Trademarks

Some ten years ago, a TTAB judge said to me that one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods or services. Here are three decisions issued last week in appeals from Section 2(d) refusals. At ... Read More

Image from here A Single Judge of the Bombay High Court recently passed an order in the case of Zee Entertainment Enterprises v. Ameya Vinod Khopkar & Ors. The case concerned an allegation of copyright infringement and passing off in respect of the film ‘De ... Read More

Austria, as many other countries, adopted legal measures to extend deadlines with a view to the COVID-19 crisis. As the provisions are all but crystal clear, this is to give you an overview of which running deadlines in trademark (and other IP matters) matters are affected and how:   The ... Read More

This is the second and last post covering submissions with respect to trademark. While making comments, I have relied on inputs provided by various practising lawyers based out of Delhi and other parts of India. Court Proceedings: The Report notes that, ‘it may require at least two-to-three years for court ... Read More

In these posts, I shall discuss the main points of ‘2019 Global Trademark Report Card’ by Trademark Working Group (Special 301 Submission for 2020) [For complete list of documents, click here]. i) Certification standards The submission expresses its disapproval over the procedure for registration of certification marks (especially on 4-month ... Read More

Image from here In what seems to be India’s first (reported) coronavirus related IP dispute, Hindustan Unilever (HUL) took Reckitt Benckiser (RB) to the Bombay High Court over RB’s most recent Dettol handwash advertisement, alleging that it disparages HUL’s Lifebuoy soap trademark. Background The case ... Read More

As noted earlier, the Canadian Intellectual Property Office had extended deadlines falling between March 16, 2020 and March 31, 2020 automatically until April 1, 2020. In light of the ongoing disruption and uncertainty due to COVID-19, CIPO has now further... Read more ... Read More

In an rare Section 2(d) refusal involving color marks, the Board reversed a refusal to register, on the Supplemental Register, the color green (below left) as applied to “Medical examination gloves” in view of the registered mark shown below right (also on the Supplemental Register), for the color green (below ... Read More

Extension Granted by IP Office, Instagram Beat its Domain Infringer, Goan Coconut Vinegar Loses GI Battle and more, brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel. INDIAN TRADEMARK UPDATES Trademark Battle between Mattress Giants Peps Industries, a popular mattress manufacturer filed an application in the Delhi High ... Read More

In February this year a dispute between the law firm FOCUS Advokater (“FOCUS Lawyers” in English) and the accounting firm Beierholm was decided by the Danish Maritime and Commercial High Court (BS-40894/2019 SHR). The case concerned the use of the name BEIERHOLM FOKUS which FOCUS Advokater found to be an ... Read More

The USPTO refused to register the proposed mark FETAL LIFE for fetal health signal monitors and related goods, finding the mark to be merely descriptive under Section 2(e)(1). Applicant argued that the term has several meanings and is at most suggestive of a function, feature or characteristic of its goods. ... Read More

61% decrease in the total trademark applications examined this week, a decrease of 5937 in the total number of applications disposed through show cause hearings and more. These statistics have been compiled from the official journal of the trademark office published weekly on Mondays. INDIAN TRADEMARK STATISTICS The effects of ... Read More

Opposer Yarnell Ice Cream's Section 2(d) opposition melted away when the Board found this Applicant Outstanding Foods free of guilt in seeking to resister the mark FULL OF FLAVOR FREE OF GUILT for "vegetable based food products, namely, vegetable based snack foods; meat substitutes" [FULL OF FLAVOR disclaimed]. The Board ... Read More

About ten years ago, a TTAB judge said to me that one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods or services. Here are three recent decisions in appeals from Section 2(d) refusals, decided on the ... Read More

Corona Puts the IP World on Notice Intellepedia Publication Date: 20.03.2020 In the midst of the ongoing Coronavirus epidemic, several IP offices all around the world have taken measures to minimize user impact by closing down their IP offices either fully or partially. The EU Intellectual Property Office (EUIPO) has ... Read More

As has already been reported on this blog (see here), the Court of Justice has annulled the decision of the General Court saying that the refusal of EUTM application FACK JU GÖHTE for being (allegedly) contrary to accepted principles of morality was incorrect (judgment of 26 February 2020, C- 240/18P). ... Read More

The TTAB recently ruled on the appeals from the four Section 2(e)(1) mere descriptiveness refusals summarized below. Let's see how you do with them, keeping in mind that the Board affirms, by my calculation, some 90% of these refusals. Answer(s) will be found in the first comment.In re DeSean Ramsey ... Read More

In these unprecedented times where a pandemic has brought the globe to a standstill, the top-most concern of IP owners (of course, other than to save themselves from COVID-19) would be about meeting deadlines in IP prosecution. This is because, deadlines in IP prosecution are often hard deadlines, and if ... Read More

In 2014 and 2015, Canada passed a number of amendments to its Trademarks Act allowing for extensions of time due to unforeseen circumstances. These amendments were driven, in part, by the Northeast Blackout of 2003, in which millions of people... Read more ... Read More

Corona Puts the IP World on Notice, Bajaj Defends its Well-Known Trademark, Corona Very Popular with the USPTO, Attappady Red Gram Applied for GI and more, brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel. INDIAN TRADEMARK UPDATES Bajaj Cites Well-Know Mark Status in Defending Trademark Bajaj Electricals, ... Read More

Yet another product configuration "mark" failed to clear the Section 2(e)(5) hurdle, as the Board affirmed a refusal of the proposed mark shown below, finding it to be de jure functional for "Plumbing products, namely, a bathtub overflow drain cap." After a detailed review, the Board found that applicant's own ... Read More

On 25 February 2020, the Duke and Duchess of Sussex have officially withdrawn their trade mark applications for the words “SUSSEX ROYAL” and “SUSSEX ROYAL THE FOUNDATION OF THE DUKE AND DUCHESS OF SUSSEX”. The couple further announced that they will stop using the brand from Spring 2020. The couple ... Read More

Call me a pessimist, but it was surprising to me when I recently checked the USPTO trademark database that I did not find an application to register “Social Distancing” for some other novelty item.  (It is also surprising that the tag #socialdistancing has only 159,000 uses on Instagram.) Nevertheless, I ... Read More

“What the FACK just happened?!”, some thought, when the CJEU delivered its judgment on the registrability of the trademark FACK JU GÖHTE on 27 February 2020. In case you are unfamiliar with the case, FACK JU is a phonetic transcription in German of “fuck you” and GÖHTE alludes to the ... Read More

[This guest post was written by John L. Strand, Shareholder in the Trademark and Litigation Groups at Wolf Greenfield]. Entertainment Content, owner of registrations for the marks JUSTICE CENTRAL and JUSTICECENTRAL.TV, opposed Cooper Holdings’ application for the mark JUSTICE NETWORK, claiming a likelihood of confusion under Section 2(d). Both parties ... Read More

8167 new trademark applications filed this week, 244% increase in the total trademark applications examined this week and more. These statistics have been compiled from the official journal of the trademark office published weekly on Mondays. INDIAN TRADEMARK STATISTICS The Indian Trademark Office had an overall increase in its working ... Read More

With the recent appointments of Mark Lebow and Melanye K. Johnson, the Board’s membership now stands at twenty-seven (27) Administrative Trademark Judges. The current roster is set forth below, beginning with Chief Judge Gerard F. Rogers and Deputy Chief Judge Mark A. Thurmon, and then proceeding alphabetically.Rogers, Gerard F. (Chief ... Read More

On account of the COVID-19 situation, the Canadian Intellectual Property Office has just announced that all deadlines falling between March 16, 2020 and March 31, 2020 will automatically be extended until at least April 1, 2020. In light of the... Read more ... Read More

On account of the COVID-19 situation, the Canadian Intellectual Property Office has just announced that all deadlines falling between March 16, 2020 and March 30, 2020 will automatically be extended until at least March 31, 2020. In light of the... Read more ... Read More

The USPTO refused to register the mark MOBILIZER for "massage apparatus and instruments," deeming the mark merely descriptive under Section 2(e)(1). The PTO's evidence consisted a dictionary definition and examples of use of the term “mobilizer” in various contexts. Applicant, of course, argued that the mark is merely suggestive of ... Read More