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Category: Trademarks


"The" Ohio State Tries to Trademark the Word "THE"
August 15, 2019
Post by Sarah M. Dickhut
On August 8, 2019 The Ohio State University filed a trademark application with the United States Patent and Trademark Office for the word mark “THE” to be used in connection with clothing, namely “t-shirts, baseball caps and hats.” Unlike Ohio State’s other trademark applications, which cover the phrase “The Ohio State University” as a whole, the August 2019 application covers only the word “THE.” A t.......
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Buying the Cow: Why Branding is Commonly Concealed in TV Shows and Movies
July 26, 2019
Post by Nicholas J. Krob
 Have you ever been watching a TV show and noticed that certain logos on various products were covered with tape or otherwise concealed? Do you know why that is? If you don’t, you’re not alone.  In a controversial video posted last month by guitar giant Gibson, the company issued a warning stating that it was going to “fight to protect its intellectual property.” In doing so, the company specif.......
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Drafting the Fine Print: Every Word is Significant in a License Agreement
June 28, 2019
Post by Tina G. Yin Sowatzke, Pharm.D.
Tina G Yin-Sowatzke Licensing agreements can be both complex and extensive, however, diligence must be exercised in ensuring that the scope of rights to be transferred are clearly defined. The failure to do so may result in disputes over the interpretation of licensing agreements, where each word and phrase may be painstakingly scrutinized in court. Such disputes arose in the case of Sköld v. Galderma Lab.......
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Big Mac Blunder: McDonald’s Loses European Trademark Rights for Famous Burger
February 14, 2019
Post by Nicholas J. Krob
Last month, the European Union Intellectual Property Office (EUIPO) issued a surprise decision revoking fast food giant, McDonald’s, “BIG MAC” EU trademark registration in its entirety. The decision was the latest development in an ongoing battle between McDonald’s and Irish fast food restaurant Supermac’s. McDonald’s trouble started in 2014 after they opposed Supermac’s trademark application for “S.......
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Jury Orders Mongols Motorcycle Club to Forfeit Trademark
January 24, 2019
Post by Brandon W. Clark
The Mongols Nation motorcycle club was recently convicted of violations of the Racketeer Influenced and Corrupt Organization Act (RICO) resulting in a California federal jury ordering the motorcycle club to forfeit its trademarked logo based on links between the image and the criminal activities carried out by the group. The imagine incorporates the motorcycle club’s name along with a Genghis Khan-type c.......
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“Hottest Fashion Brand in the World” Sues Children’s Clothing Company for Trademark Infringement
January 02, 2019
Post by Nicholas J. Krob
In December 2018, high-end streetwear fashion label Off-White filed a lawsuit in the Southern District of New York against children’s clothing company Brooklyn Lighthouse, claiming the Brooklyn company infringed upon Off-White’s trademarks and trade dress. Off-White’s products typically retail between $150 and $2,500 and feature “distinctive graphic and logo-heavy apparel designs.”  Such graphics includ.......
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Toe Caps, Stripes, and Bumpers: Federal Circuit Revives Converse Sneaker Dispute
November 07, 2018
Post by Nicholas J. Krob
While Christian Louboutin has shown that trademark rights may extend to colors used on a shoe, can the design of a shoe itself also be protected? As the Federal Circuit made clear last week, the answer is yes. For years, sneaker giant Converse, Inc. has sought to protect its brand by claiming trademark rights in its famous Chuck Taylor sneaker. To this end, Converse filed a federal trademark application .......
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Bloody Shoes: Christian Louboutin Wins Battle Over Non-Traditional Trademark
August 30, 2018
Post by Nicholas J. Krob
“These expensive, these is red bottoms, these is bloody shoes.” Does this line, from Cardi B’s breakout single “Bodak Yellow,” call to mind a particular fashion brand? If not, the following line from Lil Uzi Vert’s “The Way Life Goes” might help you out: “My Louboutins new, so my bottoms they is redder.” For over 25 years, Christian Louboutin has been a staple in popular culture, famous for its red-bottomed .......
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The "Sweet and Musky" Smell of Play-Doh: Hasbro Awarded Non-Traditional Trademark
July 13, 2018
Post by Nicholas J. Krob
When you think of trademarks, what comes to mind? Is it golden arches atop a fast food restaurant? Perhaps the image of a partially-eaten apple emblazoned on the back of a phone or computer? Or maybe it’s the scent of sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough? If one of those seems unlike the others to you, you’re not.......
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ZERO-ing in on the Right Legal Test for Genericness
June 27, 2018
Post by Blog Staff
In Royal Crown Co. v. The Coca-Cola Co., the United States Court of Appeals for the Federal Circuit (CAFC) vacated a decision of the Trademark Trial and Appeal Board (TTAB) dismissing Royal Crown’s opposition to the registration of Coca-Cola’s trademarks for soft drinks and sports drinks with the term ZERO. The CAFC concluded that the TTAB used the wrong legal test to determine whether ZERO is generic, o.......
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State Agency-Sponsored Pizza? TTAB Rules on New Jersey Turnpike Authority's Trademark Opposition
May 18, 2018
Post by Nicholas J. Krob
Do you often find yourself asking which highway management state agency has the best pizza? Or do you ever show up to a pizza chain, disappointed it isn’t a highway management state agency? If not, a recent decision by the USPTO Trademark Trial and Appeal Board will likely make some sense to you. In 2014, the New Jersey Turnpike Authority—the state agency responsible for maintaining the New Jersey Turn.......
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Just Because It’s Nanoscale, Doesn’t Mean It’s Not a Big Deal
March 09, 2018
Post by Jonathan L. Kennedy
Nanotechnology has been taking innovation by storm for decades now and its only increasing its footprint. This is reflected in the growing number of granted patents and published applications directed to nanotechnology inventions. For example, according to StatNano (an organization that monitors and publishing information regarding nanotechnology global developments), more than 20,000 granted patents and patent .......
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The Plant Naming Conundrum … Protecting Your Plant Varieties in the Short and Long Term
February 15, 2018
Post by Christine Lebron-Dykeman
Development of a new plant cultivar or varietal often requires substantial research and development. These costs can be recovered, however, if a breeder is able to successfully market, sell and/or license the resulting product, while maintaining exclusive ownership rights therein.  There are, of course, a variety of intellectual property protection schemes available to maintain those exclusive right.......
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Sail On: Former Commodores Guitarist Fails to Establish Rights in Band's Trademark
January 11, 2018
Post by Nicholas J. Krob
Who owns a band’s trademark when that band is composed of multiple people? And more importantly, what rights does a band member have in that trademark when they leave the band? Earlier this week, the Eleventh Circuit addressed these very questions in a case involving legendary funk/soul band the Commodores. The Commodores, famous for chart-topping singles like “Brick House” and “Three Times a Lady,” formed i.......
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Cancellation of a registered trademark for non-use soon could be easier
November 22, 2017
Post by Blog Staff
According to Chief Administrative Trademark Judge Gerard F. Rogers in his blog post on the Director’ Forum last week, PTO found out through a pilot program that “more than half of registrations being maintained include at least some goods or services for which the registered mark is not actually being used.” “These registered trademarks that are not actually in use in commerce unnecessarily block someone e.......
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Levi's Sues Over Pocket "Tab"
October 10, 2017
Post by Nicholas J. Krob
Can you use of a piece of fabric no bigger than a fingernail to constitute a trademark infringement?  Levi’s appears to think so. Late last month, Levi Strauss & Co. filed a federal lawsuit in San Francisco against Vineyard Vines, LLC alleging the clothing company has been infringing Levi’s trademark rights by sewing a small “tab” onto the back pocket of its jeans. Levi’s claims that it has been sew.......
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Domain Name Disputes: A UDRP Primer
August 09, 2017
Post by Brandon W. Clark
Has someone registered a domain that is identical or strikingly similar to your brand name or trademark? What rights do you have and what legal remedies are available if you or your company find yourself in a dispute over a domain name? This article is intended to serve as a brief overview of domain name dispute resolution proceedings. ICANN, the Internet Corporation for Assigned Names and Numbers, was f.......
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What's In A Name?
August 02, 2017
Post by Blog Staff
Theresa Earnhardt, widow to professional race car driver Dale Earnhardt and step-mother to Kerry Earnhardt, appealed the Trademark Trial and Appeal Board’s decision that her stepson’s mark, EARNHARDT COLLECTION, was notas a whole primarily a surname. Theresa Earnhardt is the owner of trademark registrations and common law rights in the use of the mark DALE EARNHARDT. Kerry Earnhardt, as CEO of Kerry Earn.......
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Gene Simmons Attempts to Trademark Iconic Hand Symbol
June 21, 2017
Post by Brandon W. Clark
Kiss lead singer, Gene Simmons, recently filed a trademark application with the United States Patent and Trademark Office (USPTO) to register the famous rock ‘n’ roll “horns” hand gesture as a trademark. Simmons filed the application June 9th to register “a hand gesture with the index and small fingers extended upward and the thumb extended perpendicular” as a trademark for “live performances and persona.......
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Say What You Will About Trademarks
June 19, 2017
Post by Blog Staff
Simon Tam chose to name his band “The Slants” with the intent to reclaim the term and erase the denigrating connotations associated with it. However, he was confronted with the denial of his trademark application based on the disparagement clause of the Lanham Act. This raised an interesting issue of whether the disparagement clause violates the First Amendment. The Lanham Act allows trademarks to be fed.......
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Does Play-Doh Smell Distinct? Hasbro Thinks So
June 08, 2017
Post by Jonathan L. Kennedy
Most of the time when we think of trademarks, we think of words, slogans, and logos.  But trademarks can be more than that.  Some companies have been able to obtain trademarks for colors.  For example, Tiffany and Co. has registrations for its Tiffany Blue, an example of which is Reg. No. 2,359,351. Similarly, 3M has a trademark for the canary yellow color of its Post-It Notes (Reg. N.......
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'Fame' is Not All-Or-Nothing
June 06, 2017
Post by Blog Staff
The Court of Appeals for the Federal Circuit (“CAFC”) vacated a decision by the Trademark Trial and Appeal Board (the “Board”) denying a petition by Joseph Phelps Vineyards, LLC for cancellation of a trademark held by Fairmont Holdings, LLC. The CAFC held that the Board used an incorrect standard when analyzing the ‘fame’ factor for likelihood of confusion. The court remanded for redetermination using th.......
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Prepping for Protection: First Steps to Developing an IP Strategy
May 16, 2017
Post by Blog Staff
Whether you are an individual, a start-up company, or an existing business, two of the hardest (and most important) questions are: “Do I have intellectual property?” and “How do I protect it?” First, having a qualified attorney will help make answering these questions significantly easier and they can help guide you through the development of an IP strategy that not only protects your current IP, but allow.......
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The Eagles Sue Hotel California
May 02, 2017
Post by Brandon W. Clark
On a dark desert highway, cool wind in my hair Warm smell of the courtroom, rising up through the air(sorry) Earlier this week, The Eagles sued a Mexico based hotel, aptly named Hotel California, alleging trademark infringement and unfair competition. The case, filed May 1, 2017, isEagles Ltd v Hotel California Baja LLC et al, U.S. District Court, Central District of California, No. 17-03276, and alleges.......
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USPTO Heightens Post-Registration Requirements for Trademarks
March 16, 2017
Post by Brandon W. Clark
The U.S. Patent and Trademark Office (USPTO) has recently made changes to the post-registration requirements for U.S. trademark registrations. Effective March 21, 2017, the USPTO will implement a post-registration audit program intended to obtain additional evidence and ensure accuracy of claims that a trademark is in use in commerce in connection with the goods/services listed in the registrati.......
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When the Unthinkable Happens: IP Considerations for Bankruptcy
February 01, 2017
In the event that the unthinkable happens and bankruptcy becomes the only course of action for businesses, having not only a good bankruptcy attorney, but also having an involved IP attorney is vital to ensure that rights in valuable intellectual property are appropriately addressed and maintained. A basic understanding of Chapter 7 and Chapter 11 commercial bankruptcy options can help I.......
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New Year's Resolution: Trademark Review and Planning
December 29, 2016
Post by Nicholas J. Krob
2017 is fast approaching, which means one thing: It is time to select, and soon start implementing, your new year's resolution! For most businesses, there are few resolutions better than those designed to help protect the company's valuable intellectual property. Accordingly, consider making the review and maintenance of your company's trademark portfolio this year's resolution. .......
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Trademark Description: Does job placement software render the service of professional placement and recruitment?
December 22, 2016
Post by Blog Staff
In 2004 JobDiva registered the service mark JOBDIVA (U.S. Registration 2,851,917, hereinafter ‚¬Ëœ917) for "personnel placement and recruitment"services. In 2005, JobDiva registered the service mark JOBDIVA (plus design) (U.S. Registration 3,013,235, hereinafter ‚¬Ëœ235) for "personnel placement and recruitment services; computer services, namely, providing databases featuring recrui.......
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Unity of Control over a Family of Marks
November 16, 2016
Post by Blog Staff
Wise F&I, LLC and a number of its subsidiaries recently opposed Allstate Insurance Company's application to register the marks MILEWISE and ALLSTATE MILEWISE for " insurance services, namely, writing and underwriting of property and casualty insurance and providing ancillary services thereto, namely, administration and claims adjustment,"in International Class 36. Wise F&I, LLC and subsidiaries jo.......
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USPTO Data Visualization Center
November 10, 2016
Post by Jonathan L. Kennedy
Jonathon L. Kennedy Have you ever wondered how long the typical time before a first Office Action in a pending patent or trademark application is?  Or am I the only one waiting for some months after filing an RCE to have my patent application reexamined?  Or what is the average length of time a patent application or trademark application is examined before allowance?  The USPTO Data V.......
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Spinal Tap Goes To 11 As Co-Creator Sues Vivendi for $125,000,000
October 19, 2016
Post by Brandon W. Clark
Brandon W. Clark It is nearly impossible to be backstage at a concert and not hear at least one quote from, or a reference to, the mockumentary This Is Spinal Tap. The film, first released in 1984, has gone on to be considered one of the most popular and successful films of all time. It has been included on numerous "best ever"lists and in 2002 the National Film Registry of the Librar.......
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"White" Color Mark
July 18, 2016
Post by Blog Staff
In In re Hodgdon Powder Company, Inc., the TTAB overturned a prior refusal to register a color mark for gunpowder. In doing so, the TTAB found that Hodgdon Powder Co. had proven acquired distinctiveness under Section 2(f) of the Trademark Act of 1946, 15 U.S.C. § 1052(f), for the color "white"as applied to gunpowder in International Class (IC) 13. The description of the ma.......
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Trademark Searching: The Not-So-Glamorous, Yet All-Too-Important Step in Brand Identification
February 18, 2016
Post by Jonathan L. Kennedy
When you are in the process of branding your company, products, or services, the idea of trademark searching can sound boring and maybe even appear to be an unnecessary expense. However, a proper trademark search can prevent the stress and costs of rebranding and defending a possible law suit, which can be in the realm of thousands of dollars to hundreds of thousands of dollars, if n.......
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Intellectual Property Protection Options for Software
February 15, 2016
Post by Blog Staff
In a previous blog post, I discussed some of the recent updates issued by the United States Patent and Trademark Office regarding patent eligible subject matter and software patents. As anyone who deals with software patents is aware, there is a lot of uncertainty as to whether software is patent eligible subject matter. While the Supreme Court has not unequivocally pronounced software to be ine.......
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Political Campaigns & Unauthorized Music
January 18, 2016
Post by Brandon W. Clark
Brandon W. Clark As the presidential caucuses approach so do the opportunities for political candidates to end up in the headlines for using unauthorized music in their campaigns. In nearly every campaign cycle you hear about a recording artist upset that a politician or campaign used the artist's music without authorization. A list of notable disputes include Bruce Springsteen vs. Ro.......
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Federal Circuit Holds that USPTO Can't Deny Trademarks as Offensive or Disparaging
December 23, 2015
Post by Jonathan L. Kennedy
Jonathon L. Kennedy On Tuesday, December 22, 2015, the Federal Circuit  held that a portion of § 2(a) of the Lanham Act is unconstitutional in a 10-2 decision. The decision was made in In re Simon Shiao Tam, an appeal from the Trademark Office. Mr. Tam is a member of an Asian American rock band called THE SLANTS. The band applied for a trademark for its name. The Trademark Office.......
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Who owns the Trademark: Distributor v. Manufacturer
August 11, 2015
Post by Blog Staff
The Trademark Trial and Appeal Board (TTAB) has previously held that in the absence of an agreement between a manufacturer and a distributor, there is a legal presumption that the manufacturer is the owner of the trademark. The presumption that the manufacturer is the owner of a disputed mark may be rebutted. In determining which party has superior rights, the TTAB has looked to severa.......
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Geographical Scope of Permanent Injunctions Challenged
June 17, 2015
Post by Blog Staff
  Federal trademark rights are generally enforceable throughout the United States.  However, confusion can arise where contrary decisions have been made by district courts in different geographical regions relating to the same mark. The Fourth Circuit's March decision in Georgia Pacific Consumer Prods. LP v. Von Dreble Corp, an appeal from the Eastern District of North Carol.......
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Cancelation of Trademarks due to First Actual Use After Application
March 04, 2015
Post by Blog Staff
Federal registration of a trademark provides a number of benefits to the trademark owner, including protection throughout the entire country, advantageous litigation position—for example presumption of validity and enhanced monetary damages—and enlistment of the U.S. Customs Service to stop importation of counterfeit goods. The federal trademark system provides two separate avenue.......
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Are Trademarks for Beer Names Becoming a Commodity?
January 09, 2015
Post by Blog Staff
While typically we think of finite resources such as oil and coal as commodities, it could be that the next big commodities are names for craft beers and breweries. According to a recent NPR story, which can be foundhere, the craft brewing industry is becoming an increasingly crowded industry with more than 3,000 breweries in the United States. Unfortunately for many craft brewers, the individuals behind naming.......
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Passing Off and Taking Credit for Architectural Plans
September 22, 2014
Post by Blog Staff
The United States Court of Appeals for the Seventh Circuit has issued a decision in Gensler v. Strabala, overturning a district court’s ruling dismissing a complaint for trademark infringement under §43(a) of the Lanham Act. Strabala, a former Design Director and architect for the architectural firm Gensler & Associates, formed his own design firm, 2Define Architecture. The 2Define Architecture web.......
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USPTO Cancels Washington, D.C. NFL Franchise's Trademark Registrations
June 19, 2014
Post by Blog Staff
The United States Patent and Trademark Office issued a decision yesterday cancelling six federal trademark registrations owned by the Washington, D.C. National Football League franchise. The cancellation proceeding was brought by five Native American petitioners on the basis that the marks disparage persons or bring them into contempt or disrepute in violation of 15 U.S.C. § 1052(a). The Trademark Trial and.......
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2014 Supreme Court Cases Relating to Intellectual Property
January 16, 2014
Post by Blog Staff
On January 10, 2014 the Supreme Court agreed to review a variety of intellectual property cases in the upcoming session, including two patent cases, a copyright case, and a trademark case (including Lanham Act claim). A brief overview of these cases is provided and more detail will be available once decisions are entered by the Court. Limelight Networks, Inc. v. Akamai Technologies, Inc. (U.S., No. 12-786.) Ques.......
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Flawed Evidence Undercuts "Charbucks" Trademark Suit
November 27, 2013
Post by Blog Staff
In Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., the U.S. Court of Appeals for the Second Circuit affirmed a district court’s decision denying injunctive relief in Starbucks’ trademark case against Black Bear Micro Roastery over Black Bear’s use of “Charbucks” for coffee. Starbucks sued Black Bear in 2001, alleging, among other things, trademark dilution in violation of 1.......
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New and Useful - February 21, 2013
February 21, 2013
Post by Blog Staff
Normal 0 false false false EN-US X-NONE X-NONE Read More


Supreme Court: NFL collective licensing of trademarks not immune from Section 1 antitrust scrutiny
May 26, 2010
Post by Blog Staff
Monday the Supreme Court unanimously held the NFL's practice of collectively licensing the trademarks of all 32 individual teams is not immune from antitrust scrutiny under Section 1 of the Sherman Act. The NFL argued that because the marks are all licensed through a single entity, NFL Properties, there was no "contract, combination, . . . or conspiracy" under § 1, and therefore there could .......
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Today's eCommerce lesson: There's no upside to using others' trademarks in your website meta tags
September 22, 2009
Post by Blog Staff
Those who have a passing familiarity with website design are probably familiar with the concept of meta tags. Meta tags are pieces of data included in the HTML code of a webpage that provide information regarding the content of the page. You can view the code of a webpage you are visiting by clicking the "view" menu and, in IE, selecting "source," or in Firefox, selecting "page source.&.......
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Second Circuit limits 1-800 Contacts; keyword advertising can be use in commerce
April 14, 2009
Post by Blog Staff
In a recent decision, the Second Circuit reversed a district court's grant of a motion to dismiss in a trademark infringement case. The district court, relying on the Second Circuit's 2005 decision in 1-800 Contacts, Inc. v. WhenU.com, Inc., held Google's use of its Adwords and Keyword Suggestion Tool to cause advertising to appear when certain trademarked words and phrases are searched did not consti.......
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Ninth Circuit: Trademark claim against tribal corporation does not confer tribal court jurisdiction
March 23, 2009
Post by Blog Staff
In a recent decision, the Ninth Circuit reversed a district court's grant of a motion to stay federal trademark claims against Indian tribal defendants pending a determination of jurisdiction by a tribal court. The trademark claims were for alleged passing off of cigarettes on the Internet, on the reservation of another tribe, and elsewhere. The district court ruled that there was at least a colorable claim.......
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Ninth Circuit: Copyright owner's ambiguous reservation of rights clarified with extrinsic evidence
December 08, 2008
Post by Blog Staff
In a recent decision, the Ninth Circuit reversed a district court's grant of summary judgment that a copyright holder did not have standing to sue for copyright, trademark, unfair competition, and related declaratory judgment claims. The case involved the film Gone in 60 Seconds, produced and directed in 1974 by H.B. "Toby" Halicki, and remade in 2000. The key issue was the construction of a 1995 .......
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Ninth Circuit: Trademark claim over use in video game stripped away by First Amendment
November 07, 2008
Post by Blog Staff
In a decision Wednesday, the Ninth Circuit affirmed a district court's grant of summary judgment that the producer of Grand Theft Auto: San Andreas had a First Amendment defense against a claim of trademark infringement. The plaintiff owns a strip club known as the "Play Pen" on the eastern edge of downtown Los Angeles. Grand Theft Auto: San Andreas includes, in its fictional city "Los Sant.......
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Eleventh Circuit: Website in Tennessee using Floridian's trademark sufficient for jurisdiction
October 17, 2008
Post by Blog Staff
In a decision last week, the Eleventh Circuit reversed a district court's dismissal of a trademark infringement case for lack of personal jurisdiction. The district court held that the allegedly infringing conduct, operating a website, was insufficient to warrant jurisdiction in the plaintiff's home state of Florida.Here, the plaintiff was an individual, and the trademark allegedly infringed was the plai.......
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USPTO announces trademark consistency pilot program
September 29, 2008
Post by Blog Staff
In a notice today, the USPTO announced a new trademark consistency initiative. Under the new initiative, applicants who believe a substantive or procedural issue has been addressed in a "significantly different manner" in two applications may raise the issue for consistency review. This is subject to four requirements: the request is based on co-pending applications or an application and a registratio.......
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Second Circuit: MLB collective trademark licensing does not violate Sherman Act
September 26, 2008
Post by Blog Staff
In a recent decision, the Second Circuit affirmed a district court's summary judgment to the defendant in an antitrust case regarding trademark licensing. The case involved the collective licensing setup of Major League Baseball Properties ("MLBP"). The plaintiff was a licensee of MLBP. The court held the centralized licensing agent for all Major League Baseball teams did not violate § 1 of.......
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Second Circuit: If you want a court to order the USPTO, ask in your pleadings, not after you win
September 25, 2008
Post by Blog Staff
In a recent decision, the Second Circuit affirmed a district court's decision in a trademark case not to enter an order pursuant to 15 U.S.C. § 1119. § 1119 permits a court to enter an order regarding registrability and cancellation of marks at the USPTO. The prevailing defendant asked the district court to order the USPTO to dismiss a related cancellation proceeding. The party had not requested.......
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Seventh Circuit: Several likelihood of confusion factors favored plaintiff, no summary judgment
September 22, 2008
Post by Blog Staff
The Seventh Circuit recently reversed a district court's summary judgment for the defendant in a trademark infringement case. The district court held no reasonable fact finder could find the marks likely to be confused.On appeal, the Seventh Circuit reminded us that the test for likelihood of confusion is not simply whether consumers will confuse two marks, but whether upon viewing the junior mark a consumer.......
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Seventh Circuit reverses trademark damages award in default judgment because wrong standard applied
September 22, 2008
Post by Blog Staff
The Seventh Circuit recently reversed the amount of damages in a district court's entry of default judgment in a trademark infringement dispute. At issue was whether the Plaintiff was entitled to additional relief on the grounds that the district court applied the wrong standard to its claim for an accounting of profits. The district court found the plaintiff's damage request to be "clearly excessi.......
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Tenth Circuit: District court's internally inconsistent findings lead to remand
September 12, 2008
Post by Blog Staff
In a decision last week, the Tenth Circuit reversed a district court's ruling of no trademark infringement. The district court, applying the Tenth Circuit's six likelihood of confusion factors, initially stated that three factors favored the plaintiffs, two were neutral, and one favored the defendants, but in its conclusion, stated that only one factor favored the plaintiff, with the remainder of the fac.......
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First Circuit: Don't expect to win on appeal if you admit 7 of 8 likelihood of confusion factors
September 02, 2008
Post by Blog Staff
In a decision Friday, the First Circuit affirmed a district court's summary judgment of trademark infringement and an associated award of the defendant's profits and attorney fees to the plaintiff. The defendant used the plaintiff's registered marks in both the metatags of its website as well as in white text on a white background in the body of the site in an effort to cause consumers searching for t.......
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Third Circuit: Evidence of secondary meaning must correspond to the asserted mark
August 08, 2008
Post by Blog Staff
In a decision Wednesday, the Third Circuit affirmed a district court's grant of summary judgment in a trademark case, finding the asserted mark not protectible as a matter of law.The district court granted summary judgment that the mark was generic. On appeal, the Third Circuit held there was a genuine issue of fact as to genericness, but that even if it the mark was descriptive, there was no genuine issue a.......
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Tenth Circuit: MedImmune declaratory judgment jurisdiction test applies in trademark cases
July 18, 2008
Post by Blog Staff
In a decision last week, the Tenth Circuit reversed a district court's decision that Article III jurisdiction did not exist over a declaratory judgment action in a trademark case. At issue was whether a triable case or controversy within the meaning of Article III existed in declaratory judgment action regarding trademark infringement. The district court, applying the Tenth Circuit's pre-MedImmune stand.......
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First Circuit: District court's determination that "duck tour" is nongeneric doesn't hold water
June 24, 2008
Post by Blog Staff
In a lengthy decision last week, the First Circuit held a district court erred in finding the term "duck tour" nongeneric in the context of sightseeing tours on amphibious vehicles. The district court, based largely on the nongenericness of this aspect of the parties' marks, found the plaintiff was likely to succeed in its infringement claims, and entered a preliminary injunction. The defendant ap.......
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Eleventh Circuit: Unsolicited proposals insufficient to show intent to resume use of trademark
June 16, 2008
Post by Blog Staff
In a decision Friday, the Eleventh Circuit affirmed a district court's grant of summary judgment in favor of the defendant, finding the plaintiff had abandoned its trademarks. Although the complaint consisted of both federal and state common law claims, the analysis ultimately came down to whether a valid Lanham Act claim existed, as the remaining claims were based on the alleged § 1125 claims. The El.......
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USPTO publishes two new proposed rules packages for trademark cases
June 12, 2008
Post by Blog Staff
Today's Federal Register brings with it two sets of proposed rule changes from the USPTO, both dealing with prosecution of trademark cases.The first, entitled "Changes in Requirements for Signature of Documents, Recognition of Representatives, and Establishing and Changing the Correspondence Address in Trademark Cases," addresses the requirements for powers of attorney and similar documents in trade.......
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Tenth Circuit: No trademark infringement, unfair competition, or cybersquatting by parody sites
June 02, 2008
Post by Blog Staff
In a decision last week, the Tenth Circuit affirmed a district court's grant of summary judgment finding no trademark infringement, no unfair competition, and no cybersquatting. The district court held, and the Tenth Circuit affirmed, that none of the three elements of a trademark infringement action was proven, namely that the mark was not protectable, the defendant's use was not in connection with goods.......
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Fifth Circuit passes on eBay's applicability in trademark cases
May 29, 2008
Post by Blog Staff
In a decision last week, the Fifth Circuit affirmed a district court's conclusion it had subject matter jurisdiction over a trademark case, as well as its grant of a preliminary injunction. While the activities giving rise to the claim of trademark infringement took place in Mexico, they had a "substantial effect" on United States commerce, and thus were within the court's subject matter jurisd.......
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Eleventh Circuit: eBay may eliminate presumption of irreparable harm in trademark cases
April 14, 2008
Post by Blog Staff
In a recent decision, the Eleventh Circuit vacated a district court's injunction against the use of a competitor's trademarks in the meta tags of a defendant's website. The court held that while the plaintiffs had shown likelihood of success on both their trademark infringement and false advertising claims, because the district court relied on a presumption of irreparable harm to support its injuncti.......
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Second Circuit: Famous marks doctrine doesn't support NY unfair competition claim
March 05, 2008
Post by Blog Staff
In a recent decision, the Second Circuit decided the one outstanding issue from a case it had previously decided in March 2007 (previously blogged here), namely whether the "famous marks" doctrine the court held Congress has not yet incorporated into federal trademark law might support a New York common law claim for unfair competition. The Second Circuit certified two questions to the New York Court o.......
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Second Circuit: Statements made in settlement discussions admissible to prove estoppel
March 05, 2008
Post by Blog Staff
In a decision yesterday, the Second Circuit affirmed a jury's findings in a trademark infringement case between Polo Ralph Lauren and the U.S. Polo Association. The jury found that one of the USPA's four marks was likely to cause confusion. The two parties had been involved in a previous lawsuit in the early 1980s, and the USPA's former logo was found to have infringed Polo's trademark rights.T.......
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Fifth Circuit affirms injunction against trademark infringement in Saudi Arabia
February 29, 2008
Post by Blog Staff
In a recent decision, the Fifth Circuit affirmed a district court's finding of infringement and disgorgement of profits, but increased the amount of profits awarded because the defendant failed to provide evidence of its costs to reduce the award. Interestingly, the infringement took place entirely outside the United States, namely in Saudi Arabia. Even though the products were not sold in the United States.......
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Seventh Circuit: Operating agreement permitted license of marks, so no trademark infringement
February 25, 2008
Post by Blog Staff
In its second trademark decision Friday, the Seventh Circuit clarified what is required for a party to be authorized to use another entity's trademarks. In this case, the plaintiff—one of four founders of two LLC's designed to manage and control a restaurant in Chicago—alleged trademark infringement against the three other co-founders based on the co-founders' use of the trademarks and tr.......
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Seventh Circuit: Sanction of no damages for improper witness contact too severe compared to harm
February 25, 2008
Post by Blog Staff
In a decision Friday, the Seventh Circuit affirmed a jury verdict of trademark infringement, but reversed the district court's ruling holding the plaintiff had forfeited damages because of improper conduct towards a prospective witness. The court dealt with whether the burden of proof for the sanction was by clear and convincing evidence or as the district court concluded, by a mere preponderance of the evide.......
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Seizure of goods with counterfeit marks not an "embargo," so no CIT jurisdiction to challenge fine
February 21, 2008
Post by Blog Staff
In a decision this week, the Federal Circuit vacated the decision of the Court of International Trade (CIT) and remanded with instructions to dismiss the plaintiff's complaint for lack of subject matter jurisdiction.The case arose out of a civil fine levied against the plaintiff for importation of counterfeit goods. The plaintiff brought suit in the CIT to contest the fine. The CIT found that it had subjec.......
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Second Circuit: Sales pitch of slogan to credit card companies not use in commerce
February 08, 2008
Post by Blog Staff
In a decision Monday, the Second Circuit affirmed a district court's summary judgment in a trademark case involving the slogan "My Life. My Card." An individual threatened to sue American Express for use of the slogan, alleging that he had superior rights in the mark based on efforts to license the phrase to various credit card companies, including American Express. American Express filed a declar.......
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Eleventh Circuit: Trademark licensee liable for infringement when deviating from license
January 17, 2008
Post by Blog Staff
In a decision Tuesday, the Eleventh Circuit affirmed a district court's finding of trademark infringement against a trademark licensee. The alleged infringer was actually licensed to use the mark owner's trademark, but did not use the mark as described in the license, instead using an abbreviated form. As a result, the court affirmed the jury's finding of infringement and the associated damages awar.......
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Ninth Circuit clarifies differences between proof of protectable trademark and proof of infringement
December 31, 2007
Post by Blog Staff
In a decision Friday, the Ninth Circuit clarified the differences in use requirements to prove the existence of a protectable trademark as compared to trademark infringement. The plaintiff and defendant both used the same mark, but in connection with different services. The defendant successfully argued at the district court that because the plaintiff did not use its mark in connection with the defendant's .......
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Ninth Circuit: Attorney fees only available for trademark counterfeiting when actual damages sought
December 20, 2007
Post by Blog Staff
In a decision Tuesday, the Ninth Circuit reversed a district court's decision awarding $100,000 in attorney's fees for trademark counterfeiting under 15 U.S.C. § 1117(c). The court reached this decision based on the language of § 1117: While § 1117(b), the provision allowing attorney's fees, states that they shall be awarded when damages are assessed under § 1117(a), the subsecti.......
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Seventh Circuit: $70,000 in attorney fees affirmed for copyright and trademark appeal
November 29, 2007
Post by Blog Staff
Back in March, we wrote about a copyright and trademark case involving a novelty doll, "Pull My Finger Fred." In the case's previous trip to the Seventh Circuit, the court affirmed a verdict of copyright and trademark infringement, $291,000 in damages, and $575,000 in attorneys' fees. Now the parties are back, this time disputing the amount of attorneys' fees to be awarded on appeal. Whil.......
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Eleventh Circuit: Insufficient evidence of likely confusion dooms 43(a) claim
November 28, 2007
Post by Blog Staff
In a decision last week, the Eleventh Circuit affirmed a district court's decision granting summary judgment of no trademark infringement and no unfair competition. The plaintiff and defendant had entered into a contract for the plaintiff to design a water meter reading system. After the plaintiff allegedly breached the contract, the defendant engaged different companies to complete the project. The replac.......
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Fourth Circuit: Chewy Vuiton not likely to be confused with or dilute Louis Vuitton trademarks
November 15, 2007
Post by Blog Staff
The Fourth Circuit Tuesday affirmed a district court's grant of summary judgment of no trademark infringement or dilution. At issue were dog toys that parodied the trademarks and trade dress of Louis Vuitton. The Fourth Circuit agreed that the successful parody resulted in no trademark infringement. On the trademark dilution claim, the court rejected the lower court's reasoning because the district cour.......
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Fourth Circuit holds law prohibiting federal registration of Montana state nickname valid
October 25, 2007
Post by Blog Staff
In a decision Wednesday, the Fourth Circuit reversed a district court's decision finding a portion of a 2006 law invalid. The portion, a rider attached to an appropriations bill, prohibited any trademark registrations of a nickname of the state of Montana, "The Last Best Place." The Fourth Circuit reversed, holding that the law valid and consistent with other congressional actions over the years. .......
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Dramatic change in UK trademark policy; Australia eliminates obligation to disclose search reports
October 23, 2007
Post by Blog Staff
There have been two interesting changes in foreign IP practice over the past month. Effective October 1, 2007, the UK Trade Marks Office changed its policy such that it will no longer raise objections to applications based on prior existing applications/registrations. Instead, it will be the policy to write to owners of earlier potentially conflicting marks advising them of the application so that the owners can.......
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Ninth Circuit: DJ dismissal reversed; concurrent TTAB proceedings, Rule 408 don't warrant dismissal
October 17, 2007
Post by Blog Staff
On Monday, the Ninth Circuit addressed the issue of a federal court's subject matter jurisdiction over a trademark declaratory relief action when an infringement action has not been brought and proceedings related to the trademark are pending at the Trademark Trial and Appeal Board (TTAB). The district court dismissed the case as not presenting a sufficient case or controversy to support jurisdiction, and a.......
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Sixth Circuit: No likelihood of confusion between competing wines using same geographic term
September 25, 2007
Post by Blog Staff
In a decision last week, the Sixth Circuit affirmed a district court ruling that use of the mark "Chateau de Leelanau Vineyard and Winery" did not create a likelihood of confusion among consumers with the plaintiff's "Leelanau Cellars" federally-registered mark. "Leelanau" in both marks is a reference to a peninsula in Michigan where the wine is produced. While the district cou.......
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Trademark licensing hall of shame: why trademark owners need to monitor their licensees
August 27, 2007
Post by Blog Staff
Owners of trademarks should take care that they control how licensees use their marks. This should be common knowledge for most trademark owners, as inconsistent or unauthorized use of a trademark can dilute its distinctiveness, and in extreme cases, cause loss of rights.The owners of one of the most famous trademark brands, the New York Yankees, have found out that monitoring licensees closely can also avoid pub.......
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Ninth Circuit: Reversible error to only consider one of the likelihood of confusion factors
August 03, 2007
Post by Blog Staff
In a trademark case yesterday, the Ninth Circuit held that the similarity-of-the-marks factor could not be considered exclusive of the other likelihood of confusion factors in determining trademark infringement. In doing so, the court reversed the grant of summary judgment against the defendant's counterclaims of trademark infringement, as well as the defendant's counterclaims for copyright infringement .......
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Revised TTAB rules coming soon
July 27, 2007
Post by Blog Staff
The TTABlog reports that the revised TTAB rules initially proposed in a notice of proposed rulemaking on January 17, 2006 are likely to be published in the Federal Register in the next week. The summary of the rules as initially proposed is as follows:The United States Patent and Trademark Office (Office) proposes to amend its rules to require plaintiffs in Trademark Trial and Appeal Board (Board) inter par.......
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Federal Circuit affirms requirement to amend listing of goods to exclude goods in another class
July 23, 2007
Post by Blog Staff
In the first of two Federal Circuit rulings today, the court affirmed that the USPTO was within its authority when it refused to allow an applicant to rely on the international classification to clarify ambiguities in the listing of goods for a trademark. In affirming the TTAB, the court emphasized the deference due to the USPTO when determining the sufficiency of description of goods and services in a trademark .......
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Federal Circuit affirms dismissal of opposition proceeding for lack of standing
July 11, 2007
Post by Blog Staff
In another nonprecediential ruling today, the Federal Circuit affirmed the TTAB's dismissal of an opposition filed against registration of the Dykes on Bikes mark.There are two requirements to have standing to file an opposition with the TTAB. The would-be opposer must have "both a real interest in the proceedings and a reasonable basis for a belief that he would be damaged by its registration." .......
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Seventh Circuit: no evidence of use of "Stealth" mark, cancellation affirmed
July 09, 2007
Post by Blog Staff
In a ruling today, the Seventh Circuit affirmed the cancellation of one of Leo Stoller's many "STEALTH" registrations (owned by one of his companies) for lack of use. The registration in question for "baseball bats, softball bats, and t-ball bats," was the basis for a suit brought against baseball hall of famer George Brett and his company, Brett Brothers Sports International, when they.......
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Federal Circuit: less distinctive portions of a mark still considered in likelihood of confusion
June 22, 2007
Post by Blog Staff
In a case decided today, the Federal Circuit reversed the Trademark Trial and Appeal Board's denial of an opposition to registration of a trademark. Specifically, the court rejected the Board's finding that there was no likelihood of confusion because the Board improperly considered an element present in both marks a "weak component" of the competing marks and that other components of the mark.......
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"Aspirina" descriptive of analgesic goods; denial of registration affirmed
May 24, 2007
Post by Blog Staff
In a decision today, the Federal Circuit affirmed a decision by the TTAB that the term "ASPIRINA" is descriptive of analgesics, and therefore not subject to trademark protection in the United States absent a showing of secondary meaning. While the evidence of record was conflicting as to whether ASPIRINA was descriptive, given the deferential standard of review, the panel majority affirmed the decisio.......
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Ninth Circuit: have another look at those two moose - denial of preliminary injunction vacated
May 23, 2007
Post by Blog Staff
In a decision Tuesday, the Ninth Circuit vacated a district court's denial of a preliminary injunction to Abercrombie & Fitch over an alleged infringement of its "Moose" marks by Moose Creek, a competing clothing company. The Ninth Circuit found that the district court had misapplied several of the factors used in the Ninth Circuit to determine likelihood of confusion, called the Sleekcraft f.......
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First Circuit: "M4" generic for certain carbine firearms, summary judgment affirmed
May 21, 2007
Post by Blog Staff
The First Circuit on Friday held that, in the context of certain carbine firearms, the term "M4" was generic, and therefore not subject to trademark protection. The court found that notwithstanding a registration on the principal register, the evidence presented was such that the only reasonable inference was that M4 was generic in the minds of the purchasing public for the carbine firearm the military.......
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Academy of Motion Picture Arts and Sciences sues Oscarwatch.com for trademark infringement
May 08, 2007
Post by Blog Staff
The Academy of Motion Picture Arts and Sciences (AMPAS) has sued the operator of the website oscarwatch.com for trademark infringement based on the use of "Oscar" in the website's address. AMPAS holds several federal trademark registrations for "Oscar" for various goods and services, such as "telecasts in connection with recognition of distinguished achievement in the motion pictur.......
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USPTO changes address for Madrid Protocol applications and related papers
April 16, 2007
Post by Blog Staff
In a Federal Register notice today, the USPTO announced that it has changed its address for international trademark applications under the Madrid Protocol and related correspondence. The full list of affected papers includes:International applications under § 7.11, subsequent designations under § 7.21, responses to notices of irregularity under § 7.14, requests to record changes in the Internatio.......
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Ninth Circuit: Disinfectable not trademarkable
April 13, 2007
Post by Blog Staff
The Ninth Circuit Court of Appeals yesterday issued a decision regarding whether the term "disinfectable" could serve as a trademark in the context of nail files and related goods. The court held that it could not, as disinfectable was the generic term for a product that is capable of being disinfected. As a result, the plaintiff's trademark infringement suit failed as a matter of law, because tra.......
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Second Circuit rejects famous marks doctrine
March 30, 2007
Post by Blog Staff
In a recent decision, the Second Circuit held that a trademark holder who has abandoned use of its mark in the United States cannot prevent others from using the mark because the mark is famous in the United States based on use in a foreign country. This concept is referred to as the "famous marks doctrine," and the court held that if it is to be incorporated into United States law, it must be done by l.......
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Trademark infringement helping the needy?
March 28, 2007
Post by Blog Staff
In November, 2006, approximately $200,000 worth of action figures were detained at the United States-Canada border by US Customs and Border Protection. They were stopped under the authority granted to the US Customs and Border Protection office, to prevent importation of goods that violate another company's trademark or copyright rights. In order to take advantage of these enforcement powers, a company that owns.......
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Leo Stoller v. Google: the final chapter?
March 21, 2007
Post by Blog Staff
Over at the TTABlog, John Welch has a report about what appears to be the final chapter in notorious "intellectual property entrepreneur" Leo Stoller's fight with Google over the rights to the Google trademark. Mr. Stoller, through his various entities, had both opposed Google's application to register the Google mark and also filed for registration on the Google mark for exercise balls and other sports equipment.......
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Seventh Circuit issues a stinker of an opinion in copyright case
March 20, 2007
Post by Blog Staff
The Seventh Circuit succinctly sums up the field of commerce of its decision today in JCW Investments, Inc. v. Novelty, Inc.: Somewhat to our surprise, it turns out that there is a niche market for farting dolls, and it is quite lucrative. The case presents some interesting issues, such as whether the copyright in such a doll is valid and infringed, whe.......
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USPTO to cease emailing full trademark office actions (updated 4/27)
March 19, 2007
Post by Blog Staff
In an effort to simplify transmittal of trademark office actions, the USPTO today announced that it will soon stop emailing trademark office actions to applicants. Instead, emails will be sent containing a link to the office action in the TDR (Trademark Document Retrieval) system. This will avoid the problems of large attachments requiring multiple emails to send the complete office action, as is sometimes neces.......
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Where is the real "Icebox of the Nation"?
February 20, 2007
Post by Blog Staff
In what can only be described as a chilling trademark dispute, the cities of International Falls, Minnesota and Fraser, Colorado are battling over the right to call their respective cities the "Icebox of the Nation." At issue is International Falls' trademark registration, number 1599660, for "COLD WEATHER TESTED CITY OF INTERNATIONAL FALLS IN THE ICEBOX OF THE NATION." The cities were in.......
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Second Circuit: revisions to Federal Trademark Dilution Statute revive Starbucks claim
February 16, 2007
Post by Blog Staff
The Second Circuit recently ruled that coffee giant Starbucks could proceed with its trademark dilution case against a defendant using the mark "Mr. Charbucks." In 2005, the lower court found after a bench trial that Starbucks had not proven actual dilution of its trademark, the requirement under the earlier version of the statute. The statute was amended on October 6, 2006, while the case was on appeal, and now.......
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India's Union Cabinet approves accession to Madrid Protocol
February 08, 2007
Post by Blog Staff
Today, India's Union Cabinet approved India's accession to the Madrid Protocol, the international treaty relating to registration of trademarks. The next step will be introduction of Bill in India's Parliament to finalize the accession and to amend India's trademark laws to include the requirements of the Madrid Protocol. The Madrid Protocol permits trademark applicants to fine a single application.......
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Seventh Circuit: single sale insufficient use in commerce to support trademark registration
February 08, 2007
Post by Blog Staff
In Custom Vehicles, Inc. v. Forest River, Inc., the Seventh Circuit Court of Appeals held that a trademark plaintiff did not engage in sufficient use in commerce to support trademark rights. Even worse for the plaintiff, the court held that even if there were sufficient use, the mark at issue was descriptive, and there was no secondary meaning, so the plaintiff had no trademark rights to enforce. Ultimately, the.......
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TTAB now allows citation of nonprecedential opinions
January 24, 2007
Post by Blog Staff
In a notice posted in the USPTO Official Gazette yesterday, the TTAB has changed its rules, now allowing citation to TTAB decisions designated non-precedential. Under the former rule, any non-precedential decisions cited before the TTAB were disregarded. Now, while only opinions designated as precedential are binding on the TTAB, a non-precedential opinion "may be cited for whatever persuasive value it might hav.......
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Cisco's General Counsel blogs about dispute with Apple over iPhone trademark
January 23, 2007
Post by Blog Staff
In an interesting PR move, Mark Chandler, Senior Vice President and General Counsel of Cisco Systems, has posted an informative description of the Apple-Cisco iPhone trademark lawsuit on one of Cisco's blogs. Commentary on the blog, while mixed, appears to be predominantly positive, particularly by those who did not understand Cisco's legal position when the lawsuit was announced. This could be a foresha.......
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Ketchup makers battle over rights to "red zone"
January 22, 2007
Post by Blog Staff
Ketchup giant Heinz and rival ketchup maker Red Gold are embroiled in a trademark dispute over the right to use "Red Zone" in promotions associated with football games. In football, the red zone is the common name of the area between the 20-yard line and the end zone, and a team's offense is often measured by how well they perform once they enter into the opponent's red zone. Red Go.......
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University of Texas sues over use of "sawed-off" horns logo
January 22, 2007
Post by Blog Staff
The University of Texas has sued Aggieland Outfitters, a retailer in College Station, Texas (home of rival university Texas A&M) over its use of a modified version of the Texas Longhorns logo. The original logo and the modified version appear below: The retailer has been selling merchandise bearing the "sawed off" logo since 1997, but Texas did not object until it filed suit on December 4, 20.......
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Trademark "use in commerce" must be lawful to build trademark rights
January 17, 2007
Post by Blog Staff
When is a use in commerce not sufficient to build trademark rights? When that use is unlawful. The Ninth Circuit, in a dispute between two manufacturers of antioxidants made from olive extract, held in an issue of first impression in that circuit that unlawful use in commerce cannot support federal trademark rights. This decision agrees with the Tenth Circuit, apparently the only other Court of Appeal to have d.......
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"Trademark" as a trademark?
January 12, 2007
Post by Blog Staff
Can the word "trademark" be a trademark itself? Breckenridge Brewery sells Trademark Pale Ale, which raises this interesting issue. Images of Breckenridge's packaging can be seen below: Under trademark law, there is no restriction on use of "trademark" as a trademark, as long as it meets the statutory requirements. For example, a search of USPTO records indicates that there are .......
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Starbucks loses Korean appeal, Starpreya can continue to use name there
January 12, 2007
Post by Blog Staff
The Korean Supreme Court today denied an appeal by Starbucks to cancel a rival's trademark there. Specifically, the Court noted that Starbucks was not well-known in Korea when the rival coffee provider (who uses a similar logo) registered its trademark. MVS previously blogged about the appeal here. This case, along with the ongoing saga between Budweiser and Budvar, show the difficulties that can arise when.......
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2006 TTAB year in review
January 12, 2007
Post by Blog Staff
John Welch at The TTABlog has compiled a list of all citable opinions of the TTAB in 2006 organized by the substantive legal issue in each decision. This is a useful tool when looking for the most recent TTAB case law on a particular issue. The 57 citable decisions in 2006 are almost double the total number of citable decisions for the past two years: there were only 18 in 2005 and 13 in 2004. Wel.......
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Cisco sues Apple over iPhone trademark
January 11, 2007
Post by Blog Staff
Apple, the company that dominates the digital music player market with the iPod, announced this week at the annual MacWorld show in San Francisco that Apple will be entering another lucrative consumer electronics market: the mobile phone. Apple CEO Steve Jobs announced his company's newest offering: the iPhone. Apple's stock increased 10% just from the announcement of the iPhone, although they will not.......
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Sioux Falls inventor files one millionth electronic trademark application with USPTO
January 10, 2007
Post by Blog Staff
The USPTO recently received the one millionth trademark application filed electronically via its TEAS system. It took just under ten years for the one millionth electronic application to be filed, as the TEAS system first became available in November, 1997. The applicant, Donald Junck of Sioux Falls, South Dakota, was flown out to the USPTO in Alexandria, Virginia, and will take part in a commemoration ceremony .......
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"Use in commerce" not necessary to support trademark opposition, just use in the United States
January 09, 2007
Post by Blog Staff
The Federal Circuit, reversing the Trademark Trial and Appeal Board ("TTAB"), found that a Canadian company who arguably only did business in Canada could oppose a trademark application based on "spillover" use of its unregistered trademark in the United States. The Canadian company, First Niagara Insurance Brokers, opposed several trademark applications filed by a United States company, First.......
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Anheuser-Busch and Budvar reach agreement, but trademark fights continue
January 09, 2007
Post by Blog Staff
United States brewer Anheuser-Busch, maker of Budweiser beer, has reached an agreement with Czech brewer Budejovicky Budvar, to distribute Budvar's Czechvar lager. This agreement is interesting because the two companies have been involved in trademark disputes around the world over which company has the right to use the name "Budweiser." Budvar's beer is sold as Budweiser Budvar in several coun.......
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Starbucks appeals denial of cancellation of Korean company's trademark
December 21, 2006
Post by Blog Staff
Starbucks is appealing a decision denying cancellation of a Korean company's trademark, asserting it infringes Starbucks' trademark. The Korean company, Starpreya, uses a green circular logo that Starbucks asserts is confusingly similar to its logo. Below are the two logos: Starbucks has already unsuccessfully opposed Starpreya's mark in two cases before the Patent Court of Korea. The appeal w.......
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Protecting a business name: the basics
December 19, 2006
Post by Blog Staff
MSNBC has published an article with some basic tips for businesses to protect their trade names as trademarks. While the suggestions are fairly generic, it does at least provide some simple guidance for individuals who do not have any experience with intellectual property law in general or trademark law in particular. This piece is similar to a Forbes article we blogged about a few weeks ago regarding marketing .......
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Holy trademark infringer, Batman!
December 14, 2006
Post by Blog Staff
The Russian Main Intelligence Directorate, commonly referred to as the GRU, appears to use a somewhat famous mark as part of its logo. The GRU's logo is shown below: Even Russian President Vladimir Putin appears to notice the distinctive logo at GRU headquarters: Of course, there are sovereign immunity issues that likely prevent DC Comics from actually being able to sue for trademark infringement, but .......
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Buffett settles with alleged trademark infringer
November 29, 2006
Post by Blog Staff
Jimmy Buffett reached a settlement with a man he accused of selling merchandise that infringed his trademarks. The alleged infringer, Robert Akard, was selling Buffett-themed merchandise via his website. The judge in the case ordered Mr. Akard's website shut down until the conclusion of the case and to disclose how much money he had made via his online sales. On Monday, however, Mr. Akard was found to be in con.......
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Washington Apple Commission takes on Chinese trademark office
November 21, 2006
Post by Blog Staff
The Washington Apple Commission has filed suit against the Chinese Trademark Review and Adjudication Board over its refusal to register a trademark. The mark at issue is shown below:This mark is registered in the United States, but in China, "well-known" geographical names cannot be used as trademarks unless there is also another meaning. The Apple Commission contended that "Washington" was a.......
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Jimmy Buffett sues website owner for trademark infringement
November 17, 2006
Post by Blog Staff
Singer Jimmy Buffett has sued an individual operating a website that he asserts sells trademarkeditems without his permission. Apparently the website (which is currently down) states it is "Jimmy Buffett's Online Store for Merchandise." He previously sued and won a judgment and injunction against this individual in the past in Nevada, but now he has moved to Texas, and allegedly continues to infringe.The alleged.......
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University of Alabama sues artist for trademark infringement
November 16, 2006
Post by Blog Staff
The University of Alabama has sued Daniel Moore, an artist who paints pictures of various sporting events. Among his work is a picture entitled "The Sack," depicting a play in a 1986 college football game where Cornelius Bennett of the University of Alabama sacked Notre Dame's Steve Beuerlein. The university claims that Mr. Moore is infringing the its trademark rights, including its "famous crimson.......
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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.

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