Posts Tagged: "trademark"

Earlier this week, the U.S. Patent and Trademark Office (USPTO) suspended the sponsored accounts of two U.S. attorneys who loaned their name and bar credentials to an Indian law firm so they could file trademark submissions in violation of USPTO rules. The Indian firm used the names of the American attorneys to pose as U.S.-based attorneys and represent clients in trademark registration. The accounts were suspended for violating the Trademark Verified Account Agreement. The USPTO removed the attorneys’ authorization to sponsor attorney support staff accounts on the USPTO.gov system. The USPTO sent the two attorneys, Julian Haffner of YK Law and Grace Lee Huang of Meritech Law, letters in September notifying them of the violations and resulting suspension.

The process of bringing a new pharmaceutical drug to market is time-consuming and expensive. The process of naming the new drug, while not as scientifically complex, is often no less work. Drugs have several names, including their chemical (or scientific), generic (or non-proprietary) and brand (or proprietary) names. The chemical name specifies the molecular structure of the drug. The generic name specifies the underlying compound of the drug and includes a “stem” that informs health care professionals about how the drug will work in the body. In the United States, generic names must be approved by the United States Adopted Names (USAN) Council and the World Health Organization (WHO) INN Programme. While the chemical and generic names may be available for use by others in the industry, the brand name—under which the new drug is typically marketed—is unique and exclusive to the brand owner and is the focus of this article.

On September 23, the office of the U.S. Solicitor General filed a brief with the U.S. Supreme Court on the issues at play in Abitron Austria GmbH v. Hetronic International, Inc., a trademark case in which the U.S. Court of Appeals for the Tenth Circuit affirmed a $90 million damages award for trademark infringement based on infringement occurring almost entirely outside of the United States. The Solicitor General’s brief asks the nation’s highest court to grant cert on Abitron Austria’s appeal in order to properly limit the application of the Lanham Act so that damages are only awarded when the alleged infringement has a likelihood of causing confusion among U.S. consumers.

Despite efforts to legalize marijuana, cannabis remains unlawful under U.S. federal law. This means that it is not possible to obtain federal trademark registrations for marks used in connection with cannabis goods or services. Federal registrations for Cannabidiol (CBD) products or services are similarly very difficult to obtain. The law on this topic is developing quickly. For those in this commercial space, it often feels as if the legal sands are shifting beneath their feet. Best practices for their brand protection can be difficult to navigate. The purpose of this article is to provide a brief overview of where the federal law currently stands and where it may be headed.

With its widespread use on social networks, mainly on Twitter, the hashtag has become a real communication tool. As a result, there have been a number of trademark registrations with the “#” symbol in the last few years. The question remains, however, as to whether using a third-party trademark with the “#” sign can be considered trademark use and is therefore likely to be infringing the trademark owner’s rights. The Oxford dictionary defines the hashtag as “a word or phrase with the symbol ‘#’ in front of it, used on social media websites and apps so that you can search for all messages with the same subject”.

In an amicus brief filed with the U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday, September 16, David E. Boundy is backing Chestek PLLC’s appeal asking the CAFC to vacate a Trademark Trial and Appeal Board (TTAB) judgment that upheld an examiner’s refusal of the mark CHESTEK LEGAL for failure to comply with the U.S. Patent and Trademark Office’s (USPTO’s) “domicile address requirement.” This requirement originates from the USPTO’s proposed rule issued on February 15, 2019, and subsequent final rule published on July 2, 2019. The changes were ostensibly intended to crack down on fraudulent trademark filings, which have posed a significant problem for the Office in recent years, by requiring that foreign applicants engage U.S. counsel.

During the final day of IPWatchdog LIVE in Dallas, Texas on Tuesday, a panel of attorneys discussed issues surrounding “dangerous fakes,” which are counterfeit goods that pose health risks to consumers. The panelists began with a brief overview of how U.S. Customs and Border Protection (CBP) identifies and seizes infringing goods. The panel also outlined the role that U.S. Consumer Product Safety Commission (CPSC) plays in working to identify dangerous fakes in conjunction with CBP.

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday denied a request for panel rehearing or rehearing en banc by U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal of a February CAFC decision that held the Office’s application of Section 2(c) of the Lanham Act to reject the mark TRUMP TOO SMALL was unconstitutional. In its February decision, the CAFC held that “applying section 2(c) to bar registration of [Steve] Elster’s mark unconstitutionally restricts free speech in violation of the First Amendment.” Elster attempted to register the trademark TRUMP TOO SMALL for use on T-shirts, but an examiner refused the application, saying that section 2(c) bars registration of a mark that “[c]onsists of or comprises a name . . . identifying a particular living individual” without the individual’s “written consent.”

As the concept of a unified “metaverse” is gaining traction, savvy brand owners are shifting their focus to securing rights in this emerging sector. In pursuit of intellectual property (IP) rights, individuals and corporations are turning to metaverse trademark filings to provide protection for goods and services in the virtual world. As of the summer of 2022, the China National Intellectual Property Administration (CNIPA) has received more than 16,000 applications that either contain the word “METAVERSE” (in English or its Chinese translation: “YUAN YUZHOU,” or both) or that include descriptions of goods and services in the virtual world, or both. These applications were filed by individuals as well as companies (big and small, both foreign and domestic). The rejection rate for traditional trademark applications in China is typically high, around 60-70%, at least in the first instance. However, the rejection rate for these new metaverse applications is even higher, hovering around 80%.

The U.S. Patent and Trademark Office’s (USPTO’s) Trademark Trial and Appeal Board (TTAB) yesterday rejected Erik Brunetti’s attempt to reverse an examiner’s decision to refuse four separate registrations for the mark “FUCK” for luggage, cell phone cases, jewelry and other goods and services. Brunetti was the respondent in the 2019 Supreme Court case, Iancu v. Brunetti (Case No. 18-302), in which the court held that the Lanham Act’s blanket ban on federal registration of “immoral or scandalous” trademarks is unconstitutional under the First Amendment. The mark at issue in that case was “FUCT,” for use on streetwear.

The U.S. Court of Appeals for the Ninth Circuit yesterday affirmed the ruling of Judge James C. Mahan of the District of Nevada dismissing a trademark infringement case filed by K&K Promotions, which owns the IP rights to famed American daredevil Evel Knievel. The Ninth Circuit agreed with Judge Mahan that the character of Duke Caboom from Walt Disney Studios and Pixar’s Toy Story 4 was not a literal depiction of Knievel, but rather a transformative use.

A Certification Mark is a name, symbol and/or logo used by groups (associations, unions, organizations, trade groups, etc.) to show that the product or service to which it is attached complies with industry or associations standards. A Certification Mark can be used to indicate that a product claiming to be from a region, is in fact from that region (Roquefort Cheese). A Certification Mark can be used to indicate that a product is in fact made with the materials it claims to be (Wool). A Certification Mark can be used to assure that certain standards a product boasts of are true (Energy Efficiency, 100% Recycled). A Certification Mark can be used to help parents decide whether to take their children to a certain motion picture (The Rating System). The purpose of a Certification Mark is therefore, to certify and not to own or indicate source.

Summer has been historically associated with celebrating the enactment of the Trademark Act of 1946 (the “Lanham Act”). Accordingly, Congress now annually introduces resolutions celebrating July, along with Independence, as “anti-counterfeiting awareness month.” These non-binding resolutions are an important reminder of the national importance of trademarks—and a reminder that counterfeiting, and related bad faith trademark misconduct, negatively impacts U.S. small businesses, American jobs, the U.S. economy, and erodes our international competitiveness. Increasingly, brand owners are fighting numerous trademark issues around bad faith registrations and more artful counterfeiting every day of every month. Fortunately, one important element of the solution for restoring the integrity of the register are the tools made possible by responsible artificial intelligence and machine learning (AI/ML) image recognition technology that can fight the fakes.

On Wednesday, August 3, the U.S. Court of Appeals for the Eleventh Circuit affirmed a district court’s ruling against Vital Pharmaceuticals, Inc. (VPX) in the form of sanctions for violating its discovery obligations in a trade dress dispute with Monster Energy Company. The Eleventh Circuit also denied Monster’s motion for sanctions in the form of attorney’s fees and double costs.

In a case that echoes they key issue in a recent U.S. Court of Appeals for the Second Circuit ruling for PepsiCo, Inc., U.S. District Court for the Southern District of New York Judge Lorna Schofield denied a brand owner’s request for a preliminary injunction enjoining model and influencer Hailey Rhode Bieber, who is also the spouse of superstar Justin Bieber, from selling products under the name “Rhode,” which is also her middle name.