Tag archives: trademark

Spotify successfully opposes POTIFY applications based on dilution by blurring

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

Federal Circuit upholds constitutionality of TTAB judges

By Andrea Shannon (US) and Robert Greeson (US) on September 7, 2021 Posted in Patents, Trademark

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

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

Willfulness not required for profits awards in trademark infringement suits

By Tim Kenny (US), Felicia Boyd (US) and Joy Wang (US) on April 24, 2020 Posted in Trademark

A trademark infringement suit is not required to show willful infringement as a precondition to a disgorgement of the infringers’ profits.… Continue reading

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

By Justin Davidson (HK) and Phoebe Poon (HK) on April 17, 2020 Posted in Counterfeiting, General, Trademark

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

By Susan Ross (US) and Tim Kenny (US) on March 31, 2020 Posted in Trademark

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

USPTO adopts new communication and electronic filing requirements

By Alicia Groos (US) and Stephanie Schmidt (US) on February 13, 2020 Posted in Trademark

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

My oh my Myanmar!

By Georgina Hey (AU) and Matt Allen (AU) on February 5, 2020 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

Liverpool FC’s trademark proposal receives a red-card from the UK Intellectual Property Office

By Sally Hughes (UK) and Sophy Lelliott (UK) on October 30, 2019 Posted in Trademark

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

U.S. Supreme Court and “Scandalous” Trademarks

By Andrea Shannon (US) on June 24, 2019 Posted in Trademark

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

Supreme Court settles trademark Circuit split

By Susan Ross (US) and Joy Wang (US) on May 23, 2019 Posted in Trademark

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

Venezuela and US trademark owners

By Susan Ross (US) on March 28, 2019 Posted in Trademark

US owners of patents and trademarks who have registered them in Venezuela find themselves in the unusual position of being prohibited by the US government from paying Venezuela any required fees in the Venezuelan cryptocurrency, the Petro. For more information, please read our Legal Update.… 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

China public consultation on Draft Regulations addressing bad faith trademark applications

By Justin Davidson (HK) and Phoebe Poon (HK) on March 11, 2019 Posted in Trademark

Chinese squatters can easily file applications for trademarks which are identical or similar to foreign brands.… Continue reading

Changes to UK trademark law 2019

By Clare Jackman (UK) on February 14, 2019 Posted in Trademark

On January 14, 2019 new trademark laws came into force in the UK, to implement the EU Trademark Directive 2015/2436.… Continue reading

Brexit: trademarks and designs

By Clare Jackman (UK) on February 14, 2019 Posted in General

It won’t be news to you that there is still a great deal of uncertainty around Brexit and, with the March 29, 2019 looming, we do not yet know if the UK will exit in an orderly fashion (with a deal and with a transition period), obtain an extension of the negotiating period with a view to agreeing terms, crash out without a deal or, reverse the process altogether.… 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

Do not be fooled — Misleading solicitations regarding your trademarks

By Alicia Groos (US) and Stephanie Schmidt (US) on November 30, 2018 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

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

Cryptocurrency and trademarks – a lesson in jurisdiction

By Susan Ross (US) and Kathleen Scott (US) on November 6, 2018 Posted in Trademark

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

Bill C-86 — significant changes to Canada’s IP regime

By Amy Grenon (CA) on November 2, 2018 Posted in Copyright, General, Trademark

The federal government’s recent omnibus budget bill, Bill C-86 tabled October 29th, 2018, proposes significant changes to Canada’s IP laws. Division 7 of the Bill is intended to implement many aspects of the government’s IP strategy announced in April 2018, and targets the Patent Act, the Trade-marks Act, and Copyright Act; provides for a new … 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

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