (“ACT”) convinced a jury that competitor ... Read More

In a rare granting of a motion for reconsideration, the Board vacated its order of December 28, 2018, that had dismissed this opposition without prejudice, and instead entered judgment against Applicant Debbie Macomber, Inc. had successfully moved to dismiss the proceeding without prejudice based on opposer's purported consent, but the ... Read More

By Angela Peco Edited by Elissa D. Hecker Below are stories from Entertainment, Arts, Sports, Media, and General News: ENTERTAINMENT Aretha Franklin's Handwritten Wills Are Discovered at Her Home Aretha Franklin was believed to have died without a will, but three handwritten documents were recently discovered at her ... Read More

Here is an updated collection of Section 2(a) deceptiveness cases from the TTABlog. Of course, most of these decisions are not precedential, but even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.The Board applies a three-part test for determining whether a mark is ... Read More