Posts Tagged: "trademark"

Every year countless stories arise of individuals, churches, and small businesses, receiving cease and desist letters from the NFL or NCAA for unauthorized use and reference to their respective SUPER BOWL, MARCH MADNESS, and other trademarks. The success of these enforcement letters comes from a mixture of the organizations’ trademark rights under the Lanham Act and the fear that these financially well-endowed organizations could sue. The International Olympic Committee (“IOC”), and its national governing bodies, like the USOC (collectively the “Olympic Committee”), also aggressively enforce their rights in their Olympic trademarks, slogans, and symbols (the “Olympic properties”). The Olympic Committee not only employs the traditional methods of other sport organizations, but has several additional weapons that provide a true monopoly on the Olympic properties; thus, significantly increase its success.

Design patents cover visual, nonfunctional characteristics embodied in, or applied to, an article of manufacture. They may relate to the configuration or shape of an article, the surface ornamentation applied to an article, or to a combination of the two. Ultimately, a design patent protects only the appearance of the article and not its structure or functionality. Trade dress is a type of trademark that refers to the image and overall appearance of a product. Trademarks protect brands and the goodwill associated with the brand. A trademark is used to identify the source of goods or services and is used to distinguish the goods and services of one seller or provider from another. Trade dress can include product packaging, product shape and color, and the look and feel of a restaurant or retail store.

After several years of negotiations between the Kosovo government and the European Commission, the Stabilization and Association Agreement (SAA) entered into force on April 1, 2016. The entry into force of the SAA is an important development for Kosovo since this constitutes the first contractual relationship between Kosovo and the European Union. The SAA includes several chapters on various political and economic issues as well as provisions aiming to promote EU standards in many areas, including intellectual property. I will first highlight the main provisions of the SAA concerning IP rights and compare them with the respective provisions in a few other SAAs that the EU signed with other countries in the region. I will then analyze what the entry into force of the SAA means for the Kosovo government in terms of IP protection and how this development will positively affect trademark holders and IP practitioners.

Protecting intellectual property today is more challenging than ever, and the stakes are high. An open and rapid-fire exchange of information has become the norm in our digital age. Add the global nature of the market and persistent technological advancements, and it should come as no surprise that imitators stand ready to capitalize on the latest breakthroughs. As their low-cost, low-quality products flood a market, not only do they claim valuable market share, but they have potential to erode the credibility of an entire category and its leaders. Any company that produces a product must consider the prospect of knockoffs, and the potential impact imitations will have on market share and brand perceptions. Obtaining IP protection directed at mitigating knockoffs can be highly beneficial, particularly for start-ups that may have limited resources and brand awareness.

Addressing the issue of whether a famous mark can be diluted by the identical mark of a much smaller company, the US Court of Appeals for the Seventh Circuit decided that the district court rightly dismissed trademark infringement claims and cross-claims where neither party had been, or was likely to be, harmed by the other. Hugunin, et al. v. Land O’ Lakes, Inc., Case No. 15-2815 (7th Cir., Mar. 1, 2016) (Posner, J).

The new European Community Trade Mark Regulation, as approved by Regulation (EU) 2015/2424 of the European Parliament, entered into force on March 23, 2016. Among other amendments, the provisions of Article 28(8) of the new Regulation substantially change the approach to interpretation of ICGS class headings included in the list of goods/services covered by EU trademarks applied for before June 2012. Previously, before June 22, 2012, a trade mark was deemed to be protected in respect of the entire range of ICGS goods and services included in the alphabetical list for that class provided that such trade mark was registered with reference to the heading of the respective ICGS class.

Two cases making their way through the Federal courts may force the Supreme Court to consider the issue of what sorts of trademarks should be considered “disparaging,” and whether the government may lawfully prevent the registration of such trademarks… The Redskins appealed to the Fourth Circuit in August 2015 and the parties’ and amici briefs have been rolling ever since. As of April 25, 2016, the Redskins have petitioned the United States Supreme Court to review their case, skipping over the Fourth Circuit Court of Appeal.

The Federal Circuit affirmed. Undertaking an extensive analysis of the legislative history of Lanham Act damages, the Court attempted to explain a 1999 amendment inserting language regarding willfulness. Because the “willful violation” language appears to modify violations of § 1125(c) regarding dilution, Romag argued that the amendment negated any preexisting willfulness requirement for causes of action other than dilution. Relying heavily on Second Circuit precedent, which governed the district court decision, the Court disagreed.

Last June, Walter Palmer, an American dentist and recreational big game hunter, shot and killed Cecil, a southwest African lion who had been the subject of a study by Oxford University and a major attraction for Hwange National Park in Zimbabwe. At first, Cecil’s killing drew international outrage and media attention, the hashtag #CecilTheLion spreading like wildfire on social media. Then it drew trademark applications. At least four different applicants currently have live trademark applications pending in the United States for CECIL THE LION, covering everything from the noble, including charitable fundraising services and information and news commentary relating to wildlife conservation, to the commercial, including dolls, trading cards, and charms.

Halo sued Comptoir for infringing a large number of U.S. design patents, copyrights, and one common-law trademark relating to a number of Halo’s furniture designs. Both companies manufacture and sell furniture. Comptoir is a Canadian company that manufactures furniture in China, Vietnam, and India, and then imports that furniture into the United States for sale. Comptoir moved to dismiss the suit on forum non conveniens grounds, alleging that the Federal Court of Canada would be the appropriate forum for the dispute.

Collectors love eBay because it allows them access to items them may never otherwise be able to purchase. Bargain hunters love eBay for the ability to buy items at a much lower cost than normal retail. But, sometimes costs are lower because the goods infringe on someone’s intellectual property. Section 512(c) of the DMCA provides a safe harbor from liability for “online service providers” (OSP), like eBay, as long as the OSP: (1) does not receive a financial benefit directly attributable to the infringing activity; (2) is not directly or circumstantially aware of the presence of infringing material; and (3) promptly takes steps to remove purported infringing material upon receiving notice from copyright owners. To streamline this process, eBay created the Verified Rights Owner (VeRO) program. It allows intellectual property rights owners to request that eBay remove listings that infringe on their intellectual property rights, including copyrights, trademarks, and patents.

In anticipation of Supreme Court review of Tam, the Commissioner has issued an informal directive to trademark examiners that any application for a mark that is potentially violative of Section 2(a) should be “suspended” rather than refused on that basis until the Supreme Court takes up Tam and its companion cases. In addition, although the Tam decision was expressly limited to the “disparagement” provision in Section 2(a), the Commissioner’s directive apparently applies to all Section 2(a) bases for refusal (immoral, deceptive, scandalous, or disparaging). All non-Section 2(a) application issues will still be addressed prior to suspension.

With leading-edge, tech-savvy companies in the internet, social networking, and e-retailing space often dominating headlines nationwide, it is easy to overlook the myriad businesses competing in the Fast Moving Consumer Goods (“FMCG”) industry, and to dismiss them as somewhat out-of-touch with the modern consumer. However, FMCG companies have combined revenues nearly on par with those in the more highly-publicized technology-based sectors, and have been thriving in the retail space for decades. IP Rights are critically important in the FMCG industry because businesses operating in this sector rely heavily on brand awareness and brandy loyalty for their success. It makes sense then that IP Rights are pivotal in any FMCG company’s long-term strategy for success.

While Justice Scalia served on the Supreme Court for nearly three decades, his contributions to the area of intellectual property law were quite limited. Scalia did famously refer to patents as “gobbledegook” during the KSR v. Teleflex oral arguments. Scalia was the only Justice not to sign onto an opinion in Bilski v. Kappos that would have recognized that at least some software is patent eligible. But Justice Scalia did not author any of the major patent decisions considered by the Court during his tenure. The passing of Justice Scalia does not seem likely have much of an impact on intellectual property cases, particularly patent cases. Having said this, I could see legislative history becoming more relevant than anyone would have anticipated just a week ago when the Supreme Court considers Cuozzo Speed Technologies v. Lee.

What follows is our wide ranging discussion, which start out with what Cohn is doing with INTA and then moves into an in depth discussion of issues surrounding counterfeiting, the newly formed Trademark Caucus in Congress, and the recent Federal Circuit decision on disparaging trademark registrations in the so-called Slants case. We ended with the familiar fun questions that give us an opportunity to get to know Cohn.