Tag archives: intellectual property

Transliterations of Chinese Characters Require a Translation Statement

By Nathan Mannebach (US) on January 30, 2023 Posted in Intellectual Property, Trademark

The Trademark Trial and Appeal Board (“TTAB”) refused registration of the mark “ZHIMA” because the applicant, Advanced New Technologies Co., Ltd., did not submit a translation of ZHIMA into English. In re Advanced New Techs. Co., 2023 TTAB LEXIS 2, 2023 WL 181172 (TTAB Jan. 12, 2023). In the original refusal, the Examining Attorney determined … Continue reading

USPTO Adds 75 Climate and Green-Tech Terms to Trademark ID Manual

By Kaylee A. Sill (US) on January 27, 2023 Posted in Intellectual Property, Trademark

Earlier this month, the United States Patent and Trademark Office (USPTO) announced that it is adding new climate and green tech-related terms to the Trademark ID Manual. The USPTO has already added 75 terms that include biomethane, research and development in the field of wind energy, and treatment of captured landfill gasses. Practically, the addition … Continue reading

The Battle Continues After TTAB Refuses Registration for #LAW for Failure to Function as a Trademark

By Kirsten Hash (US) on January 25, 2023 Posted in Intellectual Property, Trademark

The Trademark Trial and Appeal Board (“TTAB”) refused registration of #LAW on the Principal Register finding that #LAW failed to function as a trademark. Pound Law, LLC (“Pound Law” or “Applicant”) was unable to convince the Board that its vanity phone number functions as a trademark for legal services and legal referral services. In re … Continue reading

TTAB Sustains Opposition Based on Applicant’s Failure to Secure the Consent of a Living Individual

By Felicia Boyd (US) and Kirsten Hash (US) on January 4, 2023 Posted in Intellectual Property, Trademark

Terminal Moraine Inc. (“Applicant” or “Terminal Moraine”) sought registration on the Principal Register of the mark: for the following goods and services: Mystery Ranch, Ltd. (“Mystery Ranch” or “Opposer”) opposed registration of the DANA DESIGN mark based on an alleged false suggestion of a connection with Mystery Ranch and Dana Gleason, Mystery Ranch’s co-owner, under … Continue reading

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

By Felicia Boyd (US) and Tim Kenny (US) on November 29, 2022 Posted in Intellectual Property, Trademark

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

By Felicia Boyd (US) and Susan Ross (US) on November 23, 2022 Posted in Copyright, Intellectual Property, Patents, technology and innovation, Trademark

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

Authorization of certain IP-related transactions in Russia

By Tim Kenny (US) on May 9, 2022 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

By Tim Kenny (US) on May 9, 2022 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

By Kaylee A. Sill (US) on February 22, 2022 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

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

NFTs and Intellectual Property Rights

By Will Garton and Farah Mukaddam (UK) on November 1, 2021 Posted in Ethics, General, Intellectual Property, technology and innovation

Any creative endeavour is in theory capable of being tokenised or “NFT’d”. Record prices are being reached for the sale of non-fungible tokens (NFTs). But what are NFTs? How are they created? Why are they so valuable? What does the buyer own? What rights do they confer? And why should IP lawyers care? Click here … Continue reading

Planning to import chemicals in to Australia from overseas?

By Georgina Hey (AU) and Anthony Brzoska on October 19, 2021 Posted in Consumer goods, Intellectual Property

Australian businesses are increasingly turning to overseas manufacturers to fulfil domestic demand for chemicals and chemical-based consumer products. Year on year, figures show that Australian companies are importing increasing volumes of these products, with some of the strongest performers coming from the domestic fuel, pharmaceutical, and cosmetic sectors of the chemicals-based consumer market. The advantages … 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

Consultation Open for Australia’s Medical and Biotechnology Patent Box

By Jackie O'Brien (AU) on July 13, 2021 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

Late-night law may have big impact on IP owners

By Tim Kenny (US), Alicia Groos (US), Sean Patrick McGinley (US) and Saul Perloff (US) on December 28, 2020 Posted in Copyright, Trademark

In a last minute effort to avoid a government shutdown, on December 21, 2020 Congress passed the Consolidated Appropriations Act, 2021.… Continue reading

China quietly updates its Copyright Law

By Justin Davidson (HK) and Edward Yau (HK) on November 16, 2020 Posted in Copyright, Intellectual Property

On 11 November 2020, the Standing Committee of the National People’s Congress passed the amendments to the China Copyright Law (the Amendments), which will take effect on 1 June 2021. This is the third time the Copyright Law has been amended since it was promulgated in 1990. The first comprehensive amendment took place in 2001, … Continue reading

German Federal Constitutional Court rules on constitutional procedural rights of interim injunction defendants

By Maximilian Schmitz and Tiffany Zilliox on August 21, 2020 Posted in General

The German Federal Constitutional Court has handed down several landmark decisions which strengthen defendant rights in interim injunction proceedings (Federal Constitutional Court decision of 27 June 2020, case no. 1 BvR 1379/20; decision of 3 June 2020, case no. 1 BvR 1246/20; decisions of 30 September 2018, case no. 1 BvR 1783/17 and 1 BvR … Continue reading

Singapore leads the way on promoting its IP Hub

By Justin Davidson (HK) and Jeremiah Chew on June 11, 2020 Posted in General, Trademark

The Intellectual Property Office of Singapore (IPOS) made headlines recently when its Chief Executive, Daren Tang, was appointed as the next Director-General of the World Intellectual Property Organisation with effect from 1 October 2020 (see this link for more information). As Chief Executive of IPOS since November 2015, Daren has earned accolades for several initiatives … Continue reading

Review of sugar labelling a sweet victory for health advocates, and yet more packaging and labelling changes required for business in Australia?

By Georgina Hey (AU) and Emily Hong on September 4, 2019 Posted in General

Shoppers reaching for a sweet, refreshing bottle of soft drink may soon find themselves confronted by the sour reality of 33 small icons of teaspoons – equivalent to the average sugar content of 1.25 litres of soft drink (see here). The Australian and New Zealand Ministerial Forum on Food Regulation (Forum) recently announced a review … Continue reading

Amendment to Chinese Trade Mark Law on bad faith trade mark applications with no intention to use

By Justin Davidson (HK) and Phoebe Poon (HK) on May 15, 2019 Posted in Trademark

Complaints regarding the growth of bad faith trade mark applications in China have been raised for a while now. The existing Trade Mark Law in China does not readily imply bad faith on trade mark applicants with no genuine intention to use. On 23 April 2019, the Standing Committee of the National People’s Congress passed … Continue reading

Are you kicking goals when it comes to social media activity, or heading to the sin bin?

By Rebecca Brenikov (AU) and Alyson Poole (AU) on May 12, 2019 Posted in Advertising, Copyright, General

They say that a picture tells a thousand words. But as became apparent in Australia recently, posting a picture on social media can result in a thousand (derogatory and sexist) words. A photograph posted on Twitter by Seven AFL (taken by photographer Michael Wilson), resulted in Australian female AFLW star, Taylor Harris, hitting all the … Continue reading

Ok Google, Hey Siri, Hi Alexa – have you renewed my trade mark yet?

By Frances Drummond (AU), Alyson Poole (AU), Sophie Lees (AU) and Rebecca Brenikov (AU) on March 18, 2019 Posted in Trademark

With the ever increasing ubiquity of technologies improving everyday tasks in personal life, it is little wonder that such technologies are also offering efficiencies and advantages in the work context. Phrases such as process automation, data mining, machine learning and actionable intelligence are no longer far-out themes, but instead are being used regularly (and with … Continue reading