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 →
Seventh Circuit: single sale insufficient use in commerce to support trademark registration 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 […] Continue Reading →
TTAB now allows citation of nonprecedential opinions In a notice posted in the USPTO Official Gazette yesterday, the TTAB has changed its rules, now allowing citation to TTAB decisions designated non-precedential. Under the former rule, any non-precedential decisions cited before the TTAB were disregarded. Now, while only opinions designated as precedential are binding on the TTAB, a non-precedential opinion “may be cited […] Continue Reading →
Cisco’s General Counsel blogs about dispute with Apple over iPhone trademark 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 […] Continue Reading →
Ketchup makers battle over rights to “red zone” 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 […] Continue Reading →
University of Texas sues over use of “sawed-off” horns logo 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 […] Continue Reading →
Trademark “use in commerce” must be lawful to build trademark rights 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 […] Continue Reading →
“Trademark” as a trademark? 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 […] Continue Reading →