Posts Tagged: "trademark"

The past year has seen the implementation of brand-new trademark legislation, significant analysis of trademark liability for new technologies, renewed focus on the doctrine of initial interest confusion, the transformation of Nikes into “Satan Shoes,” the functionality of chocolate dipped cookies, and the end to a long-running case involving two multi-million dollar jury awards for willful infringement. As 2021 comes to an end, we look forward to what 2022 has in store.

On Friday, December 10, the United States Patent and Trademark Office (USPTO) issued a “Show Cause Order” imposing sanctions against Huanyee Intellectual Property Co., Ltd. and its Executive Director, Yusha Zhang, for violations of the USPTO’s trademark rules of practice relating to improper trademark submissions. The 198-page Order, comprised mostly of an exhibit listing all of the company’s trademark filings, indicates that the Respondents named in the Order “have filed more than 15,000 trademark matters before the USPTO” and “engaged in the unauthorized practice of law, provided false domicile information for applicants, impermissibly entered the signature of the named signatory on declarations and verifications, and violated other USPTO Rules and the USPTO’s website terms of use.”

The MLB baseball team formerly known as the Cleveland Indians has a new name that pays homage to the history of Cleveland. The team last rebranded in 1915, when it left behind its former name, the “Naps” (short for “Napoleons”) in favor of the “Indians.” Now, over a century later, the team has joined other sports franchises in retiring Native American names, mascots, and imagery imbued with negative and racist connotations. With the help of actor and Cleveland Indians fan Tom Hanks, the baseball team announced on July 23, 2021 that it would adopt a new name: the Cleveland Guardians.

Civil processes and procedures in the Brazilian Courts have been increasingly expedited due to the digitalization of case files and the assignment of courts specialized in specific matters (for instance, in corporate and intellectual property law). But the timeframe for judicial disputes involving IP rights in Brazil can be expedited even more for foreign companies by complying with the following procedural requirements.

Is the European trademark system a victim of its own success? This was the question posed by Professor Barton Beebe of NYU School of Law at the Annual Sir Hugh Laddie Lecture at UCL-IBIL on November 9. Beebe argued that “trademark depletion is the most significant challenge the trademark system will face this century” and that, contrary to conventional wisdom,…

The U.S. Patent and Trademark Office yesterday published a final rule implementing the Trademark Modernization Act of 2020 (TMA), which was signed into law as part of the Consolidated Appropriations Act of 2020 last year. The new regulations go into effect on December 18, 2021, except for the implementation of the shorter response period for office actions, which will go into effect on December 1, 2022.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday, November 12, vacated and remanded a decision of the Trademark Trial and Appeal Board (TTAB) that had found Galperti S.r.l (Galperti-Italy) had not committed fraud on the U.S. Patent and Trademark Office (USPTO) in asserting that it had substantially exclusive use of the mark GALPERTI in the five years preceding its registration. The appeal to the CAFC stems from Galperti, Inc.’s (Galperti-USA’s) petition for cancellation based on its own prior use of the same mark, in which the TTAB found that Galperti-USA had demonstrated only insignificant use of the mark and therefore had not proven fraud or falsity on the part of Galperti-Italy. The CAFC cited two legal errors in the TTAB’s analysis that warranted vacatur and remand.

On November 8, the World Intellectual Property Organization (WIPO) released its World Intellectual Property Indicators 2021 report, the latest WIPO annual report to detail global IP filings across patents, trademarks and other forms of IP. As the key findings from the World IP Indicators report show, intellectual property filing activities, especially those related to trademarks, grew during 2020, showcasing a resilient global economy during the COVID-19 pandemic relative to other economic downturns in recent world history. Much of that activity is driven by domestic IP filings within China, which continues to dominate the world in sheer filing numbers across most forms of intellectual property.

The Brazilian Patent and Trademark Office (BPTO) began accepting applications for position trademarks on October 1, 2021. Position marks are trademarks characterized by the particular spot in which they are placed on a product. While position marks were previously acknowledged by the BPTO and by the courts, they had yet to qualify for separate trademark registration; most brand owners registered them as figurative or three-dimensional marks. 

The full Senate Judiciary Committee convened today for a hearing titled, “Cleaning Up Online Marketplaces: Protecting Against Stolen, Counterfeit, and Unsafe Goods,” in which witnesses explained the continuing challenges of policing stolen and counterfeit products in online marketplaces. The panelists included small business owners, internet platform advocates, academics and retail store representatives.

On October 27, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the Trademark Trial and Appeal Board’s (TTAB) cancellation of Brooklyn Brew Shop, LLC’s (BBS) standard character mark and dismissed in part, affirmed in part and remanded the TTAB’s decision regarding the opposition of BBS’s mark. For over 30 years, The Brooklyn Brewery Corporation (Brewery) has used the marks BROOKLYN and BROOKLYN BREWERY in connection with the advertising, promotion, and sale of Brewery’s beer and beer-related merchandise. In 2006, Brewery registered BROOKLYN BREWERY as a federal trademark for beer in class 32.

On October 25, the European Union Intellectual Property Office (EUIPO) issued a study exploring the growing misuse of e-commerce channels for trade in counterfeits. The report provides a quantitative review of both the expansion of Internet commerce as well as a growing number of counterfeit seizures by border officials in recent years. The EUIPO’s report also profiles common aspects of counterfeit supply chains, as well as regulatory frameworks established to reduce the spread of counterfeits online.

In mid-October, a pair of lawsuits were filed in the Eastern District of Virginia by different groups of professional models seeking damages and injunctive relief under the Lanham Act from adult entertainment clubs for the unauthorized use of the models’ images in promotional materials. The filings come at about the same time that the U.S. Supreme Court is considering a petition for writ of certiorari from the U.S. Court of Appeals for the Second Circuit which asks the nation’s highest court whether the Second Circuit was wrong to create a public prominence requirement that prevents lesser known models from being able to assert their rights to their own likeness.

A motion filed on Friday, October 15, with the U.S. Court of Appeals for the Federal Circuit (CAFC) requests that the appellant, Charles Bertini, be allowed to present evidence not of record in order to demonstrate that bias at the Trademark Trial and Appeal Board (TTAB) may have had a negative impact on his case. Bertini owns the mark APPLE JAZZ, which was registered in New York state in 1991 for entertainment services. He began using the mark well before that, in 1985. Unaware that he did not have a federal registration, Bertini filed an opposition against Apple, Inc.’s federal registration for “Apple Music” in 2016, along with an application to register APPLE JAZZ with the USPTO.

A trademark is accorded reputation through its prolonged use and the goodwill it holds in the market where it operates. A trademark is believed to have a reputation when the general public recognizes the product by its mark. The reputation of a well-known trademark knows no bounds, and therefore foreign trademarks with a reputation are accorded protection in India. This concept of trans-border reputation protection follows the principle of universality, which states that once the reputation of a trademark transcends the physical boundaries of the country in which it was registered and gains popularity in other countries as well, it is to be protected in all relevant jurisdictions. Thus, the trademark owner is entitled to protection under the doctrine of passing-off if it can prove that the reputation of its trademark transcended geographical borders by way of promotions, advertisements and media communications.