Posts in Trademark

VeRO is ebay’s Verified Rights Owner program. VeRO allows a right’s owner (someone who has a verified trademark, copyright, etc.) to request removal of an item. A company by the name of Mad Dogg Athletics, Inc. (MDA) is a member of the eBay VeRO Program and uses this program to enforce the nearly one hundred trademarks it owns, which include: spin, spinning, spinner, spin yoga, spinfitness, and spin daddy. With that said, only MDA’s Spin® bike can be called that, and so my client’s “spin bike” listing was removed due to use of the word spin.

This week in the Federal Circuit Review: (1) Proposed rejections to claims added during Inter Partes Reexamination are not evaluated for substantial new question of patentability (Airbus S.A.S., v. Firepass Corp.); and (2) Likelihood-of-Confusion requires full consideration of strengths and weaknesses of existing mark (Juice Generation, Inc., v. GS Enterprises LLC ).

A North American fondue restaurant franchise found out just how essential terminology management can be when it expanded into Mexico in 2010. A translation service provider previously translated its kitchen training materials into Spanish, specifically for the restaurant’s Spanish-speaking employees in the United States who originally came from various Latin American countries. Company executives thought the Spanish they were currently using would be sufficient for the menu and other materials to be used in Mexico. When the Mexican franchise owners visited the company’s U.S. headquarters, it quickly became clear that one dialect of Spanish is not always the same as another. Different countries have their own dialect with words and phrases unique to each culture.

The British legislation, aimed at curbing demand for cigarettes, requires that all cigarettes be sold in uniform packs with all branding, including colors, logos and other trademarks, removed. Companies are only permitted to print the brand’s name, in a uniform font, size, and location, on the pack, alongside health warnings and deterrent images. Tobacco companies have indicated that they will be left with no choice but to challenge the regulations.

The USPTO defined the term Trademark Bullying as the vexatious practice of a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow. Mirroring the modus operandi exhibited by patent assertion entities and copyright bullies, several creative mark owners have adopted and modified this sue-to-settle paradigm and applied it in the trademark context. In short, trademark trolls—businesses both large and small—aggressively assert rights beyond the scope of trademark protection afforded by the Lanham Act through the issuance of threatening cease-and-desist letters.

Last Wednesday the Eastern District of Virginia issued its opinion and order on cross-motions for summary judgment in Pro-Football v. Blackhorse, the case in which the National Football League (NFL) appealed the Trademark Trial and Appeal Board’s (TTAB) precedential cancellation of the REDSKINS trademark on Lanham Act 2(a) disparagement grounds. The long and short of it is, it didn’t turn out well for the Redskins, who will almost certainly appeal the decision, which affirmed the TTAB’s 2014 cancellation.

Last week the Federal Circuit scheduled oral argument en banc in THE SLANTS trademark case for the morning of October 2, 2015, taking up the question of whether §2(a) of the Lanham Act (15 U.S.C. § 1052(a)) can withstand First Amendment scrutiny. Writing separately after the panel decision, Judge Moore offered 24 pages of “additional views” on the matter, encouraging the Federal Circuit to “revisit McGinley’s holding on the constitutionality of §2(a),” noting that “the protection accorded to commercial speech has evolved significantly since the McGinley decision.”

A recent trend towards compulsory licensing has also raised red flags for many. In March 2012, the Indian Patent Office granted the country’s first compulsory license to a domestic pharmaceutical company for a cancer drug developed by Bayer AG. At a time when India’s economy is climbing to new heights and foreign investors are interested in entering the market, some find the fact that the Indian government would essentially commandeer foreign IP to be threatening.

Japan is not the only economic sector in Asia that has been eking out a strong niche in the global automotive sector. The 2015 Global Automotive Executive Survey released by global auditing firm KPMG reports that the Hyundai/Kia group of South Korea is the auto manufacturing business whose market share was most expected to increase by auto executives. As of 2015, the report shows that Hyundai/Kia holds the fifth-overall ranking for mass market vehicle production. The story of South Korean car makers entering the U.S. market and Korean automobiles on American roadways follows a familiar script. Consumer perceptions give way to a recognition of quality improvements and lower price tags.

Disney holds 2,257 active patents as well as 2,287 trademarks, many of which protect design and character marks for beloved characters like Tinkerbell and Mickey Mouse. One recently acquired trademark protects the use of the standard character mark “ScoreCenter” when used with an electronic scoreboard service for athletic events which is distributed to computers and wireless devices by means of a global computer network. The owner of this trademark is ESPN Inc. but ESPN is a subsidiary of Disney so at the end of the day, this sports entertainment trademark is Disney property.

On May 8th through May 10th, the USPTO will perform maintenance on the following trademark systems.

There’s a commonly held notion that economic success and the professional pursuit of live performance are mutually exclusive. Although stagework might never be a stable job, the upcoming sale of Cirque du Soleil from founder Guy Laliberté to a group led by TPG Capital of Forth Worth, TX, for $1.5 billion should put to rest the idea that there’s no money in theater.

A trademark is the simplest and often the most effective IP protection. A trademark is a broad term that applies to any word, name, symbol or device that manufacturers and merchants use to identify and distinguish goods and services. Trademarks do not have to be registered to use them, but a patent and trademark attorney should register them as soon as possible in all the important market countries as a business expands overseas.

The USPTO today announced the appointment of Meryl Hershkowitz as Deputy Commissioner for Trademark Operations. In her new position, Hershkowitz will oversee the examination and processing of applications throughout trademark operations. Hershkowitz has been one of two group directors for trademark operations of the USPTO for the last seven years. As group director, she led a staff of 10 law offices comprised of more than 200 trademark examining attorneys.

There was a split in the circuit courts as to what effect a TTAB decision will have, and this depends heavily upon where the litigation is happening. The weight of a TTAB decision will vary depending on the jurisdiction, ranging from none at all to complete preclusion. Here, the issue was whether one mark was confusingly similar to another, which the Supreme Court determined was exactly the same as what was being litigated.