Trademarks

NEW YORK – Major changes are coming to the makeup of the US Congress from the perspective of intellectual property policy, and while it may translate into more patent-friendly officials, the prospect for legislation is uneven, a panel of IP experts told a private sector conference here last week. ... Read More

When I heard that the Girl Scouts of the United States of America filed a lawsuit against the Boy Scouts of America last week, I was fascinated.  As a former Girl Scout and troop leader myself, who also happens to practice trademark law, I have a lot of thoughts about ... Read More

The USPTO refused registration of the mark ATHLETE INTELLIGENCE, in standard character form, for wearable monitoring devices and systems. Applicant argued that the mark is merely suggestive of the goods because "multistep reasoning" would be need to extract any information from the mark, and further argued that the mark is ... Read More

Joseph ArshawskyPlaintiff Sturgis Motorcycle Rally, Inc. (“SMRI”) did not provide the jury with sufficient proof that its unregistered marks “Sturgis,” “Sturgis Motorcycle Rally,” and “Sturgis Rally & Races” marks were valid marks that acquired secondary meaning, the United States Court of Appeals for the Eighth Circuit has ruled, reversing a ... Read More

By Eric Lanter Edited By Elissa D. Hecker GENERAL NEWS America Votes in the Midterms The Democrats secured the House of Representatives and the Republicans increased their majority in the Senate, but there were nuances and there remain elections to be called. In the Senate, Democrat incumbents Claire McCaskill and ... Read More

The following case selection first appeared in this week's Center for Art Law newsletter: Pumpkin Season. The Gulbenkian family, one of the biggest names in the art market, is currently being sued before the High Court in London over the claim that it received almost $1.4 million for a Yayoi ... Read More

PARIS -- French President Emmanuel Macron today opened the 13th Internet Governance Forum (November 12-14) in Paris with a firework of requests to the IGF community and some bold ideas. The IGF after a decade should take on much more responsibility in the development of internet regulation, Macron demanded, and ... Read More

A number of countries are voicing concerns about their country name being used by trademark applicants with no relation to the country, riding on the country's reputation or geographical relevance. They are also worried about their country name being used as an internet top-level domain name. Those are among the ... Read More

The World Trade Organization intellectual property committee met last week with lively discussions on the benefit of IP rights protection for new businesses, and on the role of competition law to prevent abuses of those rights and in particular ensure greater access to medicines. Also, considering the recent WTO Dispute ... Read More

In this concurrent use proceeding, the Board ordered restriction of a registration for the mark GREENFIELD for various healthcare services, to the state of Oregon. Applicant successfully sought concurrent use registrations for the marks GREENFIELD ASSISTED LIVING and GREENFIELD SENIOR LIVING for assisted living facilities in the remainder of the ... Read More

In Kokanratna Holiday Resorts vs. Millennium & Copthorne International Limited, the Bombay High Court recently passed an order that required the Defendant to give prior, written notice of 7 days to the Plaintiff before initiating any legal proceedings against them pertaining to the trademark ‘Hotel Millennium Park’. The order passed ... Read More

On Friday, November 2nd, the Court of Appeals for the Eighth Circuit issued a decision in Sturgis Motorcycle Rally, Inc. v. Rushmore Photo & Gifts, Inc., et. al. which reversed various parts of the lower court’s decision in the trademark infringement case brought by Sturgis, which claimed to own trademarks ... Read More

For the innovators capitalizing on the legal growth, distribution, and commercial sale of cannabis, the procurement of intellectual property rights can go a long way in the monetization of their ideas, products, and services. As with any new venture, solidifying an IP protection strategy early on can maximize the benefits ... Read More

Over a year ago, we wrote about the intersection between trademarks and bankruptcy. Specifically, we described a scenario in which a licensor files bankruptcy and chooses to ‘reject’ the license agreement. Under the Bankruptcy Code, the licensee may continue to exercise its rights (and carry out its corresponding duties) with ... Read More

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The importance of intangible capital is growing and so is the significance of intellectual property, according to some, and in particular in the new economy. Start-ups see intellectual property as an indispensable tool to attract investors and put their innovations onto the market. Developing countries still mainly stuck in what ... Read More

The TTABlog was launched on November 8, 2004, with a blog post entitled "Leo Stoller Loses Again" (here). Remember him? Here we are, thousands of blog posts (and more than 10,000 tweets) later.  Thank you to all you readers!  Greetings from INTALM in New Orleans! Read comments and post your ... Read More

Do Not Tread on This Trademark (Image From Wikimedia Commons) In a significant judgement for e-commerce in India, the Delhi High Court in Christian Louboutin SAS v Nakul Bajaj and Ors., (decided on November 2), has recently attempted to clarify the responsibilities and liability of online intermediaries for trademark infringement. ... Read More

Although running an early-stage startup is exhilarating, do not let your brand name protection be swallowed up by all the excitement. Neglecting to properly secure a trademark for your company and products can lead to expensive consequences in the future, such as being forced to rebrand just as you’re gaining ... Read More

Diesel S.p.A. opposed an application to register MISEL DISEL for "smooth shave enhancer, namely, pre-shave liquid," claiming a likelihood of confusion with its registered mark DIESEL for, inter alia, pre- and after shave creams and lotions. The goods are essentially identical, or at least closely related, but what about the ... Read More

Indian Trademark Statistics for November (First Week) 2018, ByteDance sued for Helo, P&G Loses Trademark Battle, Sangli chi Halad Obtains GI Acceptance and more, brought to you by the Trademark Attorneys at BananaIP (BIP) Counsels. TRADEMARK QUOTE OF THE WEEK “A brand is not just a logo, it’s the overall ... Read More

Boris MalakhovThe issue of whether domain registrars shall be liable for online infringements has been actively debated in Russia for the recent 3 years. Starting from a remarkable MMK vs. REG.RU case (А40-52455/2015), where the IP Court refused to apply the regime of information intermediaries. After several futile attempts, ... Read More

Secretary of Commerce Wilbur Ross today announced the appointment of Laura A. Peter as deputy under secretary of commerce for intellectual property and deputy director of the United States Patent and Trademark Office (USPTO), effective November 13, 2018. Peter most recently held the position of deputy general counsel of A10 ... Read More

The United States Patent and Trademark Office (USPTO) today announced a new deputy director, Laura Peter, a veteran intellectual property attorney, most recently at Silicon Valley cyber-defence firm A10 Networks. ... Read More

A new directive adopted today by European Union member governments updates and strengthens regulations on video-sharing platforms and other newer forms of media, emphasising the public interest, elevating protections for children, and establishing a 30 percent quota of European content in on-demand audiovisual media services. ... Read More

The USPTO refused registration of the mark COCOON BY SEALY in standard character and design form (shown below), finding the mark likely to cause confusion with the registered mark SLEEP COCOON, both for mattresses and pillows (SLEEP disclaimed). Applicant contended that the "famous" SEALY house mark distinguishes its mark from ... Read More

Janice BereskinOn October 17, 2018 Canada legalized recreational cannabis, offering opportunities and challenges for businesses in this emerging field. Even before legalization, there was a notable increase in Canadian trademark filings covering cannabis products, services and related accessories. Unfortunately, many of these mark may never be legally used in Canada ... Read More

I spoke about this decision at the John Marshall Law Conference last week.  I think the bit about comparing defendant’s product to plaintiff’s mark, on page 24, seems like a mistake.  I think in a non-trade dress case the trier of facts compares the marks to each other, and ... Read More

By Jana S. Farmer Edited by Elissa D. Hecker Supreme Court Reviews Google Class Action Settlement Over Privacy Last Wednesday, the Supreme Court heard arguments whether it should allow or limit class-action settlements in which class members receive nothing, whereas their lawyers recover millions of dollars. https://www.nytimes.com/2018/10/31/us/politics/supreme-court-google-class-action-lawsuit.html?login=email&auth=login-email https://www.bloomberg.com/news/articles/2018-10-31/high-court-justices-weigh-limits-on-settlements-in-google-case Dawn Spacecraft ... Read More

Nathan Kelley has stepped down from his role as solicitor and deputy general counsel at the United States Patent and Trademark Office (USPTO) to join the Perkins Coie law firm in Washington, DC. Kelley also had served as chief administrative patent judge in charge of the Patent Trial and Appeal ... Read More