Tag archives: trademarks

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

NFTs and IP – Your opportunity to comment

By Felicia Boyd (US) and Susan Ross (US) on November 23, 2022 Posted in Copyright, Intellectual Property, Patents, technology and innovation, Trademark

On November 23, 2022, the US Patent and Trademark Office and the US Copyright Office issued a request for public comment on the subject of Non-Fungible Tokens (NFTs) and intellectual property rights. Comments are due by Monday, January 9, 2023. In addition, the Offices will offer three public roundtables: one panel on NFTs and patents … 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

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