Posts in Trademark

Since June 2011, Denison has served as the Deputy Commissioner for Trademark Operations, where she has been responsible for USPTO trademark application, legal examination and registration processes. She has led outreach to the trademark legal community, small businesses and applicants without legal counsel. Denison will succeed Deborah Cohn, a 31-year veteran of the agency who began her service as Commissioner at the end of 2010 and will retire from the agency at the end of 2014.

Near the end of her presentation Bartow asked a particularly enlightening question. If China can crackdown so thoroughly on its citizens why couldn’t they crackdown on intellectual property infringement and IP crimes? She explained: “Because it isn’t in their interest.” Bartow explained that in the Chinese view it doesn’t make sense to change their view of intellectual property rights because so many within the country are becoming wealthy as a direct result of widespread intellectual property infringement. Bartow ended by saying that as long as this is the view of intellectual property it will be difficult to attract the companies that they really want to attract.

Based on user input, including at a recent roundtable, the USPTO proposes to amend its current practice to permit amendments in limited circumstances to identifications of goods/services based on changes in the manner or medium by which products and services are offered for sale and provided to consumers due to evolving technology if the underlying content or subject matter has not changed. This change in practice takes into account the goal of preserving trademark registrations and applications in situations where technology in an industry has evolved in such a way that amendment of the goods/services in question would not generate a public-notice problem.

n a memorandum decision handed down July 2, 2014, by the U.S. District Court for the Southern District of New York, most of the plaintiff claims in case 7:13-cv-02880, Leason Ellis LLP v. Patent & Trademark Agency LLC have been allowed to proceed in the face of the defendant’s motion to dismiss. The multi-count Federal Complaint filed in April 2013 alleged that the defendants marketed their promotional materials to cause consumers to wrongly believe that it is an official governmental entity. The complaint asserted claims of federal unfair competition under 15 USC 1125(a), federal false advertising under 15 USC 1125(a) and New York statutory law, unfair competition under New York common law, deceptive acts and practices under New York statutory law, and tortious interference with prospective economic relations. The complaint also specifically alleges that the defendants are engaged in the unauthorized practice of law.

While this decision will be widely cheered by many who are concerned with political correctness, there is absolutely no doubt in my mind that from a legal standpoint this decision is clearly wrong… This is not to say that the trademarks in question are not hurtful to some, but the law simply requires direct evidence that the relevant audience, in this case Native Americans, found the term disparaging when the trademarks were actually registered. On this critical question there was simply not competent legal evidence, which is not to say that the term in and of itself isn’t offensive or it hasn’t been used as a racial slur. Based on the appropriate legal standard those things simply are not relevant.

The Supreme Court reversed a decision from the Ninth Circuit that held that within the realm of labeling for food and beverages, a Lanham Act claim asserting that the label is deceptive and misleading is precluded by the Federal Food, Drug, and Cosmetic Act (FDCA). This case arose relating to the belief of POM that claims made by the Coca-Cola Company were misleading with respect to a juice blend sold by Coca-Cola’s Minute Maid division. The juice sold by Coca-Cola prominently displays the words “pomegranate blueberry,” but in truth the product contains only .3% pomegranate juice and only .2% blueberry juice.

The United States Federal District Court for the District of Nevada has dismissed a trademark infringement lawsuit against a foreign Internet poker site in a ruling that signals a rather substantial win for Internet businesses at large… Judge Robert C. Jones granted iBus Media Holdings’ motion for dismissal of Best Odds Corp.’s trademark infringement lawsuit. Judge Jones said the plaintiff failed to make a case that Nevada courts had general jurisdiction over the foreign-based iBus Media, citing the Supreme Court’s recent Daimler AG v. Bauman decision, which Jones said ”clarified that the reach of general jurisdiction is narrower than had been supposed in lower courts for many years.”