Posts Tagged: "trademark"

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.

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.

This week in the Federal Circuit Review: (1) Proposed rejections to claims added during Inter Partes Reexamination are not evaluated for substantial new question of patentability (Airbus S.A.S., v. Firepass Corp.); and (2) Likelihood-of-Confusion requires full consideration of strengths and weaknesses of existing mark (Juice Generation, Inc., v. GS Enterprises LLC ).

A North American fondue restaurant franchise found out just how essential terminology management can be when it expanded into Mexico in 2010. A translation service provider previously translated its kitchen training materials into Spanish, specifically for the restaurant’s Spanish-speaking employees in the United States who originally came from various Latin American countries. Company executives thought the Spanish they were currently using would be sufficient for the menu and other materials to be used in Mexico. When the Mexican franchise owners visited the company’s U.S. headquarters, it quickly became clear that one dialect of Spanish is not always the same as another. Different countries have their own dialect with words and phrases unique to each culture.

The British legislation, aimed at curbing demand for cigarettes, requires that all cigarettes be sold in uniform packs with all branding, including colors, logos and other trademarks, removed. Companies are only permitted to print the brand’s name, in a uniform font, size, and location, on the pack, alongside health warnings and deterrent images. Tobacco companies have indicated that they will be left with no choice but to challenge the regulations.

The USPTO defined the term Trademark Bullying as the vexatious practice of a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow. Mirroring the modus operandi exhibited by patent assertion entities and copyright bullies, several creative mark owners have adopted and modified this sue-to-settle paradigm and applied it in the trademark context. In short, trademark trolls—businesses both large and small—aggressively assert rights beyond the scope of trademark protection afforded by the Lanham Act through the issuance of threatening cease-and-desist letters.

Last Wednesday the Eastern District of Virginia issued its opinion and order on cross-motions for summary judgment in Pro-Football v. Blackhorse, the case in which the National Football League (NFL) appealed the Trademark Trial and Appeal Board’s (TTAB) precedential cancellation of the REDSKINS trademark on Lanham Act 2(a) disparagement grounds. The long and short of it is, it didn’t turn out well for the Redskins, who will almost certainly appeal the decision, which affirmed the TTAB’s 2014 cancellation.

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.”

On May 8th through May 10th, the USPTO will perform maintenance on the following trademark systems.

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.

The USPTO today announced the appointment of Meryl Hershkowitz as Deputy Commissioner for Trademark Operations. In her new position, Hershkowitz will oversee the examination and processing of applications throughout trademark operations. Hershkowitz has been one of two group directors for trademark operations of the USPTO for the last seven years. As group director, she led a staff of 10 law offices comprised of more than 200 trademark examining attorneys.

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.