Topic: Trademark

TTAB Refuses to Cancel Harwood’s THE HAPPIEST HOUR Registration

By Nathan Mannebach (US) on October 4, 2022 Posted in Trademark

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

“Non-Fungible” Realities – NFTs Enter the USPTO’s Trademark ID Manual

By Felicia Boyd (US) on October 4, 2022 Posted in Trademark

** This article was drafted by Chris R. Andersen, a Senior Paralegal in NRF’s Dallas Office. Chris is supervised by attorneys who are licensed in the State of Texas. Thanks in large part to a Bored Ape the U.S. Trademark Office is trying to help brand owners keep up with the ever-evolving labyrinth of brand … Continue reading

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

By Georgina Hey (AU) and Isobel Taylor (AU) on September 29, 2022 Posted in Brands, Consumer goods, Intellectual Property, Patents, technology and innovation, Trademark

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

By Kirsten Hash (US) and Felicia Boyd (US) on September 13, 2022 Posted in Brands, Consumer goods, Trademark

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

By Felicia Boyd (US) and Kaylee A. Sill (US) on August 22, 2022 Posted in Trademark

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

By Kaylee A. Sill (US) and Felicia Boyd (US) on August 15, 2022 Posted in Trademark

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

By Kaylee A. Sill (US) and Felicia Boyd (US) on August 10, 2022 Posted in Brands, Trademark

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

By Kaylee A. Sill (US) and Felicia Boyd (US) on August 10, 2022 Posted in Brands, Consumer goods, Trademark

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

Hermès Challenge of “MetaBirkin” NFTs to Continue

By Felicia Boyd (US) and Abida Chaudri on July 18, 2022 Posted in Trademark

In a case that is likely to provide much awaited guidance on the application of trade mark law to non-fungible tokens (NFTs), luxury design house Hermès International and Hermès of Paris, Inc. (Hermès) is suing artist Mason Rothschild in the U.S. District Court for the Southern District of New York for trademark infringement and dilution, … Continue reading

Guidance on Metaverse and NFTs trade marks

By Clément Monnet and Eloïse Patocki-Tomas on July 14, 2022 Posted in Brands, Trademark

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

By Catherine Daigle (CA) and Fortunat Nadima Nadima on May 26, 2022 Posted in Advertising, Brands, Trademark

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

By Kristin Wall (CA) and Caroline Henrie (CA) on May 18, 2022 Posted in Copyright, Trademark

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?

By Alyson Poole (AU) on March 28, 2022 Posted in Brands, Enforcement, Intellectual Property, Trademark

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

By Felicia Boyd (US) on February 9, 2022 Posted in Brands, Copyright, Intellectual Property, Trademark

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

By Manuel Merling (DE) and Daniel Marschollek (DE) on January 12, 2022 Posted in Brands, General, Trademark

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

By Christopher Wilson and Kevin Bushell on October 13, 2021 Posted in Brands, Intellectual Property, Trademark

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

By Clément Monnet on October 4, 2021 Posted in Brands, Trademark

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

By Frances Drummond (AU) and Isobel Taylor (AU) on September 15, 2021 Posted in Trademark

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

By Andrea Shannon (US) and Robert Greeson (US) on September 7, 2021 Posted in Patents, Trademark

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

By Justin Davidson (HK), Phoebe Poon (HK) and Emma Qian on September 7, 2021 Posted in Brands, General, Intellectual Property, Trademark

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

IP Report 2021

By Georgina Hey (AU) and Maxine Richard on July 22, 2021 Posted in General, Intellectual Property, Trademark

We would like to acknowledge the contributions of Rex Lee and Amy O’Brien in preparing this blog. Intellectual Property (IP) Australia published their 9th annual edition of the Australian IP Report (the IP Report) on 29 April 2021. The IP Report, available here, offers a general overview of the current Australian IP climate. It outlines … Continue reading

Proactive Trademark Registration Strategy Can Prevent Costly Customs Issues in China

By Justin Davidson (HK) and Phoebe Poon (HK) on July 2, 2021 Posted in Brands, Intellectual Property, Trademark

Although it is not strictly necessary to file for a trade mark registration before using a mark, there are significant advantages to securing trademark protection, particularly in a company’s primary markets. Amongst other benefits, a trademark registration gives the owner the exclusive right to use that mark in association with the goods and services covered … Continue reading

Zooming in on generic trademarks

By Caroline Henrie (CA) on June 22, 2021 Posted in Consumer goods, Trademark

Over the course of the last year Zoom became one of the most frequently used words. Due to its popularity, Zoom has been used as an adjective (“I’m hosting a Zoom trivia night”), a verb (“I’m Zooming”) and a noun (“I have a 9 am Zoom”). In the more recent months of the pandemic, expressions … Continue reading

Amazon’s 2020 Brand Protection Report – What Brand Owners Need to Know

By Sarah Pennington on May 27, 2021 Posted in Advertising, Brands, Counterfeiting, General, Intellectual Property, Trademark

On May 10, 2021, Amazon released its 2020 Brand Protection Report (the Report), the first of its kind published by the e-commerce giant. The Report offers insight into Amazon’s brand protection approach and efforts over the past year, including proactive controls, brand tools, and consequences for “bad actors”. With a growing number of fraudsters cropping … Continue reading