Posts Tagged: "trademark law"

Earlier this month, Napa Valley Vintners (NVV), the nonprofit trade association that works to “promote, protect and enhance the Napa Valley appellation,” became the first wine group in the U.S. to be granted a certification mark registration. So-called certification marks are a unique species within the trademark law, functioning to “certify” the nature or origin of goods or services, rather than merely convey the producer of those goods or services.

Yesterday the Federal Circuit in an en banc decision held that the portion of Section 2(a) of the Trademark Act, which bars federal registration for trademarks that are disparaging, is unconstitutional under the First Amendment. The government advanced three principal arguments for why §2(a) did not violate the First Amendment: (1) because §2(a) does not “prohibit” or suppress speech at all; (2) because trademark registration is government speech; and (3) because §2(a) merely withholds a government subsidy. The Court rejected all three of the government’s arguments, and in doing so issued holdings on three separate issues that have divided other tribunals.

Section 1071(b)(3) does not expressly or implicitly permit the award of “attorney fees” to the PTO. Specifically, Section 1071(b)(3) states simply that all the expenses of the proceeding shall be paid by the party bringing the case, whether the final decision is in favor of such party or not. By its express terms, the statute merely allows for the award of “expenses,” and not “attorney fees.”

Chicken Soup for the Soul Day is on November 12th. This is a day to sip on a nice piping hot bowl of soup and feel inspired. However, it’s also an opportunity to learn a little lesson on trademark infringement. In October 2012, Campbell Soup Company filed a trademark suit against Chicken Soup for the Soul Publishing LLC in New Jersey federal court for “willful trademark and trade dress infringement, false designation of origin, trade dress dilution, deceptive acts and practices, and unfair competition.” Campbell Soup Co. and Chicken Soup for the Soul Publishing LLC settled their trademark dispute, but the dispute provides a lesson for on how businesses can avoid trademark infringement issues.

Among the most promising tech tea leaves product launch predictors rely on are publicly available applications and registrations for intellectual property. Given the importance of product launches and the proliferation of speculation surrounding them, many of the world’s highest profile companies – particularly tech darlings like Apple and Google – have sought ways to balance IP protection, its corresponding public disclosure requirements, and their desires to keep new products “secret” before they are formally announced. The result has been a growing trend of U.S.-based companies relying on earlier foreign trademark applications as the basis for later U.S. applications, a process that is provided for under the Trademark Act.

We’ve all been there. The Marketing team comes up with a shortlist of branding ideas for the latest product or service – and at the top of the list is a brand which is descriptive. As trade mark lawyers, we wouldn’t be doing our jobs properly if we didn’t explain that the descriptive brand will be more difficult to register as a trade mark than a made-up, distinctive name (in the UK anyway). Plus, it’ll be harder to enforce. However, the appeal of a descriptive brand (simple and clear) can’t be denied, especially with internet searching and online sales now so important. In this post, we’ll take a look at a few obstacles to enforcing a descriptive brand in the UK and Europe, and how to overcome them.

Since the inception of the search engine, trademark owners, advertisers, search engine providers, and the courts have struggled with the issue of the use of third-party trademarks in keyword advertising and search returns, and whether such trademark use is likely to confuse consumers when they are searching for information regarding a particular brand. Despite an array of holdings on this issue over the years, following the 2011 decision in Network Automation, Inc. v. Advanced System Concepts, Inc., the Ninth Circuit and other courts have generally held that the potential for “mere diversion” of a consumer caused by the use of a third party’s trademark in connection with sponsored keywords or search results does not constitute trademark infringement unless a trademark owner can demonstrate that particular search returns or sponsored keyword advertisements are likely to cause confusion based on the specific use or presentation of a trademark in a search return.

The Federal Circuit explained that evidence of third-party use bears on the strength or weakness of an opposer’s mark. In this case, which arose as an appeal from the TTAB, the evidence demonstrated“ubiquitous use of paw prints on clothing as source identifiers. According to the Federal Circuit, given the widespread use of paw prints, consumers would know to look for additional indicia of origin rather than just the paw designs. The evidence, therefore, demonstrated that consumers are not as likely confused by different, albeit similar looking, paw prints.

When an undertaking operates in more than one country of the European Union it is a wise legal choice to apply for a trademark on a community level. A community trademark allows the applicant to file for a trademark within 28 countries of the European Union instead of the expensive and time consuming method of independent national filings for each country. The downside of the Community trademark application is with respect to satisfying the requirement of genuine use in connection with goods and services. Within 5 years of trademark registration the mark must be used in more than one country of the European community. In Sofa Workshop Limited v. Sofaworks Limited, the judgment elucidated upon the term “Genuine Use” in respect of trademarks and the territory covered by them.

The Federal Circuit affirmed the TTAB, noting that substantial evidence supported the TTAB’s findings. Where, as here, the disputed term is highly descriptive, the TTAB acted within its discretion in refusing to accept evidence of five years’ use as prima facie evidence of distinctiveness.

In the decision dated 5th May, 2015, the General Court of the European Union concluded, upon examining the opposition by British SKY Broadcasting Group Plc (now SKY International) against Skype Ultd, that there is an existence of likelihood of confusion between the prior registered mark, “SKY” and the applied mark, “SKYPE” preventing the registration of the sign, SKYPE, in the European community.

VeRO is ebay’s Verified Rights Owner program. VeRO allows a right’s owner (someone who has a verified trademark, copyright, etc.) to request removal of an item. A company by the name of Mad Dogg Athletics, Inc. (MDA) is a member of the eBay VeRO Program and uses this program to enforce the nearly one hundred trademarks it owns, which include: spin, spinning, spinner, spin yoga, spinfitness, and spin daddy. With that said, only MDA’s Spin® bike can be called that, and so my client’s “spin bike” listing was removed due to use of the word spin.

Last week the Federal Circuit scheduled oral argument en banc in THE SLANTS trademark case for the morning of October 2, 2015, taking up the question of whether §2(a) of the Lanham Act (15 U.S.C. § 1052(a)) can withstand First Amendment scrutiny. Writing separately after the panel decision, Judge Moore offered 24 pages of “additional views” on the matter, encouraging the Federal Circuit to “revisit McGinley’s holding on the constitutionality of §2(a),” noting that “the protection accorded to commercial speech has evolved significantly since the McGinley decision.”

A trademark is the simplest and often the most effective IP protection. A trademark is a broad term that applies to any word, name, symbol or device that manufacturers and merchants use to identify and distinguish goods and services. Trademarks do not have to be registered to use them, but a patent and trademark attorney should register them as soon as possible in all the important market countries as a business expands overseas.

There was a split in the circuit courts as to what effect a TTAB decision will have, and this depends heavily upon where the litigation is happening. The weight of a TTAB decision will vary depending on the jurisdiction, ranging from none at all to complete preclusion. Here, the issue was whether one mark was confusingly similar to another, which the Supreme Court determined was exactly the same as what was being litigated.