Trademarks

The Federal Court of Canada (the “Court”) recently released its decision in Hilton Worldwide Holdings LLP v Miller Thomson, 2018 FC 895. In the decision underlying this appeal, the Registrar expunged the Canadian trademark registration for WALDORF-ASTORIA, owned Hilton Worldwide Holdings LLP (“Hilton”), on the basis of non-use. The Court ... Read More

Noci, the fictional city attacked by malevolent hackers during ICON2018, was saved and the challenge was won by a Swiss team. What is a hacker, how do they define themselves? Two members of ICON, a young non-governmental organisation in Geneva, answered that question for Intellectual Property Watch, with the same ... Read More

The Board dismissed this Section 2(d) opposition to registration of the mark MANSUR GAVRIEL, in standard character form, for  handbags, wallets, and the like, first finding that opposer failed to prove priority, and then concluding, for the sake of completeness, that applicant's' mark was not confusingly similar to opposer's mark ... Read More

While there are certainly limits on how—and how much—aftermarket sellers can use OEM trademarks to communicate key information about aftermarket parts, the legal boundaries for aftermarket sellers are not always clear. And, in the automotive industry, the question of legal boundaries is perhaps most intriguing when the trademark concerned is ... Read More

D.ssa Sara ParrelloIn BASIC NET SpA vs EUIPO, (case C-547/17 of Sept. 6, 2018), shortly after the recent Nestlè/Mondelez KIT KAT case (C‑84/17P, C-85/17 P and C-95/17 P; see ‘CJEU on the Kit Kat shape and acquired distinctiveness of EU trade marks for shapes’ in this blog), the CJEU again ... Read More

For a number of people, the word hacker means bad news. However, if some hackers have malevolent intentions, there are also hackers for good, and their skills were put to the challenge last week as they tried to save a fictitious city fallen into the hands of a group of ... Read More

The Board affirmed Section 2(d) refusals to register the mark BOYY for sunglasses and clothing, finding the mark confusingly similar to the mark BOY, registered under Section 2(f) for partly identical clothing items. Applicant tried various arguments to overcome the refusal based on its existing registration for BOYY, issued in ... Read More

Peter ReapA German company’s interactive website, through which it assisted customers with improving their software products, was sufficient to subject the company to federal personal jurisdiction for purposes of a trademark infringement suit brought by a Maine company that owned a federally registered mark, the U.S. Court of Appeals in ... Read More

A familiar adage teaches that one catches more flies with honey than with vinegar. Without in any way implying that infringers are flies, we can apply this lesson to the trademark context. It seems that trademark attorneys enforcing their clients’ rights have really taken this wisdom to heart in recent ... Read More

Sascha AbrarThe Regional Court of Munich was asked to decide on the question if an application for action by a right holder, based on the Customs Enforcement Regulation No. 608/2013 (“Customs Enforcement Regulation”), constitutes a dishonest obstruction of a competitor’s business under German unfair competition law. The court rejected the ... Read More

Yours Truly will present a webinar on recent TTAB developments on September 26th from 12 to 1 PM EST, sponsored by Wolf, Greenfield & Sacks, P.C. "Admission" is free. Register here.The webcast will emanate from the Federal Reserve Building in beautiful downtown Boston. Among the topics to be covered are ... Read More

After its 2010 acquisition of four NEW MAN (stylized) registrations for clothing, and securing a registration on its own in 2013, Respondent did not put the marks into use until 2016, and then only on a minimal basis. Nonetheless, Respondent convinced the Board that it had no intent not to ... Read More

By Leslie Berman Edited by Elissa D. Hecker GENERAL NEWS Letter Claims Attempted Assault by a Teenage Brett Kavanaugh and Kavanaugh's Accuser Comes Forward, Saying He Pinned Her on Bed and Groped Her A letter claiming Supreme Court nominee Brett Kavanaugh assaulted a teenage girl while he was at a ... Read More

Biker Clothing Company petitioned to cancel a registration for the mark BIRTHPLACE OF THE AMERICAN BIKER for "Clothing, namely, t-shirts, sweaters, scarves, bandanas, jackets," on the grounds of fraud and mere descriptiveness. In its brief, Petitioner argued that the phrase fails to function as a trademark, but the Board refused ... Read More

Carolina PinaThe debate about the traditional terms, such as “torta”, has occupied Spanish case law for a long time and now the saga continues on an EU level. The main discussion is about whether the expression “torta” can be classified as a Traditional Designation.   Background: The Regulatory Body for ... Read More

Tobias Cohen Jehoram, Carlos van Staveren and Renate KeijserIn a contribution published in Berichten IE 2018/4, De Brauw lawyers Tobias Cohen Jehoram, Carlos van Staveren and Renate Keijser analyse all IP rulings handed down by the Dutch Supreme Court this century. The analysis helps IP specialists identify the right strategy ... Read More

By Barry Skidelsky, Esq. The recently enacted John MCain National Defense Authorization Act for fiscal year 2019 (NDAA) adds §722 to the Communications Act. It requires the filing of reports with the Federal Communications Commission (FCC) by statutorily defined U.S. based foreign media outlets, including details of their legal structures ... Read More

In a case of first impression, the Board ruled that a color mark consisting of multiple colors applied to product packaging cannot be inherently distinctive. Consequently, since Applicant Forney Industries did not seek registration under Section 2(f) in the alternative, the Board affirmed a refusal to register the mark shown ... Read More

Ilarion TomarovUkraine is actively working on the implementation of European standards of trademark protection and is making significant efforts to fill the lacunas of the current trademark system. As the system is developing we provide a short overview of abuse of rights to trademarks. Article 6 quinquies of the Paris ... Read More

Bayer sells FLANAX brand pain reliever in Mexico.  Virginia-based Belmora adopted and applied to register the FLANAX mark for pain reliever in 2003, prior to any use or applications in the U.S. by Bayer.  4th Circuit, in the first circuit court case to apply Lexmark to 43(a)(1)(A), held that ... Read More

The CAFC's opinion in In re Detroit Athletic Co., Appeal No. 2017-2361 (Fed. Cir. Sept. 20, 2018) [precedential] is a primer on much of the law of Section 2(d) as applied by the TTAB. The appellate court upheld the Board's affirmance of a refusal to register the mark DETROIT ATHLETIC ... Read More

Managing international trademark portfolios in the age of globalization can be a fickle endeavor.  Ecommerce has blown the top off traditional thinking as it relates not only to advising your clients on what and where to file, but also how to strategically maintain those filings in the face of an ... Read More

In recent weeks, Chicago, IL-based Hawaiian cuisine chain Aloha Poke has become embroiled in a public relations nightmare over a trademark policing campaign which has created backlash over claims of cultural appropriation. According to reports, Aloha Poke has sent cease-and-desist letters to restaurants throughout the United States who have used ... Read More

Over two years after a group of World Intellectual Property Organization members adopted a treaty on the protection of geographical indications, the European Commission has recommended that the European Union join the treaty. The EU was one of the major proponents of the treaty. Separately, a geographical indications industry group ... Read More

There are often big issues at stake at the global center for international intellectual property policy in Geneva, but sometimes, the nearly 200 governments that direct the UN World Intellectual Property Organization have to ask themselves questions like, should the director general of WIPO get to fly around the world ... Read More

Yours Truly will present a webinar on recent TTAB developments on September 26th from 12 to 1 PM EST, sponsored by Wolf, Greenfield & Sacks, P.C. "Admission" is free. Register here.The webcast will emanate from the Federal Reserve Building in beautiful downtown Boston. Among the topics to be covered are ... Read More

Looking at movements in the global IP community over the summer and heading into fall, many old faces among the government delegations in Geneva left for new posts, while a new set of faces is taking up residence. Meanwhile, people are on the move at international organisations and NGOs, and ... Read More

When we lived in Chelsea, our local firehouse was Engine Co. 3, Ladder Co. 12. They would send firemen to visit our kids’ preschool. When we took the kids in the stroller by the firehouse, the firemen would let the kids climb on the firetrucks. On 9/11, Engine Co. ... Read More

The WHOIS database provides technical information about the date of creation and expiration of a domain, as well as contact information for the registrant of a website, including name, physical address, email address, and phone numbers. GoDaddy and WHOIS.com appear to have selectively redacted the information only for registrants providing ... Read More

On September 7, 2018, the USPTO filed at the Supreme Court a Petition for a Writ of Certiorari (pdf here) in Iancu v. Brunetti, seeking the Court's review of the judgment of the U.S. Court of Appeals for the Federal Circuit in In re Brunetti, 125 USPQ2d 1072 (Fed. Cir. ... Read More