Trademarks

At a time when international trade might be perceived as creating more harm than good, the World Trade Organization is proposing to go “behind the headlines” and beyond the rhetoric, as the theme of its yearly public forum of stakeholder discussions, which opened today. ... Read More

Mark EngstromThe Trademark Trial and Appeal Board did not err in refusing to register the trademark FIRST TUESDAY for lottery games and services, the U.S. Court of Appeals for the Federal Circuit has ruled. According to the court, the mark described a feature of the applicant’s goods and services: scratch-off ... Read More

Kai Schmidt-Hern and Benjamin KochTrademark questions pop up in practically every M&A transaction. Many of these questions are straightforward, some require specialist knowledge. Specialists like to demonstrate as much of their knowledge as possible, and even IP lawyers are not always immune to this. But M&A transactions are not the ... Read More

In a rare decision based solely on dilution, The Board sustained an opposition to registration of SUPER WOMAN OF REAL ESTATE, in standard character form, for "real estate procurement for others" [REAL ESTATE disclaimed], finding the applied-for mark likely to dilute by blurring the famous marks SUPERMAN, SUPERWOMAN, and Superman's ... Read More

By: Ruth Hoy and James Tighe On 6 September 2017, the EU Commission published its position paper setting out the main principles that will govern its attitude to Brexit negotiations with the UK on intellectual property (the “Paper”).  The Paper sets out 5 General Principles: Principle 1:  European IP rights ... Read More

By Michael Kusi Aaron Hernandez was a tight end who played for the New England Patriots of the National Football League (NFL) from 2010 to 2013. He was arrested on June 26, 2013 for the murder of Odin Lloyd, who was a semi-professional football player. The New England Patriots released ... Read More

The Board affirmed a Section 2(e)(4) refusal of the applied-for mark OLIN for certain chemical products, finding the mark to be primarily merely a surname and lacking in acquired distinctiveness under Section 2(f). Although the application was filed under the intent-to-use provisions of Section 1(b), the Board ruled that acquired ... Read More

By Eric Lanter For Puerto Ricans Off the Island, a Struggle to Contact After Hurricane Maria With approximately five million Puerto Ricans living on the mainland and their families in Puerto Rico, the magnitude of Hurricane Maria brought tremendous concern. After the hurricane passed, however, the concern increased, as the ... Read More

On September 12th, Judge Anthony Battaglia of the Southern District of California entered an order granting motions made by the San Diego Comic Convention in a trademark case over the use of the Comic-Con title on pop culture conventions. The order also denies motions made by a Utah-based entity which ... Read More

In the World Trade Organization Market Access Committee today, a range of member countries raised concern over China's tariffs on semiconductors and India's duties on a range of information technology products. In addition, the European Union raised concern over uneven application of lower tariffs for geographically indicated wines, favouring local ... Read More

The Board suspended this opposition proceeding in view of an LLC operating agreement that called for arbitration of any dispute between the members of the LLC arising out of or relating to the agreement. The particular dispute centered on the issue of ownership of the mark LATEA and whether Applicant ... Read More

Both the U.S. House of Representatives and the U.S. Senate are currently contemplating versions of the Defending Against Imitations and Replacements of Yogurt, Milk and Cheese to Promote Regular Intake of Dairy Everyday (DAIRY PRIDE) Act; the House version is bill H.R.778 and the Senate’s is S.130. If passed, the ... Read More

The Board affirmed a refusal to register QLED on the Supplemental Register, finding it to be generic for smartphones, computers, and related goods. However, the Board allowed applicant to delete those goods from the application so that registration will issue for the remaining goods (for example, software for mobile phones). ... Read More

A recent trademark infringement case between Stork Market Inc v. 1736735 Ontario Inc. (Hello Pink Lawn Cards Inc), 2017 FC 779 has resulted in a win for the plaintiff and retribution in the amount of $30,000.  The copyright and trademark case deals with competitors in the business of renting and installing ... Read More

Rainer SchultesCan the use of “KHG” infringe the name rights of “Karl-Heinz Grasser”? Former Austrian Minister of Finance Karl-Heinz Grasser is widely known as KHG. After his term, which ended in 2007, he was accused of bribery in various cases. The accusations and investigations gained great public attention. In 2015, ... Read More

Several weeks ago, the Trump administration formally launched a “Section 301” investigation into the “theft of intellectual property” by China.  According to US Trade Representative Robert Lighthizer, the investigation will “look into Chinese laws, policies, and practices which may be harming American intellectual property rights…”  China is a large market ... Read More

The Board granted Opposer Tidal Music's motion for summary judgment, concluding that Applicant Rose Digital had failed to prove use of the applied-for mark #TIDALTUESDAY for advertising and promotional services at the time it filed the challenged application. Rose pointed to its promotion of "the coming of the '#TidalTuesday' product" ... Read More

We recently hosted an event at the firm where we discussed legal issues concerning parallel imports in the transportation industry, so a recent decision by the U.S. Court of International Trade discussing “Lever Rule” protection caught my attention.  To those who do not traffic in the world of parallel imports, ... Read More

“Indian Trade Mark Statistics for September 2017 (Third Week), SYSKA Trade Mark Infringement, Hurricane Irma Trade Mark, UrWork in a Legal Battle with WeWork, Siroi Lily of Manipur for GI Registration and more,” brought to you by Trade Mark Attorneys at BananaIP (BIP) Counsels. TRADE MARK QUOTE OF THE WEEK ... Read More

Fish IP Law firm seeks declaratory judgment against Fish and Richardson. ... Read More

The House of Commons Standing Committee on International Trade has been conducting hearings on the NAFTA negotiations. I appeared before the committee yesterday on a panel that included the dairy industry, food and beverage sector, and my comments on IP and e-commerce. The MPs showed considerable interest in both IP ... Read More

The USPTO refused to register the mark FARM TO TABLE, finding it merely descriptive of "wines" under Section 2(e)(1), and also concluding that it failed to function as a trademark under Sections 1, 2, and 45 of the Trademark Act. Applicant argued that the mark "cannot describe wine because 'fresh' ... Read More

In a case of first impression, the Trademark Trial and Appeal Board (the “TTAB”) decided that a licensee, even an exclusive licensee who has been appointed by the licensor as its representative for protecting intellectual property rights, cannot assert her licensor’s purported priority rights to prevail in a claim of ... Read More

By Tiombe Tallie Carter Trump Backs Plan to Stop Deportation of Dreamers After meeting with Senator Chuck Schumer and Representative Nancy Pelosi for dinner at the White House, President Trump announced he could support a deal to protect young, undocumented immigrants brought to the county as children if it is ... Read More

Discussions last week at the World Intellectual Property Organization on how international IP systems managed by the organisation are financed have introduced broader questions about core functions. The WIPO budget for 2018/2019 was not approved in committee during the week, despite efforts by a small group of countries to find ... Read More

In celebration of the Intellectual Property Owners Association’s Annual Meeting, currently underway in San Francisco, we offer a brief tour through some GOLDEN GATE-themed trademarks.  As a prominent feature of San Francisco’s geography, even before the iconic bridge was built, the Golden Gate is a popular theme in trademarks for ... Read More

The Board sustained this Section 2(d) opposition, finding applicant's mark SUNDICATORS likely to cause confusion with opposer's mark SUN/DICATORS, both for sun awareness products that measure UV radiation and alert the user to reapply sunscreen or retreat indoors in order to prevent overexposure. But the Board dismissed opposer's fraud claim ... Read More

The Office of the United States Trade Representative (USTR) today announced an "out-of-cycle" review of Thailand's intellectual property policies after what USTR said were reports of improvement on several IP issues including trademarks and enforcement. Another area of the review will be pharmaceuticals. ... Read More

Actor's Temple | 339 W 47th Street | New York, NY 10036 Cost to Attend: $30 for EASL and IP Section Members | $50 for NYSBA Members | $75 for Non-Members Speakers: Cheryl L. Davis, Esq., Menaker & Herrmann LLP, Moderator Hon. Barbara Jaffe, Supreme Court of the State of ... Read More

Here are three Section 2(d) appeals decided two days ago. Third-party use and registration evidence played a significant role in each case. At least one of the appeals resulted in reversal of the involved refusal(s), but not all three. Applying your jurisprudential skills and/or well-honed instincts, how do you think ... Read More