Posts Tagged: "trademarks"

The U.S. Court of Appeals for the Federal Circuit ruled earlier today that a stylized form of the trademark for the .SUCKS domain name failed to create a “separate commercial impression” warranting registration by the U.S. Patent and Trademark Office (USPTO). Vox Populi Registry Ltd. is the domain registry operator for the controversial .SUCKS generic top-level domain (gTLD). The USPTO’s Trademark Trial and Appeal Board (TTAB) in October 2020 affirmed an examiner’s decision to refuse the stylized mark, as well as the standard character word mark for .SUCKS.

The U.S. District Court for the Eastern District of New York yesterday unsealed documents in an anticounterfeiting suit filed last year by Gilead Sciences, Inc. against a slew of defendants who Gilead alleges sold, marketed, and distributed counterfeits of its HIV medications. Gilead’s complaint seeks immediate monetary and injunctive relief, including seizure at certain of the defendants’ premises, as well as relief for trademark and trade dress infringement and trademark dilution, among other alleged violations…. According to the unsealed complaint and motion for relief, the accused companies sold “authentic-looking bottles of Gilead HIV and other medication to distributors and pharmacies throughout the United States, including in New York City, who in turn dispensed them to patients.”

On January 11, the U.S. Patent and Trademark Office’s (USPTO’s) Trademark Trial and Appeal Board (TTAB) issued a precedential decision finding dilution by blurring and sustaining two oppositions filed by Spotify AB against two marijuana-related trademark applications. Applicant U.S. Software Inc. filed trademark applications for POTIFY in standard characters, and stylized with a design on July 17, 2017, and May 2, 2018, respectively. These applications sought to register POTIFY for: “downloadable software for use in searching, creating and making compilations, rankings, ratings, reviews, referrals and recommendations relating to medical marijuana dispensaries and doctor’s offices and displaying and sharing a user’s location and finding, locating, and interacting with other users and place, in International Class 9.”

The U.S. Patent and Trademark Office today announced in an unpublished Federal Register Notice that it has established an administrative process for investigating submissions filed with the USPTO in trademark matters that appear to violate the Trademark Rules of Practice. The announcement comes as part of the USPTO’s broader effort to improve the integrity of the U.S. trademark register amid a surge in fraudulent filings, largely from China.

Last week, IPWatchdog selected five significant patent developments in Europe, examining what has happened this year and what can be expected in 2022. Here, we review five of the top trademark and copyright decisions and legislative changes across Europe and what’s coming up in the new year. One of the most significant trademark decisions of 2021 came in a case over Hasbro’s EUTM registration for MONOPOLY. The registration, for goods and services in classes 9, 16, 28 and 41, was declared invalid by the EUIPO Second Board of Appeal on the basis that Hasbro had acted in bad faith. On April 21, the EU General Court upheld that decision.

The past year has seen the implementation of brand-new trademark legislation, significant analysis of trademark liability for new technologies, renewed focus on the doctrine of initial interest confusion, the transformation of Nikes into “Satan Shoes,” the functionality of chocolate dipped cookies, and the end to a long-running case involving two multi-million dollar jury awards for willful infringement. As 2021 comes to an end, we look forward to what 2022 has in store.

On Friday, December 10, the United States Patent and Trademark Office (USPTO) issued a “Show Cause Order” imposing sanctions against Huanyee Intellectual Property Co., Ltd. and its Executive Director, Yusha Zhang, for violations of the USPTO’s trademark rules of practice relating to improper trademark submissions. The 198-page Order, comprised mostly of an exhibit listing all of the company’s trademark filings, indicates that the Respondents named in the Order “have filed more than 15,000 trademark matters before the USPTO” and “engaged in the unauthorized practice of law, provided false domicile information for applicants, impermissibly entered the signature of the named signatory on declarations and verifications, and violated other USPTO Rules and the USPTO’s website terms of use.”

Your company and its business have been built around the strength of a trademark license from a third-party licensor. You have invested heavily in the brand. Now, however, your trademark licensor is in financial distress. Bankruptcy is not beyond the realm of possibility. Perhaps the licensor has asked to renegotiate the terms of the trademark license or threatened to terminate the license once a chapter 11 bankruptcy case is filed. What are the respective rights of the distressed trademark licensor and your company, as trademark licensee, in this situation? Is your company at risk of losing everything invested in reliance on the license?

The MLB baseball team formerly known as the Cleveland Indians has a new name that pays homage to the history of Cleveland. The team last rebranded in 1915, when it left behind its former name, the “Naps” (short for “Napoleons”) in favor of the “Indians.” Now, over a century later, the team has joined other sports franchises in retiring Native American names, mascots, and imagery imbued with negative and racist connotations. With the help of actor and Cleveland Indians fan Tom Hanks, the baseball team announced on July 23, 2021 that it would adopt a new name: the Cleveland Guardians.

Civil processes and procedures in the Brazilian Courts have been increasingly expedited due to the digitalization of case files and the assignment of courts specialized in specific matters (for instance, in corporate and intellectual property law). But the timeframe for judicial disputes involving IP rights in Brazil can be expedited even more for foreign companies by complying with the following procedural requirements.

The U.S. Patent and Trademark Office yesterday published a final rule implementing the Trademark Modernization Act of 2020 (TMA), which was signed into law as part of the Consolidated Appropriations Act of 2020 last year. The new regulations go into effect on December 18, 2021, except for the implementation of the shorter response period for office actions, which will go into effect on December 1, 2022.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday, November 12, vacated and remanded a decision of the Trademark Trial and Appeal Board (TTAB) that had found Galperti S.r.l (Galperti-Italy) had not committed fraud on the U.S. Patent and Trademark Office (USPTO) in asserting that it had substantially exclusive use of the mark GALPERTI in the five years preceding its registration. The appeal to the CAFC stems from Galperti, Inc.’s (Galperti-USA’s) petition for cancellation based on its own prior use of the same mark, in which the TTAB found that Galperti-USA had demonstrated only insignificant use of the mark and therefore had not proven fraud or falsity on the part of Galperti-Italy. The CAFC cited two legal errors in the TTAB’s analysis that warranted vacatur and remand.

The Brazilian Patent and Trademark Office (BPTO) began accepting applications for position trademarks on October 1, 2021. Position marks are trademarks characterized by the particular spot in which they are placed on a product. While position marks were previously acknowledged by the BPTO and by the courts, they had yet to qualify for separate trademark registration; most brand owners registered them as figurative or three-dimensional marks. 

On October 27, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the Trademark Trial and Appeal Board’s (TTAB) cancellation of Brooklyn Brew Shop, LLC’s (BBS) standard character mark and dismissed in part, affirmed in part and remanded the TTAB’s decision regarding the opposition of BBS’s mark. For over 30 years, The Brooklyn Brewery Corporation (Brewery) has used the marks BROOKLYN and BROOKLYN BREWERY in connection with the advertising, promotion, and sale of Brewery’s beer and beer-related merchandise. In 2006, Brewery registered BROOKLYN BREWERY as a federal trademark for beer in class 32.

On October 25, the European Union Intellectual Property Office (EUIPO) issued a study exploring the growing misuse of e-commerce channels for trade in counterfeits. The report provides a quantitative review of both the expansion of Internet commerce as well as a growing number of counterfeit seizures by border officials in recent years. The EUIPO’s report also profiles common aspects of counterfeit supply chains, as well as regulatory frameworks established to reduce the spread of counterfeits online.