Tag archives: trade mark

Supreme Court Considers the Reach of the Lanham Act Outside of United States

Photo of Felicia Boyd (US)By Felicia Boyd (US) on Posted in Trademark
The United States Supreme Court heard arguments on Tuesday, March 21, 2023, on the international limitations, if any, of the Lanham Act. In Abitron Austria GmbH, et al., v. Hetronic International, Inc. (No. 21-1043), the Court heard arguments not only from counsel for the parties, but also the Biden administration, on whether the Lanham Act … Continue reading

A Later-Filed Unattacked Registration Establishes Priority in Board Proceedings

Photo of Felicia Boyd (US)Photo of Nathan Mannebach (US)By Felicia Boyd (US) and Nathan Mannebach (US) on Posted in Trademark
In a precedential decision, The Trademark Trial and Appeal Board (“TTAB”) refused to reconsider its decision sustaining an opposition to registration of the mark “LOVETTE” on the basis of likelihood of confusion with the mark “NNENNA LOVETTE.” Nkanginieme v. Appleton, 2023 TTAB LEXIS 64 (TTAB Mar. 7, 2023). In its request for reconsideration Applicant, Lovette … 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

Do Not Be Fooled (Part 2): USPTO Issues Warning of Spoof Calls from Scammers

Photo of Stephanie Schmidt (US)By Stephanie Schmidt (US) on Posted in General, Trademark
We have written previously on this blog warning of misleading solicitations. For years,  scammers have impersonated the United States Patent and Trademark Office (USPTO) in mailings, seeking payments from trademark owners for nonexistent services, such as trademark renewals. This week, the USPTO warned of a new scheme targeting trademark owners. The USPTO put out an … Continue reading

Transliterations of Chinese Characters Require a Translation Statement

Photo of Nathan Mannebach (US)By Nathan Mannebach (US) on 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

Photo of Kaylee A. Sill (US)By Kaylee A. Sill (US) on 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

Photo of Kirsten Hash (US)By Kirsten Hash (US) on 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

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

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

TTAB Refuses to Cancel Harwood’s THE HAPPIEST HOUR Registration

Photo of Nathan Mannebach (US)By Nathan Mannebach (US) on 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

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

Beijing IP Court pilots mediation program for Trademark Office appeals

Photo of Justin Davidson (HK)Photo of Phoebe Poon (HK)Photo of Emma QianBy Justin Davidson (HK), Phoebe Poon (HK) and Emma Qian on 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

Proactive Trademark Registration Strategy Can Prevent Costly Customs Issues in China

Photo of Justin Davidson (HK)Photo of Phoebe Poon (HK)By Justin Davidson (HK) and Phoebe Poon (HK) on 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

Bacardi Must ‘Gin and Beer It’ In Failed Trade Mark Opposition Proceeding

Photo of Frances Drummond (AU)Photo of Vicky Zhang (AU)By Frances Drummond (AU) and Vicky Zhang (AU) on Posted in Trademark
The decision of Bacardi & Company Limited v Dickinson Distribution Group Pty Ltd [2020] ATMO 117 (1 July 2020) confirms the acceptance of the similarity between goods in classes 32 and 33, and in particular accepts that gin is similar to beer. Hence, it is vitally important for owners of marks registered in classes 32 … Continue reading

Manufacturing in China? Chinese courts confirm the benefits of seeking local registered protection

Photo of Georgina Hey (AU)Photo of Henry YuanBy Georgina Hey (AU) and Henry Yuan on Posted in Trademark
Putting aside some recent COVID-related bumps in the road, China remains the world’s largest manufacturer. A large portion of its manufacturing consists of original equipment manufacturing (OEM) under contract. OEM involves manufacturing goods intended for export only, and not for sale domestically in China. This business model has solidified China as a critical manufacturing hub … Continue reading

Implementation of the Madrid Protocol in Hong Kong

Photo of Justin Davidson (HK)Photo of Phoebe Poon (HK)By Justin Davidson (HK) and Phoebe Poon (HK) on Posted in General, Trademark
On 19 June 2020 Hong Kong gazetted the Trade Marks (Amendment) Ordinance, paving the way for the application of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) in Hong Kong.  This follows on from the outcome of a public consultation conducted back in 2014. Currently, there are 106 … Continue reading

Singapore leads the way on promoting its IP Hub

Photo of Justin Davidson (HK)Photo of Jeremiah ChewBy Justin Davidson (HK) and Jeremiah Chew on 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

My oh my Myanmar! 

Photo of Georgina Hey (AU)Photo of Matt Allen (AU)By Georgina Hey (AU) and Matt Allen (AU) on Posted in Trademark
The Myanmar government has recently flagged its intention to implement new trade mark laws commencing mid-2020. This is good news for global brand owners hoping for Myanmar’s laws to be better aligned to international trade mark standards. However, brand owners must take positive steps to ensure that their trade marks remain protected under the new … Continue reading

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

Photo of Justin Davidson (HK)Photo of Phoebe Poon (HK)By Justin Davidson (HK) and Phoebe Poon (HK) on 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

Do not be fooled — Misleading solicitations regarding your trademarks

Photo of Alicia Groos (US)Photo of Stephanie Schmidt (US)By Alicia Groos (US) and Stephanie Schmidt (US) on Posted in Trademark
Misleading trademark solicitations are becoming an epidemic. Trademark owners beware! If you have registered a U.S. federal trademark, you may know that you must periodically make certain filings to maintain or renew your registration. For most post-registration maintenance filings, there is a one-year window in which to make the filing and a six-month grace period … Continue reading
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