Posts Tagged: "trademark"

Taco Bell is on the short list as one of my guilty (or not-so-guilty) pleasures. So, when the popular restaurant chain filed a cancellation action against the TACO TUESDAY trademark, I knew I had to write a piece about it. On May 16, 2023, Taco Bell filed a Petition for Cancellation of the trademark for TACO TUESDAY, which was registered by Spicy Seasonings, LLC in 1989 for “restaurant services. Spicy Seasonings operates the Taco John’s restaurant franchise. As you can see on their website, they claim to have coined the phrase.

The U.S. Supreme Court held today in Jack Daniel’s Properties v. VIP Products that the Rogers test, used to “protect First Amendment interests in the trademark context,” is not relevant “when an alleged infringer uses a trademark as a designation of source for the infringer’s own goods.” The Court therefore vacated the U.S. Court of Appeals for the Ninth Circuit’s ruling that said VIP’s dog toy mimicking a Jack Daniel’s whiskey bottle was an expressive work entitled to First Amendment protection. Justice Kagan authored the unanimous opinion for the Court, while Justice Sotomayor, joined by Justice Alito, and Justice Gorsuch, joined by Justices Thomas and Barrett, each filed concurring opinions.

Last week, Apple filed a petition for the U.S. Court of Appeals for the Federal Circuit (CAFC) to rehear a decision that effectively canceled the tech giant’s application to register the trademark APPLE MUSIC. The petition asks the court to rehear the case in order to direct the Trademark Trial and Appeal Board (TTAB) to narrow the services listed in the trademark application so that it can proceed to registration.

The U.S. Supreme Court today granted a petition brought by U.S. Patent and Trademark Office (USPTO) Director Katherine Vidal that asks, “whether the refusal to register a mark under Section 1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.” The case was decided by the U.S. Court of Appeals for the Federal Circuit (CAFC) in February of last year, and the full court denied a request for panel rehearing or rehearing en banc in August. The February CAFC decision held the Office’s application of Section 2(c) of the Lanham Act to reject the mark TRUMP TOO SMALL was unconstitutional. Specifically, the CAFC panel held that “applying section 2(c) to bar registration of [Steve] Elster’s mark unconstitutionally restricts free speech in violation of the First Amendment.”

On  April 3, 2023, the UK Intellectual Property Office (UKIPO) issued much needed guidance on how digital goods and services – namely non-fungible tokens (NFTs), virtual goods, and services provided in the metaverse – should be classified for trademark purposes. NFTs The UKIPO defines an NFT as “a unique unit of data (the only one existing of its type) that…

Can the Lanham Act apply to the conduct of foreign entities occurring entirely outside the United States and, if so, what is the test? The Supreme Court will soon decide this issue in Abitron v. Hetronic, potentially resolving a long-standing circuit split where six different tests presently co-exist. It will mark the first time since the Court’s 1952 ruling in Steele v. Bulova Watch Co. that it has spoken on extraterritoriality as it relates to the Lanham Act. Steele found that the Lanham Act does apply to a U.S. citizen using a registered U.S. trademark on spurious Bulova watches, many of which were bought by U.S. citizens in Mexico and brought back to the United States. Steele did not address whether the defendant’s U.S. citizenship, or his sourcing of parts from U.S. suppliers, were necessary conditions to subject matter jurisdiction. Enter Hetronic.

Despite being codified more than 20 years ago, there are many open questions regarding application of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) (“ACPA”). Certainly, domain name conflicts continue to evolve given the continued importance of the domain name system to the Internet and the constant changes in both technology and strategies of offenders. But there are also open questions in the application of the cybersquatting law itself, including the applicability and application of statutes of limitations. Does a statute of limitations apply to ACPA claims? If so, how long is it? And from when does it run? This article discusses the relatively small body of law that analyzes statutes of limitations for cybersquatting claims under the ACPA.

Brands — legally protected as trademarks — have value. We all understand that intuitively. Registering brands as federal trademarks also provides significant legal benefits, such as the presumption of ownership, validity, and nationwide priority in the mark. According to a recent study, the number of trademarks a company registers in a given year helps predict that company’s profitability and stock returns for the following year.

Brand owners frequently encounter significant challenges in obtaining federal trade dress registration. The recent ruling in the Eastern District of Virginia confirmed that TBL Licensing, LLC, the brand owner of Timberland boots, was not an exception to this struggle. Unlike a word mark, a product design can never be inherently distinctive as a matter of law because consumers are aware that such designs are intended to render the goods more useful or appealing rather than identifying their source. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 212-213 (2000). In order to obtain a federal trademark registration for a product design, the applicant must establish secondary meaning.

The Dominion Voting Systems lawsuit against Fox News attracted lots of attention. Claims of defamation, damages of $1.6 billion, the role of the First Amendment, and the press’ right to free speech were all key talking points around this lawsuit. What was not a part of these discussions were the implications to Fox’s trademark, FOX NEWS®. This case, even though it just settled, may have just cost Fox News a lot more than the $787.5 million settlement and the subsequent departure of Tucker Carlson—it could cost their name and brand.

Trademark applicant Charger Ventures LLC has lost its appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC) from the Trademark Trial and Appeal Board’s (TTAB’s) finding that SPARK LIVING is likely to be confused with an earlier-registered mark, SPARK. The precedential decision was authored by Judge Reyna. Both marks cover real estate services, but Charger amended its application to specify residential real estate services, whereas the earlier mark specified services related to commercial real estate property. Charger also disclaimed the term “LIVING” in response to the examiner’s request. However, the examiner ultimately issued a final office action refusing the application on the grounds that “a comparison of the respective marks show[s] that they are comprised either in whole or significant part of the term ‘SPARK,’”…and both marks are for real estate services, with ‘overlapping identifications of leasing and rental management services.’”

Just days after a complaint was filed against restaurant chain Sweetgreen by Chipotle Mexican Grill for trademark infringement, dilution, and deceptive business practices, Sweetgreen has changed the name of its offending product in order to reach possible settlement. Last week, Chipotle filed a complaint against Sweetgreen for naming its new menu item  “Chipotle Chicken Burrito Bowl”. Chipotle Mexican Grill Inc. et al. v. Sweetgreen Inc., case number 8:23-cv-00596, U.S. District Court for the Central District of California. Chipotle has numerous registered trademarks for variations on the word CHIPOTLE in relation to its restaurant and food, including stylized versions in various fonts. Prior to filing the complaint, Chipotle sent Sweetgreen a cease-and-desist letter asking the salad chain to drop the word “chipotle” from the name, which is the usual practice in trademark related lawsuits.

Current artificial intelligence (AI) systems can generate an astonishing variety of content, including text-based works, audio, video, images, programming code, product designs, technical papers, etc. In many cases, the output from an AI system is virtually indistinguishable from that of a human. This trend is expected to continue at an ever-increasing rate in the coming years. Since content solely generated by an AI system is not available for protection under existing intellectual property laws, the following are practical guidelines for human creators who wish to protect content that was created with the assistance of an AI system.

The owner of the trademark for APPLE JAZZ has won his appeal from the Trademark Trial and Appeal Board (TTAB), which dismissed his opposition to Apple, Inc.’s application to register the mark APPLE MUSIC. The U.S. Court of Appeals for the Federal Circuit (CAFC) said the TTAB legally erred in allowing Apple to claim absolute priority for all of the services listed in its application based on a showing of priority for one service. Apple filed Trademark Application No. 86/659,444 for APPLE MUSIC, which the company has been using since 2015, when it launched its music streaming service. Charles Bertini, the owner of APPLE JAZZ, registered his mark in New York state in 1991 for entertainment services but began using the mark well before that, in 1985. Unaware that he did not have a federal registration, Bertini filed an opposition against Apple, Inc.’s federal registration for APPLE MUSIC in 2016, along with an application to register APPLE JAZZ with the USPTO.

Resources such as marketing and branding agencies can help new businesses struggling to find a unique brand name, and lawyers specializing in trademark law can help evaluate infringement and refusal risks and assist in registering a trademark. That said, the costs associated with each of these options are not insignificant, leading some smaller brands and startups to choose a name, do a quick internet search for prior use, and just hope they don’t face repercussions. One of the many issues with this is that as a new business grows and becomes more recognizable, the increased exposure makes it easier for someone with pre-existing rights to find and enforce those rights against the new business. This could include financial penalties and a complete rebrand of the business causing confusion to established customers, which is why choosing and trademarking one’s brand name early is vital. Insert Artificial Intelligence (AI). I