Topic: Trademark

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What’s in a name? How to protect yourself if your name is your personal brand

Cher, Prince, Oprah, Bono – all of these celebrities have one thing in common – the capacity to be recognised by nothing more than a single name. For businesses which are built on the success of a personal brand, a name can be a crucial component of being recognised by consumers. But the question remains: should … Continue reading

Productivity Commission’s Report on Australia’s IP system

The Inquiry Report into Intellectual Property Arrangements recently published by the Productivity Commission (Report) argues that Australia’s IP system is weighted too heavily in favour of rights holders and against the interests of the broader community. It has made various recommendations to correct this perceived imbalance. This article considers some of the recommended changes which, … Continue reading

Protecting Australian brands in China

Summary China continues to emerge as one of the most important intellectual property (IP) destinations for Australians, having overtaken the US and New Zealand as Australia’s predominant destination market for Australian trade marks filed overseas in 2011. With the China-Australia Free Trade Agreement (ChAFTA) coming into force last year, China is now Australia’s largest trading … Continue reading

Use them or lose them: US trademarks put to the proof

In the United States, a trademark owner must use their mark in commerce to maintain a federal trademark registration. This requirement is different from many other countries which do not require use of the mark to maintain registration.  Further, the trademark owner is required periodically to prove to the United States Patent and Trademark Office … Continue reading

U.S. Trademark fees increase on January 14

On January 14, 2017, the U.S. Patent & Trademark Office (USPTO) will implement a number of fee increases for trademark applications and other trademark filings. A full schedule of the fee changes is available on the USPTO’s website. As we previously reported, the USPTO proposed most of these fee changes last summer with a period … Continue reading

Trade-mark registration not all singing and all dancing

In Domaines Pinnacle Inc. v. Constellation Brands Inc. 2016 FCA 302, the Canadian Federal Court of Appeal has distinguished its own recent decision in Les Restaurants La Pizzaiolle Inc. v. Pizzaiolo Restaurants Inc., (Pizzaiolo) 2016 FCA 265 (see IP Monitor of November 2016.) Both cases dealt with the extent to which Canada’s Trademark Opposition Board … Continue reading

Update: INTA files amicus brief with SCOTUS in Slants case

On December 16, 2016, the International Trademark Association (“INTA”) filed an amicus brief with the U.S. Supreme Court in support of Simon Tam, founder of the Slants. Lee v. Tam, No. 15-1293, Br. Of Amicus Curiae Int’l Trademark Assoc. INTA—a global association comprising more than 7,000 trademark owners and legal practitioners—urged the Court to uphold … Continue reading

Don’t be a Turkey! – Lessons learnt for trade mark owners as the Wild case concludes

A recent High Court of Australia (HCA) decision has marked the finale of the dispute between Lodestar Anstalt (Wild Geese Whiskey) and Campari America LLC (Wild Turkey Bourbon), with the HCA refusing to grant Wild Turkey Bourbon leave to appeal the 2016 decision of the Full Federal Court of Australia.  For full background on the … Continue reading

Canadian pizza battle goes to trademark registrant

The value of reliance on a trade-mark registration, as opposed to prior use, stands out sharply in the recent Federal Court of Appeal of Canada case Pizzaiolo Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc. ( 2016 FCA 256 October 28, 2016). Here the applicant Pizzaiolo Restaurants Inc. had filed two applications PIZZAIOLO and PIZZAIOLO … Continue reading

USPTO files opening brief in Slants case

The First Amendment does not require the government to support disparaging speech, the U.S. Patent and Trademark Office (“USPTO”) argued in its opening brief filed last week in the “Slants” trademark case currently pending before the Supreme Court. Lee v. Tam, No. 15-1293, Pet. Brief at 20 (Nov. 9, 2016).   Background As we’ve previously … Continue reading

TTAB revises its Rules of Practice

The U.S. Trademark Trial and Appeal Board (TTAB) is amending its Rules of Practice, effective January 14, 2017. On October 7, 2016, TTAB published a notice of final rulemaking in the Federal Register describing the revisions.  The new changes are intended to clarify and improve the efficiency of inter partes and ex parte appeal proceedings and … Continue reading

These aren’t the trademarks you’re looking for: Lucasfilm sues “Lightsaber Academy” for infringement

Lucasfilm, the Disney subsidiary and owner of the world-famous Star Wars franchise, is making headlines this week after filing suit against “Lightsaber Academy,” a school of Jedi swordplay. Lucasfilm’s complaint, filed in California federal court on October 14, targets Michael Brown, the operator of Lightsaber Academy, Thrills and Skills, and New York Jedi. Brown and … Continue reading

Houston College of Law enjoined from using name

On Friday, October 14, 2016, a federal judged ruled that Houston College of Law must change its name, at least for the duration of pending trademark litigation.  The temporary injunction stems from a trademark infringement suit the University of Houston brought against Houston College of Law, a private law school which until June had been … Continue reading

Redskins won’t join Slants’ trademark case at SCOTUS

The Supreme Court has refused the Washington Redskins’ request to join The Slants’ case challenging the Lanham Act’s ban on the registration of offensive trademarks. Pro-Football, Inc. v. Blackhorse, Case No. 15-1311 (U.S. Supreme Court’s Order List at 58, Oct. 3, 2016). Last week, the Supreme Court agreed to review The Slants’ case regarding whether … Continue reading

UPDATE: SCOTUS will review ban on offensive marks

Earlier today, the US Supreme Court agreed to review whether the Lanham Act’s ban on offensive trademarks violates the First Amendment.  The high court granted certiorari in the case of The Slants, the Asian American rock band that was denied a trademark registration under Section 2(a) of the Lanham Act. The relevant provision of the … Continue reading

NY Court Says No Grand Theft of Stars’ Publicity Rights. What About California?

In July, the Brand Protection Blog reviewed potential “right of publicity” claims that might have been brought by celebrities whose wax “look alikes” appeared in Kanye West’s “Famous” music video. That analysis largely focused on California’s Celebrity Rights Act. A September 1, 2016 ruling from a New York State appeals court may demonstrate important differences … Continue reading

That’s My Mark! Enforcing Trademark Rights on Social Media

It is no doubt surprising and frustrating for brand owners when they find that someone has appropriated their trademarks on social media. A few of the common scenarios include: small competitors modifying logos and passing them off as their own; unauthorized distributors using logos and trademarks on their social media advertising; and social media users … Continue reading

Don’t congratulate #TeamCanada at #Rio2016: Olympic social media rules in Canada

With the Rio Olympics well underway, Canadian brands need to be aware of the “do’s and don’ts” of advertising and social media content involving the Olympics and Olympic athletes. The International Olympic Committee (IOC) and the Canadian Olympic Committee (COC) have long been aggressive in enforcing illicit use of the term “Olympics”, the five rings … Continue reading

In the UK, the first rule of the Olympics is: You don’t talk about the Olympics

The Rio 2016 Olympics are upon us and will undoubtedly capture the attention, excitement and imagination of the public in the UK and globally. It is no surprise then that some businesses may seek to capitalise on the opportunity to promote their brands, products and services through advertising that references the Olympics, Team GB and … Continue reading

Social media risks during the Rio Games

In just four days, the world’s attention will turn to Rio de Janeiro and the Games of the XXXI Olympiad.  At the same time, sports enthusiasts will turn to social media to express their support for the Games, for their countries’ teams and for their favorite athletes. Individuals, news outlets, and official Olympic sponsors are … Continue reading
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