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
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 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
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
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
The Trademark Trial and Appeal Board (“TTAB”) found that there was no likelihood of confusion between the “SMOKES & Design” mark owned by Fancy Pants Products, LLC (“Applicant”), generally used in connection with cannabis products, and the “SMOK” mark owned by Shenzhen IVPS Technology Co. Ltd (“Opposer”), generally used in connection with electronic cigarettes. Shenzhen … Continue reading
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
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
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
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
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
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. 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
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
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
In a last minute effort to avoid a government shutdown, on December 21, 2020 Congress passed the Consolidated Appropriations Act, 2021.… Continue reading
A trademark infringement suit is not required to show willful infringement as a precondition to a disgorgement of the infringers’ profits.… Continue reading
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
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
The U.S. Patent and Trademark Office (USPTO) has published a new Examination Guide, enacting certain requirements that will go into effect this Saturday, February 15, 2020. Among the new requirements are two important changes. Most significantly, the USPTO will now require all new applications to list an email address for the applicant, even where the … Continue reading
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
Liverpool FC may be making good progress this season, however, off the pitch they have suffered a defeat in a controversial attempt to trademark the word ‘LIVERPOOL’.… Continue reading
Two years after the United States Supreme Court struck down the ban on disparaging trademarks, the Supreme Court has now struck down the Lanham Act’s similar ban on the registration of scandalous and immoral trademarks at the U.S. Patent and Trademark Office. Iancu v. Brunetti, No. 18-302, 588 U.S. _____ (2019). On June 24, 2019, … Continue reading
On May 20, 2019, the US Supreme Court ruled that a licensor’s rejection of a trademark license in bankruptcy does not terminate the licensee’s right to continue using the licensed mark. Mission Product Holdings Inc. v. Tempnology LLC, 587 US __ (2019). The decision brings trademarks into alignment with how patents and copyrights are already … Continue reading