Tag archives: trademarks

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

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

TTAB prohibits the County of Orange from registering unofficial seal and badge designs

By Kaylee A. Sill (US) and Felicia Boyd (US) on August 15, 2022 Posted in Trademark

In a recent precedential decision, the TTAB refused registration of two trademark applications by the County of Orange holding that the marks constituted insignia even though they were not official seals.[1] In 2017, the County of Orange, a political subdivision in the state of California, applied for trademark registration of a circular and badge design … 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In a non-precedential decision, the TTAB held that use of the word and stylized mark EL RANCHERO for “food products made of corn, namely, corn chips, tortillas and tostadas” were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

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

A Generic Word Combined With “.Com” Can Create A Protectable Trademark

By Felicia Boyd (US) and Andrea Shannon (US) on July 8, 2020 Posted in Trademark

In United States Patent And Trademark Office, Et Al., v. Booking.Com B. V. (No. 19-46, Jun. 30, 2020), the Supreme Court held that the combination of a generic term with “.com”—referred to as a “generic.com term”–could be a protectable trademark. Booking.com, an enterprise that maintains a travel-reservation website by the same name, sought federal registration … 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

Save before Canada gets “nice and classy” with its fees: File and renew early!

By Karen MacDonald (CA) on February 27, 2019 Posted in Trademark

As Canada is finally adhering to the Nice Classification system, one of the most significant changes that trademark owners will notice is that government fees for filing and renewal will go up – significantly for some!… Continue reading

Catching up with nationals: Proposal to allow divisional applications for International registrations designating Australia

By Rebecca Brenikov (AU) and Amanda Caldwell (AU) on February 1, 2019 Posted in Trademark

In January 2019, IP Australia released a draft of proposed amendments to the Trade Marks Regulations 1995 for public consultation.… 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

Canada: Further trademark amendments are here — Bill C-86 is given Royal Assent

By Amy Grenon (CA) on December 18, 2018 Posted in Copyright, Trademark

Canada’s core IP statutes have been amended by Bill C-86, which received Royal Assent as the Budget Implementation Act, 2018, No. 2, SC 2018, c 27 on December 14, 2018. The final version of the legislation includes amendments to the Trade-marks Act that are substantially identical to the version that received first reading on October … 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

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

Cybersquatters – How to protect your brand from unwanted ‘guests’ online

By Georgina Hey (AU) and Rebecca Brenikov (AU) on March 9, 2018 Posted in Advertising, Trademark

The internet is now the normal conduit for everyday personal, commercial and social transactions. It is more important than ever to ensure that your consumers know where to find your business online, and that no third parties are seeking to trade off your reputation in the online space. Domain names are the primary form of … 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

IP funding opportunities to take your start-up to the next level

By Georgina Hey (AU) and Isobel Taylor (AU) on November 27, 2017 Posted in Trademark

As all start-ups know, having a great idea is important, but it’s not enough to ensure your idea gets off the ground – and stays there! The sad reality is that the vast majority of start-ups are destined for failure: for every Facebook, Uber and Airbnb, there are many more whose names you’ve never heard … 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

The Slants Win: SCOTUS rules “Disparaging” trademark provision unconstitutional

By Andrea Shannon (US), Saul Perloff (US) and Andre Hanson (US) on June 20, 2017 Posted in Trademark

On June 19, 2017, the United States Supreme Court issued a much-anticipated decision, holding that the so-called “disparagement clause” of the Lanham Act is an impermissible restriction on free speech under the First Amendment. The ruling is the culmination of years of litigation, and clears the way for Simon Shiao Tam and the Slants to … Continue reading

What’s in a name? How to protect yourself if your name is your personal brand

By Alyson Poole (AU) and Isobel Taylor (AU) on March 22, 2017 Posted in Advertising, Trademark

Cher, Prince, Oprah, Bono – all of these celebrities have one thing in common – the capacity to be recognised by nothing more than a single name. For businesses which are built on the success of a personal brand, a name can be a crucial component of being recognised by consumers. But the question remains: should … Continue reading

Productivity Commission’s Report on Australia’s IP system

By Georgina Hey (AU) on March 7, 2017 Posted in Advertising, Trademark

The Inquiry Report into Intellectual Property Arrangements recently published by the Productivity Commission (Report) argues that Australia’s IP system is weighted too heavily in favour of rights holders and against the interests of the broader community. It has made various recommendations to correct this perceived imbalance. This article considers some of the recommended changes which, … Continue reading