Tag archives: trademark infringement

Taco Bell Petitions to Cancel TACO TUESDAY Trademarks at U.S. Trademark Office

Almost everyone has probably heard of “Taco Tuesday.” Ads, local restaurants, celebrities—they use this popular slogan to refer to the idea that it is fun to eat tacos on Tuesdays. But although this phrase is used by many, two restaurant companies actually own TACO TUESDAY trademark registrations that they can assert as conclusive evidence of … Continue reading

Don’t Mess With the (Aaron) Judge

In a precedential decision, the Trademark Trial and Appeal Board (“TTAB”) found a likelihood of confusion between the applied-for marks sought by Applicant, Michael P. Chisena, and the common law rights owned by Opposers, Major League Baseball Players Association (“MLBPA”) and Aaron Judge (“Judge”). Major League Baseball Players Ass’n v. Chisena, 2023 U.S.P.Q.2D 444, 2023 … Continue reading

Apple’s Tacking Attempt in Trademark Opposition Hits a Sour Note

On April 4, in Bertini v. Apple Inc., the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) clarified the limitations of tacking and its application in establishing priority in trademark disputes. This case sets an important precedent for tacking use of a mark in the trademark registration context and highlights the limitations of … Continue reading

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

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

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

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

Transliterations of Chinese Characters Require a Translation Statement

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

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

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

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

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

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

Could the use of Punitive Damages be the way forward in China?

In September 2019, the Shanghai Pudong District People’s Court awarded triple punitive damages to Balanced Body Inc., which according to the Shanghai government news report was the first such award for a Shanghai Court to a foreign plaintiff. Background Balanced Body is a provider of Pilates equipment and education and holds PRC trade mark registrations … Continue reading

Trademarks, Internet sales, and personal jurisdiction

On February 10, 2020, the Seventh Circuit federal appeals court ruled that an Illinois-based seller of dietary supplements could maintain a federal Lanham Act and Illinois state law claims against a California-based competitor that had only an online presence, and no physical presence in Illinois. (Curry v. Revolution Laboratories, LLC, 949 F,3d 385 (7th Cir. … Continue reading

Australian Trademarks Law Review – Edition 2

2018 marked the publication of the first Australian Trademarks Law Review from the Law Review series. The Law Review collates cross-border legal insights and analysis across a range of practice areas and is a useful resource for in-house counsel of global organizations. Following the publishing of the first edition of the Australian chapter of 2018 … Continue reading

Cryptocurrency and trademarks – a lesson in jurisdiction

On October 22, 2018, a federal trial court in Manhattan granted web services conglomerate Alibaba Group Holding Limited’s request for a preliminary injunction against several defendants that were offering cryptocurrency for sale, under the name “AlibabaCoin.” (Alibaba Group Holding Ltd. v. Alibabacoin Foundation, No. 18-CV-2897 (JPO) (S.D.N.Y. Oct. 22, 2018) Although neither Alibaba nor any … Continue reading

Amended Australian IP laws receive Royal Assent with little fanfare

On 24 August 2018, the creatively named Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 quietly received Royal Assent, with some parts of the new Act entering into force the following day. As the name indicates, the primary focus of the new legislation is to implement the recommendations made … Continue reading

Changes proposed regarding parallel imports – An exhausting concept for Australian trade mark owners?

In this article, we consider; the changes to the Trade Marks Act proposed in respect of parallel imports which the Draft Explanatory Memorandum states are aimed at ensuring that the law “better meet[s] the objective of facilitating the parallel importation of goods into Australia to the benefit of consumers by limiting the strategic use of … Continue reading

The European Commission has its say: EU trade marks post-Brexit

On 28 February 2018, the European Commission released its draft withdrawal agreement setting out a proposal on the arrangements for the withdrawal of the UK from the EU (Withdrawal Agreement). The full text of the Withdrawal Agreement can be viewed here: European Commission’s Draft Withdrawal Agreement dated 28 February 2018 (see Title IV on Intellectual … Continue reading

Shocking your clients just became passé: US Court takes away the edge from scandalous brands

Thanks to two recent rulings of the US Supreme Court and the Court of Appeals of the Federal Circuit Court, trade marks containing “disparaging”, “immoral” and “scandalous” matter are no longer barred from obtaining registration in the United States of America. In the past, the US Patent and Trade Mark Office (USPTO) had the power … Continue reading

Trade mark update: 11th Edition of the Nice Classification came into force on 1 January 2018

As many of you will know, the Nice Classification is the international system used to classify goods and services for trade mark purposes. The World Intellectual Property Office regularly updates and amends the Nice Classification in order to ensure that the lists remain current and include new products and services that come to market. On … Continue reading

Important benefits for Canadian trademark registrations

While Canadian trademark owners can enforce their rights without obtaining a registration, there are a number of significant advantages to registering a trademark in Canada, including: The Right to the Exclusive Use of the Mark in Canada. Section 19 of the Trademarks Act gives the owner of a registered trademark the exclusive right to use … Continue reading

Copyrightability of private standards in federal regulations

On February 2, 2017, a federal trial court judge in Washington, D.C. ruled, in a 55-page opinion, that private standards developing organizations (“SDOs”) do not lose their copyright or trademark protection if a federal regulation adopts their standards. Background This case, American Society for Testing and Materials v. Public.Resource.Org, Inc., Case. No. 13-cv-1215 (TSC) (D.D.C. … Continue reading
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