Posts Tagged: "trademark"

Tam appealed to the Trademark Trial and Appeal Board (the “Board”), but the Board affirmed the Trademark Examiner’s refusal to register the mark. The Board found that although THE SLANTS has several meanings, the record demonstrated that it was “abundantly clear” that the likely meaning of the mark referred to people of Asian descent. Mr. Tam again appealed, this time to the Federal Circuit, arguing that § 2(a) is unconstitutional. The first time around, the Federal Circuit agreed with the Examiner and the Board. In a rare procedure, the Federal Circuit sua sponte ordered a rehearing en banc to review the constitutionality of § 2(a). Upon rehearing en banc, the Federal Circuit overturned McGinley in its 9-3 decision.

Counterfeiting has exploded in the last decade or so, paralleling the growth of the Internet and online sales. It’s harder for counterfeiters to get their products into the supply chain headed for brick and mortar stores, but the Internet makes it possible for counterfeiters to bypass physical stores and flourish, as they’re hiding behind the anonymity of a website or an online marketplace. Counterfeit goods are much more likely to be available on ecommerce marketplaces—either on independent sites specifically set up to market fakes, or on platforms such as Taobao or AliExpress. Identifying and taking down these sites requires constant watchfulness and diligence.

In retrospect, the proper thing for Director Lee to have done would have been to declare an emergency under the powers vested in her by 35 USC 21(a). Under §21(a) the Director of the USPTO can declare that a paper was filed on a day that it would have been filed but for a disruption in mail service or emergency. The net effect is that the filing is treated the same as under the Saturday, Sunday or Federal holiday rule. It would be wise for the Patent Office to issue a clarification on this matter, explaining that Director Lee declared an emergency under §21(a) of Title 35 and did not attempt to create a new federal holiday in honor of a catastrophic power outage.

On December 22, 2015, at approximately 7:00 pm, the USPTO experienced a catastrophic failure of electronic information systems due to what is being called a major power outage at the Office’s headquarters in Alexandria, Virginia. Could a power outage be responsible for electronic filing systems and information systems being down for nearly a week? Yes, it is certainly possible, but if you read between the lines it seems to me that the USPTO does not definitively know what happened or why. Given the importance of the USPTO electronic systems why didn’t the USPTO have real, robust, and redundant contingency plans? Why did they choose not to answer questions? The one question I specifically posed was whether the Office could confirm that no information or files were lost. I have not yet received an answer to that question.

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.”

The Trademark Electronic Application System (TEAS) will be unable to process payments on Friday, December 4, 2015, from 12:01 a.m. until 4:00 a.m. ET and on Saturday, December 5, 2015, from 6 a.m. until 11:59 a.m. ET. Other trademark systems will also be temporarily unavailable throughout the weekend for maintenance as well.

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.

An October 5, 2015 version of the Trans Pacific Partnership (TPP) Intellectual Property (IP) Chapter is now available on WikiLeaks. This article includes the entire text of the WikiLeaks-referenced TPP Section C: Trademarks. This article offers accompanying commentary together on the TPP’s trademark provisions together with thoughts on portions of the TPP text regarding Geographical Indications (GIs).

The ownership of ideas and creations are among the most valuable assets to any company. Businesses invest in these ideas and rights and use the value they create to help promote and grow business for years to come. Printer manufacturers, for example, invest heavily in new ink and toner technologies and realize a return over the life of the device through the sale of supplies and consumables. When third-party supplies manufacturers, particularly manufacturers of new build ‘cloned products’, violate IP rights and take products to market, they are effectively stealing from the original equipment manufacturer (OEM) – reducing the ability of the OEM to realize the full potential of their investment and, through their sale, securing financial benefit from the OEM who receives no compensation for this lost revenue. These organizations effectively take a ‘free ride’.

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.

Most people are familiar with the four-finger KitKat bar which has been produced by Nestlé in the UK since 1935. In 2010 Nestlé decided to apply to register the four-finger shape of the KitKat bar as a trade mark. Cadbury, fearing Nestlé would be able to establish a monopoly on four-fingered chocolate products, raised an objection to the application. Nestlé were initially successful in their application but, following Cadbury’s legal challenge, the case escalated to the High Court and the CJEU where the shape was subjected to further scrutiny and ultimately rejected as a trademark.