Tag archives: trademark protection

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

By Felicia Boyd (US) on March 23, 2023 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

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

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

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

Good to know: The US trademark office has a ‘proof of use’ audit program for trademark registrations

By Georgina Hey (AU) and Rebecca Brenikov (AU) on January 11, 2019 Posted in Trademark

The US Patent and Trademark Office (USPTO) requires trademark owners to support their trademark registrations by providing one specimen of use per class, at both 6 years and 10 years after the trademark registration date. So, for instance, if you have a registration covering ‘clothing, footwear and headgear’ in class 25, providing the US trademark … Continue reading

Are tougher days coming for approval of agribusiness certification trademarks in Australia?

By Georgina Hey (AU) and Amanda Caldwell (AU) on November 29, 2018 Posted in Advertising, Trademark

On 22 November 2018 the Australian Competition and Consumer Commission (ACCC) issued its initial assessment of the rules governing use of four certification trade marks in the name of OxoPak Pty Ltd, indicating its intention deny approval for the certification rules, and therefore the trade marks will be denied.… Continue reading

Australian Trademarks Law Review – Edition 2

By Frances Drummond (AU), Sophie Lees (AU) and Isobel Taylor (AU) on November 26, 2018 Posted in Trademark

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

USPTO warns of unauthorized changes to trademark files

By Susan Ross (US) on October 24, 2018 Posted in Trademark

On October 19, 2018, the U.S. Patent and Trademark Office (PTO) posted a general warning on its website that unauthorized changes have been made to “a number” of active trademark applications and registrations. The PTO indicated that the unauthorized changes affect “a small percentage of total applications and registrations.” What can you do? If you … Continue reading

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

By Frances Drummond (AU) and Rebecca Brenikov (AU) on April 6, 2018 Posted in Trademark

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

By Georgina Hey (AU) and Sophie Lees (AU) on March 15, 2018 Posted in Trademark

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

By Frances Drummond (AU) and Isobel Taylor (AU) on February 15, 2018 Posted in Trademark

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

Back to Basics – Australian Trade Mark Law 101

By Frances Drummond (AU) and Sophie Lees (AU) on February 14, 2018 Posted in Trademark

2018 marks the publication of the first Trademarks Law Review from the Law Review series. … Continue reading

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

By Frances Drummond (AU) and Rebecca Brenikov (AU) on January 21, 2018 Posted in Trademark

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

‘Apples, Beatles and four decades of litigation’ – Cautionary tales for start-ups settling on a new brand name

By Georgina Hey (AU) and Isobel Taylor (AU) on October 31, 2017 Posted in Trademark

Apple: the world’s most successful company, with an estimated worth of three-quarters of a trillion dollars. It’s no wonder that would-be tech entrepreneurs around the world are sitting around in black turtlenecks, jeans and New Balance sneakers, poring over Steve Jobs’ biography and trying to work out how they might emulate his success in their … Continue reading

Accept no substitutes – Assignment will not cure defective trade mark filing

By Helen Macpherson (AU) on June 14, 2017 Posted in Trademark

The Full Court of the Federal Court has issued a significant decision in relation to trade mark ownership, which reconfirms the position in relation to the assignment of trade mark applications which have been filed in incorrect applicant names. The decision in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 … Continue reading

Can You Trademark a Hashtag?

By Mayura Noordyke (US) on July 15, 2016 Posted in Trademark

#Yes! In the United States, a hashtag can be trademarked if it serves a source-identifying function for the trademark owner’s goods or services. Hashtags, which started on Twitter as a way for users to follow conversations on particular topics, are words or phrases that follow the pound or hash sign (“#”). Since their inception, hashtags … Continue reading