Trademarks

In a recent Federal Court Trial Division decision, the Court found that the trademark registration for LIVE, registered in association with, among other things, hotel, entertainment and advertising services, should be expunged for non-use during the relevant three year period. ... Read more ... Read More

The Board affirmed a Section 2(e)(5) refusal to register the product configuration shown below, for "yoga blocks," finding the proposed mark to be de jure functional and therefore unregistrable. Applicant's advertising touted the advantages of the design and "there appear to be no alternative designs available that would work as ... Read More

The Board affirmed a refusal to register, on the Supplemental Register, the phrase WORLD'S BEST DOWN for bedding containing down [DOWN disclaimed], finding that the phrase is "incapable of distinguishing goods and cannot function as a trademark or indicator of source." The evidence established that "World's Best Down" is "a ... Read More

Indian Trademark Statistics for August (Second Week), Selena Gomes Files New Trademark, Tupperware to Open 30 Franchise-Run Stores, Ginsu Carves Licensing Program with JRL, Palani Panchamirtham Gets GI Tag and more, brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel. TRADEMARK QUOTE OF THE WEEK “Define what your ... Read More

The picture you see is of a shirt from my husband’s closet – a gift I gave him a few years ago.  He is a big Ohio State Buckeyes fan, and this is sort of an inside joke for OSU football fans.  The word THE superimposed on the shape of ... Read More

Although the PIERCE-ARROW automobile was last produced in 1938, the Board sustained this opposition to registration of the mark PIERCE-ARROW for automobiles, finding a likelihood of confusion with the registered collective membership mark PIERCE ARROW SOCIETY for "indicating membership in a national organization whose aim is to foster and preserve ... Read More

The American Intellectual Property Law Association (AIPLA) and Foley Hoag LLP are hosting a trademark roundtable discussion in Boston on September 17th, from 11:45 AM -2:00 PM, at the Foley Hoag offices. Details and registration information here. Registration fee is $20 and lunch will be served! How can you beat ... Read More

Another test for you. Abercrombie & Fitch opposed an application to register the mark RED DEAR & Design, shown below left, for various clothing items, claiming a likelihood of confusion with its two registered "Moose logo" marks shown below right, for overlapping clothing items. Applicant Shnittger, appearing pro se, stipulated ... Read More

Agnieszka SztoldmanOn 29 July 2019, the European Court of Justice (CJEU) handed down a ruling that ended a six-year battle over the validity of trademark rights in the name of Red Bull to the combination of the colours blue and silver (EUTM nos. 9417668 and 2534774) (C‑124/18 P). The CJEU ... Read More

The USPTO refused to register the mark CANNONBALL CREEK BREWING COMPANY GOLDEN, COLORADO and Design, as shown below, for “beer” [BREWING COMPANY GOLDEN, COLORADO disclaimed], finding the mark likely to cause confusion with the registered mark CANNONBALL DOUBLE IPA for “ale; beer; brewed malt-based alcoholic beverage in the nature of ... Read More

By Bennett Liebman Government Lawyer in Residence Government Law Center, Albany Law School In the Broadway musical "Curtains", composers Fred Ebb and John Kander say of theater critics, in the song "What Kind of Man?": "Who could be mean enough, Base and obscene enough, To take a job like that? ... Read More

By La-Vaughnda A. Taylor Edited by Elissa D. Hecker Below is the previous week's news in the categories of Entertainment, Arts, Sports, Media, and General News: Entertainment R. Kelly Faces Two New Counts of Sex Crimes in Minnesota Following an alleged incident involving the prostitution and solicitation of an underage ... Read More

The USPTO refused to register the mark KP QUIK STOP & Design for retail convenience stores, finding it likely to cause confusion with the registered mark KWIK STOP for "Retail convenience store services featuring gasoline, other petroleum products and alcoholic beverages." The services are identical, but what about the marks? ... Read More

You may recall our last post on the Federal Court decision about two appeals by Trident Seafoods Corporation (“Trident Seafoods”) from decisions made by delegates of the Registrar of Trade Marks in relation to disputes with Trident Food Pty Ltd (“Trident Foods”). By way of brief re-introduction, Trident Seafoods was founded ... Read More

The USPTO refused to register the mark KERRIDGE COMMERCIAL SYSTEMS for various goods and services, all for use in the distribution, wholesale, merchant and retail industries [COMMERCIAL SYSTEMS disclaimed], finding the mark to be primarily merely a surname under Section 2(e)(4). The evidence showed at least 193 results for the ... Read More

Robert MargolisA licensor’s failure to disclose in discovery an agreement acknowledging that a third party owned the mark was properly sanctioned. Two beach merchandise retailers asserting rights to use the mark “WINGS” in connection with their stores will have to go to trial to sort out their competing rights, the ... Read More

Finding that relevant consumers would understand the term MALAI to refer to a key aspect of "ice cream, gelato, dairy-free ice cream, frozen yogurt, frozen desserts, ice cream sandwiches, sorbet, freezer pops, and ice cream sundaes," the Board affirmed a refusal to register on the ground of genericness. In re ... Read More

Indian Trademark Statistics for August (First Week), Kodaikanal Hill Garlic Gets GI Tag, Maurizio Collaborates with Filippo, Ola Expands Operations in Australia, Stan Lee Comes to Life: All American Licensing Partners with POW and more, brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel. TRADEMARK QUOTE OF THE ... Read More

David LefflerOn 22 July 2019, the Second Board of Appeal at EUIPO issued a decision partially invalidating the EUTM ‘MONOPOLY’. The reason for the invalidation was that the Board considered the EUTM proprietor to have been in bad faith when it filed the application for the EUTM insofar as it ... Read More

The Board sustained this opposition to registration of the mark WOLVOL for laptop computers and related goods, finding a likelihood of confusion with the registered mark VOLVO for a variety of goods and services, including computers and video screens. The Board found the mark VOLVO to be famous for automobiles, ... Read More

The CAFC affirmed the TTAB's decision finding a likelihood of confusion between the two marks shown immediately below for athletic clothing. On appeal, Applicant Hylete argued that the Board erred by considering only Opposer Hybrid's design mark and not its  "composite common law mark" comprising the stylized "H" design above ... Read More

The USPTO has issued Examination Guide 4-19 (August 2019), entitled "Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants." (pdf here). Effective August 3, 2019, amended Rule 2.11 requires foreign applicants, registrants, or parties to a trademark proceeding to be represented by a U.S. attorney. Furthermore, the USPTO ... Read More

By, Angela Peco Edited by Elissa D. Hecker Below are sections divided into Entertainment, Arts, Sports, Media, and General News: Entertainment Katy Perry Loses Copyright Battle over "Dark Horse" Katy Perry and her collaborators owe $2.78 million following a ruling that her song "Dark Horse" copied elements of "Joyful Noise," ... Read More

Sara Parrello and Fabio AngeliniSome (among whom, the truly yours) wondered, when in late June the US Supreme Court held unconstitutional the Lanham Act provision (15 U. S. C. §1052(a)) prohibiting registration of trademarks consisting of or comprising immoral or scandalous matter because it discriminates on the basis of viewpoint ... Read More

The Board affirmed a refusal to register the purported mark shown below for a variety of goods in classes 28, 29, 30, 32, and 33, finding that it fails to function as a source indicator because it would be perceived as a merely ornamental use of the well-known Uncle Sam ... Read More

With the recent departure of Judge Susan J. Hightower (to become a United States Magistrate Judge), and the arrival of Deputy Chief Judge Mark A. Thurmon, the Board’s membership now stands at twenty-five (25) Administrative Trademark Judges. The current roster is set forth below, beginning with Chief Judge Gerard F. ... Read More

Aditi GuptaAre e-commerce websites allowed to sell products of companies engaged in direct selling? The Delhi High Court of India, in its judgment of 8 July 2019, here, held platforms such as Amazon, Flipkart, Snapdeal, 1MG and Healthkart guilty of tortious interference with the contractual relationship of the plaintiffs with ... Read More

The USPTO refused to register the mark LIQUOR SLINGER DISTILLING for "liquor" [LIQUOR and DISTILLING disclaimed], finding the mark likely to cause confusion with the registered mark SLINGER for "drinking glasses; shot glasses." Applicant James argued that the goods are sold in different channels of trade, and that the word ... Read More

Below is the Center for Art Law's monthly case law digest. Please note that in September, the Center for Art Law will make its Case Law digests a subscription-based feature of its otherwise free newsletter - Art Law Blast (https://itsartlaw.org/newsletter/). If you would like to continue receiving the case updates, ... Read More

Indian Trademark Statistics for July (Fourth Week), Odisha Rasagola Gets GI Tag, Kanye West Trademarks Sunday Service, New York Fries to be opened in India and more, brought to you by the Trademark Attorneys at BananaIP (BIP) Counsels. TRADEMARK QUOTE OF THE WEEK “A product can be quickly outdated, but ... Read More