USPTO changes address for Madrid Protocol applications and related papers 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 […] Continue Reading →
Ninth Circuit: Disinfectable not trademarkable 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 […] Continue Reading →
Second Circuit rejects famous marks doctrine 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 […] Continue Reading →
Trademark infringement helping the needy? 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 […] Continue Reading →
Leo Stoller v. Google: the final chapter? 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 […] Continue Reading →
Seventh Circuit issues a stinker of an opinion in copyright case 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 […] Continue Reading →
USPTO to cease emailing full trademark office actions (updated 4/27) 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 […] Continue Reading →
Where is the real “Icebox of the Nation”? 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 […] Continue Reading →
Second Circuit: revisions to Federal Trademark Dilution Statute revive Starbucks claim 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 […] Continue Reading →
India’s Union Cabinet approves accession to Madrid Protocol 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 […] Continue Reading →