Tag archives: brand protection

Up in Smoke: TTAB Denies Registration for Cannabis Paraphernalia

Photo of Stephanie Schmidt (US)By Stephanie Schmidt (US) on Posted in Trademark
The Trademark Trial and Appeal Board (“TTAB”) at the United States Patent and Trademark Office (“USPTO”) recently issued a precedential opinion concerning the registration of marks used in connection with goods deemed “drug paraphernalia” under the Controlled Substances Act (“CSA”). The decision, In re Abax Distributing LLC, involved two trademark applications for the mark BAKKED … Continue reading

Yet Another Change Coming Up?  Structural Changes to CNIPA and China’s Potential 5th Amendment to Trademark Law

Photo of Justin Davidson (HK)Photo of James Kwong (HK)By Justin Davidson (HK) and James Kwong (HK) on Posted in Brands, Intellectual Property, Trademark
We are just a few months into 2023, but we are already seeing a number of proposed changes to Chinese Trademark Law.  We wish to draw attention to some of the upcoming structural changes to the China National Intellectual Property Administration (commonly known as CNIPA) and to highlight a few draft amendments to China’s Trademark … Continue reading

The New York Times Company Secures Registration of Six Column Names, Including LIKE A BOSS and THE NEW OLD AGE

Photo of Kaylee A. Sill (US)By Kaylee A. Sill (US) on Posted in Trademark
In a precedential decision, the Trademark Trial and Appeal Board (the “Board”) reversed six refusals to register The New York Times Company’s (the “Times”) names of its newspaper columns, THE NEW OLD AGE, A GOOD APPETITE, HUNGRY CITY, WORK FRIEND, OFF THE SHELF, and LIKE A BOSS (the “Marks”). The Times applied to register the … Continue reading

Three Year Battle Ends with Lizzo Securing Registration for 100% THAT BITCH Mark

Photo of Kaylee A. Sill (US)By Kaylee A. Sill (US) on Posted in Brands, Intellectual Property, Trademark
In a precedential decision, the Trademark Trial and Appeal Board (the “Board”) reversed two refusals to register Grammy-winning singer Lizzo’s 100% THAT BITCH trademarks. Lizzo’s company, Lizzo LLC, applied for two word trademarks in June 2019 for 100% THAT BITCH for various types of clothing after she popularized the phrase in her 2017 hit single … Continue reading

After Years of Hounding from Jack Daniel’s, Supreme Court Agrees to Hear Bad Spaniels Parody Trademark Case

Photo of Felicia Boyd (US)Photo of Meg Tierney (US)By Felicia Boyd (US) and Meg Tierney (US) on Posted in Trademark
The dispute between Jack Daniel’s and VIP Products LLC (“VIP”) over a parody dog toy continues and will finally proceed to the Supreme Court. The case centers around a parody dog toy sold by VIP that mimics the label of a Jack Daniel’s whisky bottle. The toy replaces the text “Jack Daniel’s Old No. 7” … Continue reading

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

Photo of Kirsten Hash (US)Photo of Felicia Boyd (US)By Kirsten Hash (US) and Felicia Boyd (US) on 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

CAFC reverses Coca-Cola TTAB win in action involving Indian soda marks

Photo of Felicia Boyd (US)Photo of Nathan Mannebach (US)By Felicia Boyd (US) and Nathan Mannebach (US) on Posted in General
In Meenaxi Enter. v. Coca-Cola Co., 38 F.4th 1067 (Fed. Cir. 2022) the United States Court of Appeals for the Federal Circuit (“CAFC”) reversed a Trademark Trial and Appeal Board (“TTAB”) decision cancelling two registrations for marks identical to those used outside of the US by The Coca-Cola Company (“Coca-Cola”). In doing so, the CAFC held … Continue reading

Modern collegiate trademark and licensing regime may face increased enforcement challenges

Photo of Felicia Boyd (US)Photo of Kaylee A. Sill (US)By Felicia Boyd (US) and Kaylee A. Sill (US) on 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

Photo of Kaylee A. Sill (US)Photo of Felicia Boyd (US)By Kaylee A. Sill (US) and Felicia Boyd (US) on 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

Photo of Kaylee A. Sill (US)Photo of Felicia Boyd (US)By Kaylee A. Sill (US) and Felicia Boyd (US) on 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

Photo of Kaylee A. Sill (US)Photo of Felicia Boyd (US)By Kaylee A. Sill (US) and Felicia Boyd (US) on 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

Authorization of certain IP-related transactions in Russia

Photo of Tim Kenny (US)By Tim Kenny (US) on Posted in Intellectual Property
The ink was not even dry on the update regarding Russia-related IP issues that we published last week, when we learned of two more major developments. The USPTO recently issued the following statement on engagement with Russia, the Eurasian Patent Organization and Belarus: Per guidance issued by the U.S. Department of State, the United States Patent and Trademark Office … Continue reading

Key current considerations in handling IP rights in Russia

Photo of Tim Kenny (US)By Tim Kenny (US) on Posted in Intellectual Property
February 24, 2022, Russian troops poured over the border into Ukraine, unleashing unimaginable human suffering and widespread destruction of property. Russia’s aggression also ignited negative consequences in the international economy that continue to increase and cascade throughout all sectors and corners of the globe. As companies and other entities struggle to navigate the broader macro-economic … Continue reading

TTAB rules reckless disregard for the truth constitutes fraud

Photo of Kaylee A. Sill (US)By Kaylee A. Sill (US) on Posted in Brands, Consumer goods, Intellectual Property, technology and innovation
In Chutter, Inc. v. Great Management Group, LLC, a precedential decision, the Trademark Trial and Appeal Board (TTAB) held that recklessly false representations made during the course of the trademark application process satisfy the level of intent required to support a finding of fraud before the United States Patent and Trademark Office (USPTO).[1] The TTAB’s … Continue reading

Spotify successfully opposes POTIFY applications based on dilution by blurring

Photo of Felicia Boyd (US)By Felicia Boyd (US) on 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

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

Photo of Frances Drummond (AU)Photo of Isobel Taylor (AU)By Frances Drummond (AU) and Isobel Taylor (AU) on 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

Photo of Andrea Shannon (US)Photo of Robert Greeson (US)By Andrea Shannon (US) and Robert Greeson (US) on 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

Consultation Open for Australia’s Medical and Biotechnology Patent Box

Photo of Jackie O'Brien (AU)By Jackie O'Brien (AU) on Posted in General, Intellectual Property, Patents
On 5 July 2021, the Government released its Discussion Paper setting out the Government’s proposal and seeking views from key stakeholders. The paper will be open for submissions until 16 August 2021.   Now is the opportunity for stakeholders to put forward their suggestions as to what a patent box in Australia should entail. Patent boxes … Continue reading

Government edicts doctrine precludes legislators from claiming copyright protection

Photo of Felicia Boyd (US)Photo of Alicia Groos (US)Photo of Andre Hanson (US)By Felicia Boyd (US), Alicia Groos (US) and Andre Hanson (US) on Posted in Copyright
In a 5-4 decision, the United States Supreme Court held in Georgia et al v. Public.Resource.Org., Inc. (No. 18-1150) (April 27, 2020) that the state of Georgia is not entitled to copyright protection for its official annotated code. The Copyright Act grants expansive rights for “original works of authorship.” 17 U.S.C. § 102(a). Georgia claimed … Continue reading
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