Posts Tagged: "trademark"

With their creative minds, marketing and advertising folks never disappoint in coming up with brilliant ways to distinguish their goods and services from the competition – for example, Tiffany’s robin’s egg blue and Hermes’ orange. This type of marketing genius allows one to immediately recognize a brand without even seeing the word “Hermes” or knowing how to pronounce it. On the flip side, these ideas are prime targets for copycats. After all, by simply changing the jewelry box color to the exact pantone shade of Tiffany’s turquoise blue, a seller could immediately quadruple his/her revenue by profiting from consumer confusion without having to increase the inventory quality or spend a dime on marketing. The question then is: is it possible to protect a color (or color combination) in all jurisdictions by registering it as a trademark?

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential trademark decision upholding a Trademark Trial and Appeal Board (TTAB) ruling that sustained two oppositions filed by Barclays Capital Inc. against Tiger Lily Ventures’ applications for registration of the standard character mark “LEHMAN BROTHERS.” The court also affirmed the dismissal of Tiger Lily’s opposition to Barclays’ application for registration of the LEHMAN BROTHERS mark and dismissed Barclays’ cross-appeal.

Augmented Reality (“AR”), along with Virtual Reality (“VR”), is rapidly growing in prominence and will be transformative to the way we live, work, learn and play. Both AR and VR will undoubtedly bring a whole set of novel IP issues for individuals, companies, IP practitioners and the courts. Like any new technological area, such as cyber law for the nascent internet technology in the early 1990s, many legal issues need to be addressed and many more are yet to be discovered as this area evolves.  

StockX, which describes its e-commerce resale platform as “[t]he current culture marketplace,” is primarily used by consumers to resell and buy sneakers, among other items. In January 2022, StockX announced its plans to launch The Vault, which uses non-fungible tokens (NFTs) to allow buyers to track ownership of physical products resold on its e-market and warrant their authenticity, including Nike shoes. Swiftly thereafter, Nike sued StockX in the United States District Court for the Southern District of New York (SDNY), alleging that StockX’s use of Nike’s famous marks in connection with its NFTs constitutes trademark infringement. Nike, Inc. v. StockX LLC, 1:22-cv-00983-VEC. In its original February 3, 2022, complaint, Nike alleged that StockX mints NFTs using Nike’s trademarks without authorization and sells them to consumers, who either believe or are likely to believe that StockX’s NFTs are connected with Nike when they are not.

While some companies have not yet jumped on the cryptocurrency bandwagon, others are rolling out processes to accept payment for goods via cryptocurrency. Some companies are also embracing cryptocurrency internally, in the form of employee benefits. Earlier this year, BTCS, Inc., the blockchain technology company, announced that it will offer dividends payable in Bitcoin. This should come as no surprise, since the company was the first “pure play” U.S. publicly traded company focused on digital assets and blockchain when it went public in 2014. Continuing to lead the digital asset industry, it is now also the first Nasdaq-listed firm to offer shareholders the option to receive dividends in bitcoin.

An understanding of tax issues is increasingly important for trademark practitioners—and a new report by the International Trademark Association (INTA) focusing on the European Union, Switzerland and the United Kingdom aims to help them achieve that. The “Report on the Taxation of Trademarks and Complementary Rights in Europe” was unveiled at the 144th INTA Annual Meeting Live+, which was held in Washington, D.C. and online from April 30 to May 3. There were more than 6,700 registrants from 130 countries.

The U.S. Patent and Trademark Office (USPTO) announced today that certain intellectual property (IP)-related transactions are now authorized in Russia, following publication by the U.S. Department of Treasury’s Office of Foreign Assets Control (OFAC) of General License No. 31. The authorized transactions include the filing and prosecution of any application to obtain a patent, trademark, or copyright, as well as renewal and maintenance fees.

The rise in the value of crypto currencies in just three years to $3 trillion is vexing to businesses, investors and IP professionals who are struggling to understanding where they fit in. The ascendance of non-fungible tokens (NFTs) as an asset class also has caught practically everyone off-guard. Many intellectual property owners believe that these blockchain-based disruptions have created opportunity, while others see a darker and more impermeant scenario. People want to know if NFTs and distributed ledgers are good for IP rights and creators – a self-proclaimed boon to innovation and access – or are they a passing storm?

The Office of the United States Trade Representative (USTR) released its annual Special 301 Report today, which identified 27 trading partners of the United States as being either on the “Priority Watch List” or “Watch List.” This means that “particular problems exist in that country with respect to IP protection, enforcement, or market access for U.S. persons relying on IP,” according to the Report. While the Priority Watch List is shorter this year, the USTR continues to highlight concerns about China, particularly with respect to recent statements made by Chinese officials about the role of IP in achieving Chinese market dominance.

In responding to the unprecedented COVID-19 challenges, companies around the world are rushing to capitalize on the current crisis by advertising the effectiveness of their products in containing the virus spread. Among these ads and messages, some may be useful in building the public’s confidence and marketing effective products to consumers, but some may mislead and deceive desperate consumers into buying treatments and products without any scientific support. As fear and anxiety proliferate during this pandemic, fraudulent or false advertisements also surge and explode. Petitioners raise false advertising claims and try to stop misleading advertisements by seeking injunctions. However, the injunction standard in the false advertising context is still the subject of debate.

On February 14, 2022, the China National Intellectual Property Administration (CNIPA) issued a notice regarding “clout-chasing” trademark applications or registrations (the “Notice”). The Notice stated that CNIPA, on an ex officio basis, had refused or invalidated over 400 applications related to “???” (Bing Dwen Dwen, official mascot of the Beijing 2022 Winter Olympics) and “???” (Eileen Gu, a skier who won three medals in the Beijing 2022 Winter Olympics). Similar bad-faith trademark applications have not been uncommon throughout CNIPA’s history. In fact, clout-chasing, a specific type of bad-faith trademark application, has become much more prevalent in recent years. In response, CNIPA has issued a number of notices refusing such malicious trademark applications, especially since the April 2019 amendment of the Chinese Trademark Law.

Oshkosh Corporation has run through a $6.7 billion contract to produce the first 17,000 Joint Light Tactical Vehicles (JLTVs) in a Department of Defense (DOD) program that could produce 55,000 vehicles for the Army and Marines. Oshkosh won the low-rate initial production (LRIP) contract in 2015 to be the sole manufacturer of JLTVs by submitting an original, technologically superior design in a litigated competition with other, arguably, more dominant players in the defense market. Bids for the contract to produce the next tranche of over 15,000 vehicles are due later this year. Competitors for the $7.3 billion recompete contract, including GM Defense, AM General and Navistar, will have access to the proprietary design of the JLTV that Oshkosh used to win the LRIP contract. The U.S. Government has made available to interested bidders a Technical Data Package (TDP) covering the JLTV after purchasing an option in 2016. Oshkosh, however, maintains an intellectual property (IP) portfolio that could counter the sale of the TDP.

The National Academy of Public Administration (NAPA) has agreed to perform a study requested earlier this month by Senator Thom Tillis (R-NC) to explore “whether Congress should create a unified, stand-alone, and independent Intellectual Property Office.” NAPA President and CEO Teresa Gerton said its full-time research staff and Academy Fellows are well-positioned to do the work requested and that NAPA would begin discussions with the U.S. Copyright Office and the U.S. Patent and Trademark Office (USPTO) immediately. However, Gerton expressed some skepticism, cautioning that “our success in these negotiations depends greatly on the willing participation of these two agencies and the level of funding they agree to make available for the work.”

On March 28, the U.S. Commerce Department issued a strategic plan for fiscal years 2022 through 2026 designed to enhance American competitiveness through the 21st century in several critical areas of the economy, including broadband Internet and supply chain resilience. At several points throughout the Commerce Department’s strategic plan, the importance of intellectual property and the stability provided by certainty in patent rights are acknowledged as key contributors to spurring innovations that benefit American competitiveness against foreign rivals.

Name, Image, and Likeness, or “NIL,” is the buzz word spinning around college athletics. In July 2021, the National Collegiate Athletic Association (NCAA) adopted its Interim NIL Policy (“the Policy”) which allows, for the first time, student athletes to monetize their NIL rights without losing scholarships or eligibility. Fans love college sports and cheering on athletes who play for their alma mater or favorite school teams, which creates collaboration opportunities for athletes and brands alike. In an attempt to connect their products and services with college athletes—who are the face of a billion-dollar industry—brands are jumping on the college-athlete bandwagon.