Posts Tagged: "trademark"

To capture attention in the crowded new field of cannabis-related goods and services, many companies are using other companies’ brands to promote their goods and services, including puns in the edibles space. Not surprisingly, brand owners are responding with lawsuits, alleging trademark infringement, dilution, and unfair competition among other claims. The focus of these lawsuits is generally quick injunctive relief to stop harm to the brand, rather than damages. This makes sense because of the uncertainty of collecting from companies who do not rely on the traditional finance services industry. But injunctive relief is not guaranteed without demonstrating the four preliminary injunction factors: (1) likelihood of success on the merits, (2) likelihood of irreparable harm in the absence of preliminary relief, (3) the balance of equities, and (4) the public interest. This article focuses on the first two of these factors.

During the Patent Public Advisory Committee (PPAC) quarterly meeting held today, participants provided an update on the Director Review process under the Supreme Court’s Arthrex v. Smith and Nephew ruling, among other announcements. Patent Trial and Appeal Board (PTAB) Senior Advisor and Judge Linda Horner noted that, since the ruling, 14 timely requests for Director Review have been received; 11 of those were for a batch of related inter partes reviews (IPRs). Hirshfeld this week issued two decisions on the first two requests, denying both; the rest remain pending.

On July 29, several IP organizations and one global snack conglomerate filed amicus briefs at the U.S. Supreme Court asking the nation’s highest court to grant a petition for writ of certiorari to take up Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp. At issue in the appeal is a ruling from the U.S. Court of Appeals for the Third Circuit regarding the definition of “functionality” in trademark law. In finding the stick-shaped, chocolate-covered Pocky cookies sold by Ezaki Glico to be “functional” because of the usefulness of their design, amici argue that the Third Circuit erred in its application of functionality doctrine in a way that threatens trade dress protections for any product when any part of the product’s design provides some usefulness.

Followers of European trademark developments will be familiar with the Sky v SkyKick litigation, in which the UK courts and the Court of Justice of the EU have addressed questions concerning trademark invalidity (see IPWatchdog report here). In the latest twist, the England and Wales Court of Appeal has reversed one of the main first instance findings. In its judgment, the Court allowed Sky’s appeal against a finding that its asserted trademarks for SKY were partially invalid due to lack of intention to use amounting to bad faith. The Court ruled that it was essential to determine whether the parts of the trademark registrations which were relied on were or were not applied for in good faith.

When launching a new restaurant or food or beverage company, your plate is likely full enough. To add to the pile, this last year was no stranger to delays and pivots for businesses. And we’ve been noticing one more delay that may impact your new venture. Last month, the United States Patent and Trademark Office (USPTO) posted a blog entry on its website addressing a development that trademark practitioners have been aware of for months: trademark applications have surged to unprecedented levels. This is causing a substantial delay in reviewing new trademark applications and other actions on the part of the USPTO. The impact of these delays on new restaurant and food businesses, among other industries, may be significant.

You’ve probably heard that the U.S. Patent and Trademark Office (USPTO) has refused to register the current name of the Washington NFL franchise – “The Washington Football Team”. This is just the latest road block in the long running saga of the Team’s name. But actually, on closer look, it’s more like a small bump, and here is why. After years of ultimately successful litigation, on July 13, 2020, the Washington NFL franchise finally succumbed to what had become not only a public, but a very damaging corporate sponsor, outcry to change the Team’s name and logo. The Team publicly announced on that day that it would use the name “Washington Football Team” until a new name and logo were selected.

Tiffany Cunningham was confirmed to the U.S. Court of Appeals for the Federal Circuit earlier this week, making her—incredibly—the intellectual property court’s first Black judge. Cunningham has been a patent litigation partner at Perkins Coie LLP in Chicago, Illinois since 2014, and prior to that worked in the Chicago office of Kirkland & Ellis LLP. She will replace Judge Evan J. Wallach, who announced in March that he would retire from active service and assume senior status as of May 31, 2021, after 10 years of service with the court. Below are some thoughts from members of the IP community, and senators who voted for her, on what Cunningham’s appointment might mean for the CAFC long term.

On July 2, 2021, amendments to the Federal Russian Law No. 468-FZ dated December 27, 2019 “On Viticulture and Winemaking in the Russian Federation” came into force. The amendments introduced two new important rules that change the existing legal regulation on geographical indications (GIs) and appellation of origin of goods (AOGs). According to the amendments, foreign producers of champagne should relabel their products imported to Russia to “sparkling wine”. At the same time, Russian producers now have the right to label their products as “champagne”, including the usage of a special category of “Russian champagne”. In addition, the amendments introduced a new category of alcoholic drink, namely “Russian cognac”.

Filing a request for revocation of a trademark, despite a non-challenge clause in a trademark agreement, constitutes an act of bad faith—according to an amicus submission filed by INTA in a case pending before the Court of Justice of the EU (CJEU). The German Federal Supreme Court has referred two questions to the CJEU in a dispute between two formerly related companies. (Case C-62/21, Leinfelder Uhren München.) They had signed agreements in which the defendants in this case undertook not to attack the plaintiff’s trademark, nor to assist a third party to do so. However, a lawyer acting on behalf of the defendants subsequently filed revocation actions for non-use against the plaintiff’s EU trademarks. In response, the plaintiff asked the German courts for an order requiring the defendants to instruct the lawyer to withdraw the revocation actions, and also for damages.

As the United States today celebrates the 245th anniversary of its independence, the intellectual property (IP) community will tomorrow be celebrating the 75th anniversary of the Lanham Act, which was signed into law by President Harry S. Truman on July 5, 1946. The Lanham Act was introduced by Fritz Garland Lanham, who was born in Weatherford, Texas in 1880. He was elected to Congress in 1919 and reelected 13 times before he retired in 1947, the year the Lanham Act was enacted. Lanham’s father was a lawyer and served as a Congressman as well as the 23rd governor of Texas.

On June 23, a U.S. Patent and Trademark Office (USPTO) blog post published a piece authored by Commissioner for Trademarks David Gooder discussing a massive surge in trademark application filings at the agency this year. Through June 17, the USPTO had received 63% more trademark applications (211,000 additional filings) when compared to the same period in 2020. Spurred on by the growth of the internet economy during the COVID-19 pandemic, the surge has created a backlog of trademark applications that has extended the wait times for first office actions to an average of 5.2 months and final disposals of applications to an average of 10.5 months.

In “big IP cases that count,” the U.S. Federal Trade Commission (FTC) has had a mixed record lately, going one-for-three – good in baseball but bad in government appellate litigation. (The biggest recent FTC loss that counts, the Supreme Court’s unanimous April 2021 AMG decision (see here), did not involve IP, but had major negative implications for the FTC’s future ability to obtain monetary relief in IP-related prosecutions). In August 2020, the Ninth Circuit vacated a district court “finding that Qualcomm had engaged in unlawful licensing practices, and reversed a permanent, worldwide injunction against several of Qualcomm’s core business practices.” (The full Ninth Circuit subsequently denied the FTC’s request for rehearing en banc, and the FTC threw in the towel in March 2021, electing not to seek Supreme Court review).

Yesterday was World Anti-Counterfeiting Day (though there’s not much available online to prove it). Of course, counterfeits have proliferated over the last year, as people stayed home and shopped online more than ever before. A January 2021 report by Digital Commerce 360 found that U.S. ecommerce sales grew by 44% last year over 2019—” the highest annual U.S. ecommerce growth in at least two decades.” As part of a report released yesterday on how to address the sale of counterfeits online, the International Trademark Association (INTA) said that—even in more normal times—a 2020 Department of Homeland Security report found that “e-commerce year-over-year retail sales grew by 13.3 percent in the second quarter of 2019 while total retail sales increased by only 3.2 percent as brick-and-mortar retail continued its relative decline.”

Nonfungible tokens, or “NFTs,” are dominating the news cycle lately. From the $69.3 million sale of digital artist Beeple’s “Everydays — The First 5000 Days,” at Christie’s Auction House, to a $9.00 three-pack of NBA digital trading cards, NFTs with varying price tags are everywhere. Whether this new craze is a bubble waiting to be burst or whether it is here to stay, those wishing to take part in an NFT transaction need to be aware of everyone’s roles. Here’s what buyers and sellers should know.

Sports and fashion company Puma has lost an appeal before the EU General Court, following an eight-year dispute. The trademark case concerned figurative signs depicting leaping cats, and the judgment was published on May 19 (Case T-510/19). Puma, based in Germany, filed an opposition to an EU trademark (EUTM) application filed by Gemma Group in February 2013 for “Machines for processing of wood; machines for processing aluminum; machines for treatment of PVC” in class 7. The application depicted a blue cat leaping from left to right. Puma owns earlier marks for a cat leaping from right to left, registered for a wide range of goods including clothes, accessories and sports equipment.