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Trademarks

  • Association of Talent Agencies Threatens Writers Guild of America With an Action Based on the WGA’s Undertaking to Pay Lawyers and Managers Who Negotiate Agreements
    By Marc Jacobson We recently posted a blog regarding the Writers Guild of America's (WGA) undertaking to pay managers or agents who negotiate agreements on behalf of writers, during the period in which writers have discharged their agents, as suggested by the WGA, as a result of the conflict of ... Read More
    Source: NYSBAPublished on 2019-04-20
  • Trademark case: Kroma Makeup EU LLC v. Boldface Licensing & Branding Inc., USA
    Jody CoultasKroma Makeup EU, LLC, a trademark licensee, lacked standing to assert trademark infringement claims against the Kardashian sisters and a U.S. beauty product seller, according to the U.S. Court of Appeals in Atlanta. Following a suit filed by the owner of the KROMA mark against the Kardashians and a ... Read More
    Source: Kluwer Trademark BlogPublished on 2019-04-19
  • SDNY Dismisses DJ Action: No Case or Controversy from Notice of Opposition
    The U.S. District Court for the Southern District of New York dismissed this declaratory judgment action because the court lacked subject matter jurisdiction to hear the lawsuit. Plaintiff Halo Lifestyle sought a ruling that its HALO SPORT mark did not infringe on defendant's HALO FARMS marks, claiming that defendant's actions, ... Read More
    Source: The TTABlogPublished on 2019-04-19By John L. Welch
  • Right of Publicity: Columbia Journal of Law & the Arts
    In the current issue (here) of the Columbia Journal of Law & the Arts (Volume 42, No. 3 (2019)), a cavalcade of professors and attorneys discuss the right of publicity from most every angle one can imagine. Enjoy! Jennifer E. Rothman, The Right of Publicity’s Intellectual Property Turn  Stacey Dogan, ... Read More
    Source: The TTABlogPublished on 2019-04-18By John L. Welch
  • adidas’ three-stripes go for more!
    Gustavo GiayOn 26 September 2018, Division II of the Federal Court of Appeals of the City of Buenos Aires issued a decision in “Re adidas AG v. Juan Carlos Chillemi SRL seeking discontinuance of use and damages” (File No. 5423/2010) confirming the decision of the trial court. adidas owns trademark ... Read More
    Source: Kluwer Trademark BlogPublished on 2019-04-18
  • Argentina: adidas’ three-stripes go for more!
    Gustavo GiayOn 26 September 2018, Division II of the Federal Court of Appeals of the City of Buenos Aires issued a decision in “Re adidas AG v. Juan Carlos Chillemi SRL seeking discontinuance of use and damages” (File No. 5423/2010) confirming the decision of the trial court. adidas owns trademark ... Read More
    Source: Kluwer Trademark BlogPublished on 2019-04-18
  • Writers Guild of America Agrees to Pay Lawyers Representing Writers Who Fired Their Agents
    By Marc Jacobson In a very unusual move, in support of its writer members, during this period when the Writers Guild of America (WGA) has asked its members to fire their agents, the WGA last night agreed to pay to managers and lawyers of writers, the fees that are due ... Read More
    Source: NYSBAPublished on 2019-04-17
  • First Amendment Protects Sports Commentators
    By Barry Skidelsky, EASL Section Chair In the wake of this year's exciting NCAA March Madness, a federal court in Kentucky last month dismissed a NCAA basketball referee's lawsuit against a sports radio network and its on-air talent. The complaint alleged multiple causes of action: Intentional infliction of emotional distress, ... Read More
    Source: NYSBAPublished on 2019-04-17
  • Week In Review
    By Leslie Berman Edited by Elissa D. Hecker The following stories are divided into the categories Entertainment, Arts, Sports, Media, and General News: Entertainment Hollywood Upended as Unions Tell Writers to Fire Agents The Writer's Guild of America told its 13,000 members to fire their agents after talks between the ... Read More
    Source: NYSBAPublished on 2019-04-17
  • TTAB Dismisses Opposition: Opposer Failed to Respond to 12(b)(6) Motion to Dismiss
    The CAFC issued a per curiam affirmance under Fed. Cir. R. 36, upholding the TTAB's ruling dismissing an opposition because the opposer failed to respond to a Fed. R. Civ. P. 12(b)(6) motion to dismiss. Opposer NetxGen mistakenly believed that the Board would determine the motion on the merits even ... Read More
    Source: The TTABlogPublished on 2019-04-17By John L. Welch
  • New Deputy Chief Judge Joins TTAB
    Chief Judge Rogers has announced the appointment of Mark A. Thurmon as the new Deputy Chief Administrative Trademark Judge for the TTAB. The new Deputy will join the Board on May 28, 2019. Mark A. Thurmon has more than 25 years of experience as an attorney in private practice, as ... Read More
    Source: The TTABlogPublished on 2019-04-16By John L. Welch
  • “Other characteristics” of the new Article 7(1)(e)(iii) EUTMR do not apply retroactively, says the CJEU.
    Sara Parrello and Fabio AngeliniThe EUTMR No. 2015/2424, as well as the Directive No. 2015/2436, have introduced various changes to EU and national trademark laws but both failed to provide transitory rules determining what is the applicable law for trademarks registered before the entry into force of the new law. ... Read More
    Source: Kluwer Trademark BlogPublished on 2019-04-16
  • Traveltime v Commute Time (Easy Spirit v Skechers re trade dress)
    Source: The Trademark BlogPublished on 2019-04-16By Marty Schwimmer
  • Configuration / Shape / Failure to Function
    The mark consists of a two-dimensional design of a light gray, generally rectangular body with rounded ends. The top of the body features a light gray rectangle on each side. The left side of the body features a dark gray cross within a circle. The dark gray cross features ... Read More
    Source: The Trademark BlogPublished on 2019-04-15By Marty Schwimmer
  • Precedential No. 8: TTAB Rejects Designation of Documents and Responses as “Attorneys’ Eyes Only”
    In a precedential ruling, the Board considered Petitioner USPA's motion challenging Respondent McLane's confidentiality designations applied to certain documents and interrogatory responses pursuant to the Board's Standard Protective Order. The Board granted petitioner's motion in large part, requiring re-designation of the responses and some of the documents. United States Polo ... Read More
    Source: The TTABlogPublished on 2019-04-15By John L. Welch
  • Meet The Bloggers XV: Kings Bowl, Monday, May 20, 8-10 PM
    MEET THE BLOGGERS, widely recognized as the best non-INTA event ever devised, will be convened for the fifteenth time (thus "MTB XV") on Monday, May 20th, 8:00 - 10:00 PM, at Kings Dining and Entertainment (a/k/a KINGS BOWL), 60 Seaport Boulevard (a few blocks from the Convention Center). Come and meet some ... Read More
    Source: The TTABlogPublished on 2019-04-13By John L. Welch
  • Fed Circ Rejects Webpage As Specimen of Trademark Use
    Webpage promoting textile didn’t provide means of completing a sale and thus is not a ‘point of purchase’ display (see webpage in decision below). I agree with TTABlog – maybe the Board needs to be more flexible in the era of the Internet. TTAblog discussion here. Download [323.75 ... Read More
    Source: The Trademark BlogPublished on 2019-04-12By Marty Schwimmer
  • The Nature of Orders and Quorum Requirements at the IPAB (Part I)
    In January, I had written a brief post alleging the illegality of the hearings conducted and the orders passed by the IPAB. I had argued that the IPAB had violated the law because it failed to meet the quorum requirements under provisions of the Trade Marks Act, 1999 read with ... Read More
    Source: Spicy IPPublished on 2019-04-12By Rishabh Mohnot
  • TTABlog Test: Is THE BEAUTIFUL THINGS Confusable with COSABELLA and BELLA COSA for Retail Store Services?
    The USPTO refused to register the mark THE BEAUTIFUL THINGS, in standard character form, for "operating on-line marketplaces featuring clothing and jewelry," finding a likelihood of confusion with the registered marks COSABELLA for retail apparel stores, and BELLA COSA for retail jewelry store services, both of which marks translate to "BEAUTIFUL ... Read More
    Source: The TTABlogPublished on 2019-04-12By John L. Welch
  • Germany: Weak trademarks and their enforcement
    Bettina ClefsenThe question of how far descriptive or non-distinctive trademarks which somehow managed to be registered may be enforced is of particular relevance in jurisdictions like Germany which acknowledge their incontestability ten years after registration. The more recent approach of the European Court of Justice (ECJ) was that it accepted ... Read More
    Source: Kluwer Trademark BlogPublished on 2019-04-12
  • Brexit: Further extension granted, and more clarity from the EUIPO
    Julius Stobbs and Cameron Malone-BrownWith the original Brexit date now having passed (29 March 2019), it is worth reflecting on where we now find ourselves, as brand owners/IP professionals with interests in the UK and EU. The EU has granted the UK a ‘flextension’ to the Article 50 period until ... Read More
    Source: Kluwer Trademark BlogPublished on 2019-04-11
  • Horses, Tractors, Bull Ridin’ and Banjos Aren’t Country Enough for Billboard
    By Joshua Lahijani When Lil Nas X, an unknown artist at the time, released his single "Old Town Road" on December 3, 2019, he couldn't have known how successful it would become. As of April 10, 2019, it has charted no. 1 on the Billboard Top 100, thanks in part ... Read More
    Source: NYSBAPublished on 2019-04-11
  • CAFC Affirms TTAB’S Rejection of Website Fabric Specimen, Not a Display Associated with the Goods
    At the request of the USPTO [letter here], the CAFC has re-designated as precedential its January 14th opinion in In re Siny Corp., upholding the decision of a divided TTAB panel. The Board had affirmed a refusal to register the mark CASALANA for "knit pile fabric made with wool for ... Read More
    Source: The TTABlogPublished on 2019-04-11By John L. Welch
  • All About Men’s Fairness Creams and Generic Disparagement
    In a country where a person’s beauty is usually based on the melanin content in one’s skin, products promising fairness and “even skin tone” are abundantly available in the Indian cosmetics industry, most of which target the fairer sex (pun intended) as their main customer base. Lately, however, the Indian ... Read More
    Source: Spicy IPPublished on 2019-04-11By Prarthana Patnaik
  • Just Say It Or Just Do It: Who Wins The Battle?
    Amrit SinghOn 20th March 2019, the US Patent and Trademark Office had to decide about the conflict between the trademarks of Nike and Cheryl Bauman-Buffone. Cheryl Bauman-Buffone sought registration of her mark “JUST SAY IT” for books and downloadable e-books, both in “in the field of promoting healthy lifestyles encompassing ... Read More
    Source: Kluwer Trademark BlogPublished on 2019-04-10
  • Precedential No. 7: Finding Lack of Bona Fide Intent, TTAB Sustains Opposition to MIRACLE ON 35th STREET
    I am delighted to see that the TTAB has given equal time to the White Sox, after making us read through that drivel about the Cubs finally winning the World Series after a 108-year drought. The Board granted a motion for summary judgment in this opposition to registration of the ... Read More
    Source: The TTABlogPublished on 2019-04-10By John L. Welch
  • TTABlog Test: Is “BLUEBERRY MUFFIN” Generic for Beer?
    [This guest post was written by Kira-Khanh McCarthy, a 2L at University of Notre Dame Law School.] The USPTO refused to register BLUEBERRY MUFFIN, in standard characters, finding the term generic for “beer.” Applicant Humboldt Street Collective had conceded that the term is merely descriptive by amending its initial application ... Read More
    Source: The TTABlogPublished on 2019-04-09By John L. Welch
  • Week In Review
    By Lisa Ornest Edited by Elissa D. Hecker Below, for your browsing convenience, the categories are divided into Entertainment, Arts, Sports, Media, and General News: Entertainment My Sweet Lord The copyright wars spawned by "Blurred Lines" have the strongest effect on the lowest link in the chain, the songwriters, whose ... Read More
    Source: NYSBAPublished on 2019-04-09
  • Texts of Documents in MillerCoors v. Anheuser-Busch (the Super Bowl corn syrup ads)
    MillerCoors alleges that Anheuser-Busch tv ads (which debuted on the Super Bowl) deceive consumers into believing that MILLER LITE or COORS LIGHT contain corn syrup (specifically, high-fructose corn syrup). Attached below are MillerCoors’ brief in support of its motion for a preliminary injunction, and the report of its expert, discussing ... Read More
    Source: The Trademark BlogPublished on 2019-04-09By Marty Schwimmer
  • Trademark case: Louis Vuitton Malletier S.A. v. My Other Bag Inc., USA
    Cheryl BeiseA seller of parody tote bags that prevailed on trademark infringement, dilution, and copyright infringement claims brought by Louis Vuitton was not entitled to recover attorney fees. Case date: 15 March 2019 Case number: No. 18-293-cv. Court: United States Court of Appeals, Second Circuit A full summary of this case ... Read More
    Source: Kluwer Trademark BlogPublished on 2019-04-08