Tag archives: trademark

Transliterations of Chinese Characters Require a Translation Statement

By Nathan Mannebach (US) on January 30, 2023 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

By Kaylee A. Sill (US) on January 27, 2023 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

By Kirsten Hash (US) on January 25, 2023 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

By Felicia Boyd (US) and Kirsten Hash (US) on January 4, 2023 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

By Felicia Boyd (US) and Meg Tierney (US) on December 7, 2022 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

No Likelihood of Confusion Between “SMOKES & Design” and “SMOK”

By Felicia Boyd (US), Nathan Mannebach (US) and Katie Coopwood (US) on December 2, 2022 Posted in Trademark

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

Supreme Court to Examine the Reach of the Lanham Act to Impose Liability on Conduct Outside of the United States

By Felicia Boyd (US) and Tim Kenny (US) on November 29, 2022 Posted in Intellectual Property, Trademark

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

TTAB Refuses to Cancel Harwood’s THE HAPPIEST HOUR Registration

By Nathan Mannebach (US) on October 4, 2022 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

Vans secures temporary restraining order barring promotion and sale of Wavy Baby Shoes

By Kirsten Hash (US) and Felicia Boyd (US) on September 13, 2022 Posted in Brands, Consumer goods, Trademark

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

CAFC reverses Coca-Cola TTAB win in action involving Indian soda marks

By Felicia Boyd (US) and Nathan Mannebach (US) on August 22, 2022 Posted in General

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

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

TTAB rules RANCHERO and EL RANCHERO marks confusingly similar

By Kaylee A. Sill (US) and Felicia Boyd (US) on August 10, 2022 Posted in Brands, Trademark

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 wins appeal over MTN DEW RISE ENERGY trademark dispute

By Kaylee A. Sill (US) and Felicia Boyd (US) on August 10, 2022 Posted in Brands, Consumer goods, Trademark

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

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

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