Posts in Trademark

Color, Sneakers, Parody, AI and the ‘F’ Word: It’s Already Been Quite a Year for Trademarks

It has already been quite a year in the world of U.S. trademark practice. If you manufacture a highly colorful product, are the owner of a well-known trademark, are an AI start-up company or are testing the waters as to whether a certain, unsavory word is protectable, pay attention to developments that have happened in just the first half of 2024.

SCOTUS Reverses CAFC’s ‘TRUMP TOO SMALL’ Ruling: Names Clause is Constitutional

The U.S. Supreme Court has reversed the U.S. Court of Appeals for the Federal Circuit’s 2022 decision in Vidal v. Elster, which held the U.S. Patent and Trademark Office’s (USPTO’s) application of Section 2(c) of the Lanham Act to reject the mark TRUMP TOO SMALL was unconstitutional. The High Court today held that the Lanham Act’s names clause does not violate the First Amendment. While all of the justices agreed that the names clause does not violate the First Amendment, they differed on the proper analysis to reach that conclusion.

APPLE JAZZ Owner Pursues Cancellation of APPLE Mark for Entertainment Services in District Court

On June 7, professional trumpet player Charles Bertini filed a lawsuit in the Northern District of California seeking the cancellation of trademark rights owned by consumer tech giant Apple covering the use of the company’s name in connection with entertainment services. Bertini’s lawsuit is the latest effort in his nearly decade-long battle to obtain a federal trademark registration for APPLE JAZZ, a mark which Bertini has used to market live entertainment since 1985.

High Court Rejects Bid for Clarity on Trademark Confusion

The U.S. Supreme Court today denied certiorari in Relish Labs v. GrubHub, Inc., a case that asked the Court to review a U.S. Court of Appeals for the Seventh Circuit decision that held Relish Labs LLC and the Kroger Company (who own the “Home Chef” brand and mark) had not proven consumers were likely to confuse their marks with Grubhub and’s logo. Relish Labs petitioned the Court in January of this year.

Publishing Companies Say Google is Liable for Promoting Pirated Textbooks

Several major educational publishing companies, including Macmillan, Elsevier and McGraw Hill, have sued Google in a New York district court alleging contributory and vicarious copyright infringement, trademark infringement and violations of New York’s General Business Law. The companies claim that Google’s search engine is facilitating infringement by promoting pirate sites that sell heavily discounted versions of educational textbooks.

INTA Backs NIGHTWATCH Decision on ‘Conversion’ of EUTMs

The International Trademark Association (INTA) filed an amicus brief on June 1 with the European Union Intellectual Property Office (EUIPO) Grand Board of Appeal supporting the Fourth Board of Appeal’s 2022 approach to conversion of EU Trade Marks (EUTMs). The underlying case relates to the EUIPO’s decision in February 2022 to for the first time refer questions of legal interpretation of the EU Trade Mark Regulation (EUTMR) to the enlarged Board of Appeal.The EUIPO’s Executive Director, João Negrão, asked the Grand Board of Appeal to weigh in on five questions concerning the practice of “conversion,” which allows an EU Trade Mark (EUTM) application or registration to be converted into one or more national applications when necessary.

Should Kellogg’s be Frosted by Seinfeld’s ‘Unfrosted’?

“Unfrosted,” Jerry Seinfeld’s unauthorized (and totally made up) history of Pop Tarts, dropped on Netflix on May 3, 2024, to mixed reviews and 7.1 million viewers in its first week. Many of those who watched probably assumed Seinfeld had Kellogg’s permission to use the Pop Tarts trademark – such is the success that brand owners have had in convincing the public of the brand owners’ exclusive control over their marks. However, brand owners do not have control over all uses of their marks.

Noncompetitor Critics Aren’t Trademark Infringers: It’s Time for the Law to Make that Explicit

Can you spot criticism? An environmental group calls out an oil company over emissions. A union calls out a corporation over labor practices. A human rights group calls out the prison system. Criticism—straightforward enough. Some corporations, however, worry that some people won’t understand. They worry that consumers might think that the targeted corporations actually support the criticism. For example, consumers might think that Corporation X supports a labor union website that shows Corporation X’s logo and the phrase, “Corporation X must improve wages and working conditions!”

Federal Circuit Says Minority Ownership Interest Isn’t Enough for Standing to Seek Trademark Cancellation

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday, May 23, affirmed a Trademark Trial and Appeal Board (TTAB) decision that found a party with only a minority ownership interest in the owner of allegedly infringed marks did not have standing to seek cancellation of the marks. The decision was precedential and authored by Judge Lourie.

Chestek Takes Challenge of USPTO Domicile Address Rule for Trademark Applicants to High Court

On May 13, trademark law firm Chestek PLLC filed a petition for writ of certiorari asking the U.S. Supreme Court to take up a challenge to the U.S. Patent and Trademark Office’s (USPTO) promulgation of rules requiring trademark applicants to disclose their domicile address to the agency. According to Chestek’s petition, the Federal Circuit’s lower ruling improperly reads the agency’s notice-and-comment requirement for all general rulemaking out of the relevant statute, here resulting in the unwanted disclosure of sensitive personal information that could put certain trademark applicants at risk of stalking or abuse.

USPTO Proposes National Strategy to Incentivize Inclusive Innovation

The United States Patent and Trademark (USPTO) today announced a “National Strategy for Inclusive Innovation” in advance of a World IP Day event being held on Capitol Hill.  The Strategy was developed with support from the Council for Inclusive Innovation (CI2) and, according to a USPTO press release, “aims to lift communities, grow the economy, create quality jobs, and address global challenges by increasing participation in STEM, inventorship and innovation among youth and those from historically underrepresented and underresourced communities.”

CAFC Affirms TTAB’s Refusal to Register Hair Products Mark Due to Opposer’s Prior Use

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential trademark decision affirming a Trademark Trial and Appeal Board (TTAB) ruling that sustained Framboise Holdings, Inc.’s opposition and refused registration of Jalmar Araujo’s mark #TODECACHO. Framboise alleged ownership of the pictured design mark (left) based on prior use of the mark in the United States in connection with hair products, including shampoo, conditioner, hair mask treatments, hair cream, curly hair activator, hair jelly, etc. When Araujo applied to register U.S. Trademark Application Serial No. 88/712823 #TODECACHO as a standard character mark for hair combs, Framboise opposed.

Tenth Circuit Reworks Opinion on Extraterritorial Reach of Lanham Act as Per SCOTUS

The U.S. Court of Appeals for the Tenth Circuit issued a revised opinion on Tuesday in the case of Abitron v. Hetronic, which was on remand from the Supreme Court’s June 2023 decision vacating a $96 million damages award for Hetronic. The Court ruled last year that Sections 1114(1)(a) and 1125(a)(1) of the Lanham Act are not extraterritorial in nature and that “‘use in commerce’ provides the dividing line between foreign and domestic applications of these provisions.” The underlying case involved Hetronic’s radio remote controls, which are used to operate heavy-duty construction equipment, such as cranes. Abitron et. al. began manufacturing and selling the products primarily in Europe under the Hetronic brand and continued to do so following the termination of their distribution agreements with Hetronic.

EUIPO Implements Common Practice on Objectionable Trademarks

On April 19, the European Union Intellectual Property Office (EUIPO) formally began implementation of Common Practice 14 (CP14) governing the agency’s treatment of applications of trademarks that are contrary to public policy or accepted principles of morality. The EUIPO’s common communication on CP14 seeks to establish a uniform understanding of the EU Trademark Directive’s prohibitions against registering such marks in light of increased numbers of trademark applications filed that have arguably triggered this statute.

Timberland Loses Fourth Circuit Bid to Protect Trade Dress for Iconic Boots

The U.S. Court of Appeals for the Fourth Circuit on Monday rejected Timberland’s bid to protect its popular boot design. The court explained that the district court did not err in finding that the company failed to prove the design had acquired distinctive meaning…. According to Monday’s ruling, the boot’s design lacks “a distinctive meaning” that identifies them as Timberlands. While the brand’s distinct tree logo remains protected under the Lanham Act, the boot’s design falls short of being “distinguishable” enough to earn the same protection.

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