Topic: Trademark

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No Likelihood of Confusion Between “SMOKES & Design” and “SMOK”

The Trademark Trial and Appeal Board (“TTAB”) found that there was no likelihood of confusion between the “SMOKES & Design” mark owned by Fancy Pants Products, LLC (“Applicant”), generally used in connection with cannabis products, and the “SMOK” mark owned by Shenzhen IVPS Technology Co. Ltd (“Opposer”), generally used in connection with electronic cigarettes. Shenzhen … Continue reading

Supreme Court to Examine the Reach of the Lanham Act to Impose Liability on Conduct Outside of the United States

Sections 32(1)(a) and 43(a)(1)(A) of the Lanham Act impose civil liability on any person who “use[s] in commerce” a trademark in a manner that “is likely to cause confusion, or to cause mistake, or to deceive.”  15 U.S.C. 1114(1)(a); 15 U.S.C. 1125(a)(1). Notably, the Lanham Act defines commerce broadly as “all commerce which may lawfully … Continue reading

NFTs and IP – Your opportunity to comment

On November 23, 2022, the US Patent and Trademark Office and the US Copyright Office issued a request for public comment on the subject of Non-Fungible Tokens (NFTs) and intellectual property rights. Comments are due by Monday, January 9, 2023. In addition, the Offices will offer three public roundtables:  one panel on NFTs and patents … Continue reading

USPTO shortened office action response deadlines to go into effect in December

Starting on December 3, 2022, the timeframe for trademark applicants to respond to office actions at the U.S. Patent and Trademark Office (“USPTO”) will be shortened from six months to three months. This change is the result of the implementation of the Trademark Modernization Act of 2020 (“TMA”). You can find more information on the … Continue reading

TTAB Refuses to Cancel Harwood’s THE HAPPIEST HOUR Registration

In a precedential decision issued in September, the Trademark Trial and Appeal Board (“TTAB”) denied a cancellation filed by JNF LLC (“JNF”) against Harwood International Inc. (“Harwood”). JNF applied for the mark THE HAPPIEST HOUR and Harwood owns a registration for HAPPIEST HOUR. Both marks are for use in connection with bar and restaurant services. … Continue reading

Are we (virtually) there yet? Waiting for the rise of the metaverse from a brand owner’s perspective

We are now almost one year on from Mark Zuckerberg’s much talked-about October 2021 letter announcing, among other things, the change of the name of his company from Facebook to Meta, reflecting the company’s commitment to revolutionising social connection through virtual reality. Zuckerberg’s expansive vision of a metaverse currently remains more of a fantasy than … Continue reading

Vans secures temporary restraining order barring promotion and sale of Wavy Baby Shoes

In Vans, Inc. v. MSCHF Product Studio, Inc., No. 22CV2156WFKRML, 2022 WL 1446681 (E.D.N.Y. Apr. 29, 2022), shoe company Vans, Inc. (“Vans”) prevailed in obtaining a temporary restraining order and preliminary injunction against art collective MSCHF Product Studio, Inc. (“MSCHF”), restraining promotion and sale of its WAVY BABY shoes. Vans asserted that the WAVY BABY … Continue reading

Modern collegiate trademark and licensing regime may face increased enforcement challenges

In The Pennsylvania State University v. Vintage Brand, LLC, 2022 U.S.P.Q.2d 653 (M.D. Pa. 2022 The Pennsylvania State University (“Penn State”) sued Vintage Brand, LLC (“Vintage”), an online retailer of screen-printed goods featuring logos and images, for violations of federal and state trademark and unfair competition laws. Penn State seeks to restrain Vintage from selling … Continue reading

TTAB prohibits the County of Orange from registering unofficial seal and badge designs

In a recent precedential decision, the TTAB refused registration of two trademark applications by the County of Orange holding that the marks constituted insignia even though they were not official seals.[1] In 2017, the County of Orange, a political subdivision in the state of California, applied for trademark registration of a circular and badge design … Continue reading

TTAB rules RANCHERO and EL RANCHERO marks confusingly similar

In a non-precedential decision, the TTAB held that use of the word and stylized mark EL RANCHERO for “food products made of corn, namely, corn chips, tortillas and tostadas” were confusingly similar to the word and design marks RANCHERO for “cream” and “Mexican style sausages, namely chorizo and bolita.”[1] The dispute over the “Ranchero” marks … Continue reading

PepsiCo wins appeal over MTN DEW RISE ENERGY trademark dispute

PepsiCo. Inc. recently convinced the U.S. Court of Appeals for the Second Circuit to throw out a preliminary injunction granted by a New York federal judge last fall that prevented PepsiCo from using MTN DEW RISE ENERGY on its canned energy drinks.[1] In March 2021, PepsiCo launched MTN DEW RISE ENERGY featuring cans with a … Continue reading

Guidance on Metaverse and NFTs trade marks

On June 23rd, 2022, the European Union Intellectual Property Office (“EUIPO”) published its recommendations regarding the class to be opted for when applying for a trademark designating virtual goods, non-fungible tokens (“NFT(s)”) and other products displayed in metaverse. Considering the increase in the applications containing terms relating to virtual goods and NFTs, EUIPO’s clarifications simplify applicants burden … Continue reading

Québec French Language Law Reform: Upcoming Changes for Businesses

Following a well-publicized debate, on May 24, 2022, the National Assembly of Québec finally passed the Act respecting French, the official and common language of Québec (Bill 96), a major reform of the 1977 Charter of the French Language (the Charter, also known as Bill 101). The Charter sets out language requirements for product packaging, … Continue reading

Overview of IP Law In Canada – The Intellectual Property Review

The recently published Eleventh Edition of the Intellectual Property Review (the Review) includes a Canadian chapter. Readers are invited to learn more on the various forms of IP protection available in Canada, and highlights of important changes in Canadian IP law over the past year. The chapter was authored by members of the Brand Protection Blog team. The chapter … Continue reading

Trade mark ownership: As easy as A-B-C?

Trade mark ownership is an important consideration for any business.  Ensuring that a business holds all rights to enable it to make full use of its trade mark should be front of mind in any branding consideration.  Unfortunately however, while seemingly obvious, the concept of ownership is sometimes overlooked and can be more complex than … Continue reading

Spotify successfully opposes POTIFY applications based on dilution by blurring

In its first precedential decision of 2022, the Trademark Trial and Appeal Board (“TTAB”) sustained two oppositions filed by Spotify AB (“Spotify”) against registration of POTIFY for use in connection with an online ordering platform and community for medical and recreational cannabis consumers to connect with legal marijuana retailers.  Both oppositions were sustained on Spotify’s … Continue reading

Protection for partial products as unregistered Community designs

The European Court of Justice (ECJ) recently ruled on the possibility of claiming protection for a part of a product or a component part of a complex product as an unregistered Community design. The ECJ ruled that protection as an unregistered Community designs is possible if the underlying product itself has been made available to … Continue reading

Canadian Federal Court of Appeal affirms that use of variant was use of Registered Mark

The recent Federal Court of Appeal decision in Geox S.P.A. v. De Luca considered whether modifications to the appearance of a trademark went beyond the scope of the registration.  The Court also highlighted important factors for brand owners to consider when licensing and refreshing a corporate logo. The Use of Variants The Registrar of Trademarks … Continue reading

Trademark protection in France: distinctiveness may result from the addition of an ornamental sign to usual or descriptive language

In a judgment of 17 September 2021, the Paris Court of Appeal has ruled in favour of the validity of the semi-figurative trademark a descriptive verbal element .  The Judges highlighted in particular that, although the expression “vente privée” is a generic and usual designation of the services provided, the addition of a pink butterfly … Continue reading

Choc it out: Lindt’s golden bunny granted trade mark recognition in the EU

It is well-established that a shape or colour alone can function as a trade mark, that is, a badge of origin indicating to consumers the source of the relevant goods or services. However, in practice, achieving the level of ubiquity required to be granted such a trade mark registration can be difficult.[1] It is also … Continue reading

Federal Circuit upholds constitutionality of TTAB judges

This week the Federal Circuit rejected a constitutional challenge to the Secretary of Commerce’s appointment of administrative judges to the Trademark Trial and Appeal Board (“TTAB”) at the U.S. Patent and Trademark Office (“USPTO”). The decision comes on the heels of the Supreme Court’s decision in June in Arthrex v. Smith & Nephew, which stated … Continue reading

Beijing IP Court pilots mediation program for Trademark Office appeals

In response to the rapid increase in the number of trademark prosecution administrative review cases (appeals from the Trademark Office – CNIPA), the Supreme People’s Court issued a Judicial Opinion on “Promoting the Reform of Administrative Litigation Proceedings by Dividing Complicated Cases and Simple Cases ” (the “Opinion”) in May 2021. The Opinion aimed to … Continue reading
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