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Posts in Trademark

Spotify Successfully Opposes Two Marijuana-Related Trademark Applications

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.”

INTA Weighs in at CJEU on EU Parallel Imports Case

The International Trademark Association (INTA) has made an amicus submission before the EU Court of Justice (CJEU) in a case concerning parallel imports and EU trademark law. (Case C-175/21 Harman International Industries, Inc. v. AB SA.) In the case at hand, Harman, which makes audiovisual equipment, brought trademark infringement proceedings in Poland against AB, a distributor. AB had put on the market goods featuring Harman’s trademarks, which it had obtained from a third party. Europe operates a system of regional exhaustion, as set out in Article 15(1) of the EUTM Regulation, and in parallel imports cases national courts have referred to “goods which have not been put on the market within the European Economic Area (EEA) by the right holder or with his consent.” (Gender-neutral language has not yet become established in EU jurisprudence). In this case, Harman argued that the goods had been imported into Poland and had not been put on the market within the EEA by Harman or with its consent. AB claimed it had received assurances when it bought the goods that the trademark rights were exhausted.

USPTO Outlines Trademarks Administrative Sanctions Process

The U.S. Patent and Trademark Office today announced in an unpublished Federal Register Notice that it has established an administrative process for investigating submissions filed with the USPTO in trademark matters that appear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.

Christmas 2021: Iconic Patented Toys and Games Update – and Trademarks Too!

Its Christmas time again and IPWatchdog is back at it, compiling a list of iconic patented toys and games. This year, we have added some iconic trademarks to round out the list. This tradition was originally made popular in 2018, and updated in 2019, with a holiday feature by IPWatchdog Founder Gene Quinn: The Most Iconic (and Patented) Toys and Games of All Time. The original post included iconic toys such as “the Video Game Console, Barbie doll, Monopoly, Rubik’s Cube, Battleship, Super Soaker, Hoola Hoop, Slinky, Play-Doh, Easy Bake Oven, Game-Boy Frisbee, YoYo, Lego blocks, Transformers, Tricycles, Bicycles, Scooters, Tonka trucks, Rocking Horse, Twister, Simon, Magic 8 Ball, Erector Set, Etch A Sketch, Bunch-o-Balloons and Mr. Potato Head.” Here are a few more that have brought smiles to the faces of so many on Christmas Day over the years.

Trademark, Design and Copyright Landmarks in Europe During 2021

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.

Trademarks in 2021: Recounting the Most High-Profile Trademark Developments of the Year

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.

USPTO Imposes Sanctions on Flagrant Fraudulent Filer

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.”

When Your Trademark Licensor is in Financial Distress

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?

Good Sports: Cleveland MLB and Roller Derby Teams Share GUARDIANS Name

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.

Five Must-Have Tips for Expediting Trademark Lawsuits in Brazil

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.

Is Europe Running Out of Trademarks? Professor Beebe Talks EU Trade Mark Depletion

Is the European trademark system a victim of its own success? This was the question posed by Professor Barton Beebe of NYU School of Law at the Annual Sir Hugh Laddie Lecture at UCL-IBIL on November 9. Beebe argued that “trademark depletion is the most significant challenge the trademark system will face this century” and that, contrary to conventional wisdom,…

Final Rule Implementing Trademark Modernization Act Will Soon Allow USPTO to Crack Down on Fraudulent Filings from China

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.

CAFC Vacates TTAB Finding of No Fraud on the USPTO, Citing Two Legal Errors

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.

Tai Tells Tillis Support for COVID-TRIPS Waiver is Not Political but Based on ‘Extraordinary Circumstances’ of the Pandemic

Following four letters sent by Senator Thom Tillis (R-NC) to United State Trade Representative (USTR) Katherine Tai regarding the proposed waiver of intellectual property rights under the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, Tai on November 8 replied to a July 14  letter sent by Tillis and Senator Tom Cotton (R-AR). That letter referred Tai and Commerce Secretary Gina Raimondo to a May 19 letter in which Tillis, Cotton and 14 other senators requested responses to 10 questions on the proposal to waive IP rights for COVID-19 related technology. The May 19 letter had requested Tai and Raimondo’s responses by July 19, 2021.

WIPO Report Shows Economic Resilience During Pandemic, Buoyed by Massive Numbers of Chinese Patent, Trademark Filings

On November 8, the World Intellectual Property Organization (WIPO) released its World Intellectual Property Indicators 2021 report, the latest WIPO annual report to detail global IP filings across patents, trademarks and other forms of IP. As the key findings from the World IP Indicators report show, intellectual property filing activities, especially those related to trademarks, grew during 2020, showcasing a resilient global economy during the COVID-19 pandemic relative to other economic downturns in recent world history. Much of that activity is driven by domestic IP filings within China, which continues to dominate the world in sheer filing numbers across most forms of intellectual property.