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Posts in Trademark

Amici Ask SCOTUS to Correct Third Circuit’s ‘Overly Simplistic’ Formulation of Trademark Functionality in Ezaki Glico

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.

U.S. Olympic and Paralympic Committee: The Gold Standard for Trademark Protection

Few events capture the attention of the world like the Olympic Games. Around the globe and across the country, people tune in nightly to watch their nation’s athletes compete for a spot on the medal stand. But behind the breathtaking gymnastics performances and thrilling swimming races is some of the most valuable intellectual property in sports. And the United States Olympic & Paralympic Committee (USOPC)—the organizing body in charge of the nation’s Olympic efforts—is just as serious about defending its trademarks as it is about bringing home the gold.

England and Wales Court of Appeal Rules in SkyKick Trademark Case

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.

Could a Surge in Trademark Applications Delay Your Food or Beverage Business Launch?

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.

The Washington Football Team’s Trademark Journey: Over the Bumps and Full Speed Ahead

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.

Implications of Russia’s New Rules on Geographical Indications for Champagne and Cognac Producers

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”.

INTA Submits Comments to CJEU on Non-Challenge Clauses

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.

Celebrating U.S. Trademark Law: Happy 75 to the Lanham Act

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.

USPTO Says Trademark Filings are Up More Than 60% Through First Six Months of 2021 Due to E-Commerce Growth

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.

Trademarks Are Not Patents: The Second Circuit Rejects FTC Challenge to Trademark Settlements in 1-800 Contacts

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).

Game On: How IP Helps the Video Game Industry Level Up

While countless industries have been forced to adapt to the COVID-19 pandemic, the video game industry has been on a winning streak. Historic numbers of people have turned to video games for social connection, competitive sport, and everything in between. By the numbers, one in three people on the planet play video games and, this week, millions of those people tuned into E3, the premiere event for game players and game creators alike.

On World Anti-Counterfeiting Day, Organizations Highlight Proliferation of Online Fakes Amid Pandemic and Offer Solutions

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.”

Do Your Due Diligence Before Participating in an NFT Transaction

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.

No Unfair Advantage or Detriment in EUTM Case Involving PUMA Logo

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.

Putting COVID IP Waiver and IP Piracy in Context: Consumers and Producers, Pirates and Police Officers

The Office of the United States Trade Representative’s (USTR’s) 2021 Special 301 Report, published late last month, brought into sharp relief one of the ongoing issues the United States has with China. The country was again listed on its “Priority Watch List” in this annual review of the state of intellectual property (IP) protection and enforcement in the United States’ international trading partners, and the report explained that the United States remains unsatisfied with China’s failure to grant IP protection and enforcement to foreign rights holders. On the surface, very little is surprising about the USTR’s statement concerning China’s approach to the enforcement of IP rights. By now, China’s failures in the context of IP enforcement are a well-known refrain in the Western media. But dig beneath the surface, and the statement raises a multiplicity of issues that have gone unaddressed. Which IP rights are at issue? Whose IP rights are not being enforced? Should one country enforce the IP rights of the citizens of another country? If so, how and in what way does it do that? Last but not least, has the United States enforced the IP rights of the citizens of other countries?