Posts Tagged: "trademark"

The Trademark Trial and Appeal Board (TTAB or the Board) Rules of Practice will change on January 14, 2017. The new rules will be applicable to all inter partes (oppositions, cancellations, concurrent use) and ex parte appeal proceedings, including those pending on January 14, 2017. The main changes to be aware of are outlined below:

There has not been a single quarter in which more than 82 lawsuits involving allegations of infringing at least one design patent have been filed in U.S. district court going back to the first quarter of 2011… From the start of 2012 through the third quarter of 2016, a full 36.4 percent of design patent actions also include a claim of trademark infringement. In other patent cases, there is only a 2 percent overlap between patent and trademark claims in the same case.

Legislating for tobacco-style plain packages for confectionery is a disproportionate response to the obesity crisis and strips companies of valuable trademarks, writes the Institute of Economic Affairs’ head of lifestyle economics.

‘Plain packaging’ is a policy which eliminates all branding and visual design elements on products and forces manufacturers to use state-mandated colors and typefaces to create homogenized packaging with no differentiating features. Plain packaging is currently only applied to tobacco products in a handful of countries worldwide, but if health activists have their way that will change.

The report indicates that IP litigation in U.S. district courts is declining across the board. During 2016’s third quarter, U.S. district courts received a total of 1,127 new patent infringement suits. This was greater than the 960 patent infringement cases filed in the first quarter of this year but it was also the third smallest docket in a single quarter going back to the fourth quarter of 2011, before the terms of the America Invents Act (AIA) of 2011 went into effect. The third quarter of 2015 saw 1,114 patent litigation filed in U.S. courts, so three of the lowest quarters in terms of patent infringement filings since the AIA have come over the past 15 months.

Trademarks differ from copyrights, which protect original artistic or literary works, and patents, which protect inventions. A trademark primarily protects names, logos or symbols that identify a particular creator of goods or provider of services. More specifically, a trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. In most instances the term “trademark” is simply used to refer to what the law calls either a trademark or a service mark, so do not be surprised if you see a service mark (an example would be Roto Rooter) simply referred to as a trademark by judges, lawyers and business people.

Subsidiaries of larger companies who are preparing to file a trademark application may want to think twice before deciding who to list as the Applicant. In April 2016, The United States Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) issued a precedential decision canceling the trademark registration of a subsidiary because the parent company was the only one using the mark… Given the outcome of this cancellation action, companies with multiple entities should be on alert. Companies should first confirm that the entity actually using and controlling the mark is the one listed on the registration. If not, to avoid cancellation of the trademark, the entities should consider entering into a trademark license or an assignment.

The cover of the October 2010 edition of O prominently features the words “Own Your Power” superimposed over a picture of Oprah. The use of this phrase sparked a trademark infringement case which Oprah has recently defeated on appeal. On September 16th, a panel of judges from the U.S. Court of Appeals for the Second Circuit (2d Cir.) struck down an appeal brought by a party holding trademark rights for the limited use of the phrase “Own Your Power.”

The California state law states that state park concession contracts are prohibited from providing a contracting party with trademark or service mark interests for names associated with a state park venue. Any such contracts offering trademark or service mark interests will be considered void and unenforceable under the terms of this law as of January 1st, 2017. Concessionaires who make a legal claim to trademark rights on names associated with state park resources will be disqualified from further consideration as a bidder on California state park concession contracts.

Based on the question presented in Lee v. Tam, the Supreme Court made clear that its grant of review is only as to the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), but the outcome of this case will affect the other types of marks excluded by Section 2(a), such as marks that may be viewed as immoral or scandalous. Indeed, in a footnote in its en banc decision the Federal Circuit “recognized…that other portions of § 2 may likewise constitute government regulation of expression based on message, such as the exclusions of immoral or scandalous marks….”

William J. Kelly and his television production company RevDigital had secured the trademark rights to “media malpractice.” U.S. Trademark Registration No. 5027942 was issued as a standard character mark to Kelly and it is listed on the Principal Register. It protects the use of the term on entertainment services such as the production and distribution of ongoing television programs in the field of politics, entertainment, media, pop culture, news, commentary, criticism and subjects of general human interest. It also protects the use of “media malpractice” in continuing programs which are delivered by radio, podcast, television, cable, satellite, Internet, mobile or electronic distribution.

The U.S. Supreme Court agreed yesterday to review a Federal Circuit ruling that held unconstitutional a law prohibiting registration of trademarks that “may disparage” people or groups. In a case involving an Asian-American dance band’s bid to register its name THE SLANTS as a trademark, the court will consider whether the bar on registering disparaging marks in Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), violates the First Amendment guarantee of free speech. In the meantime, the Court is expected to rule soon on the Washington Redskins’ cert petition in Pro-Football, Inc. v. Blackhorse, No. 15-1874, challenging a decision of the Eastern District of Virginia upholding the PTO’s cancellation of the REDSKINS trademarks under that same provision.

The USPTO, through its Trademark Trial and Appeal Board (TTAB), denied a standard character mark for “The Slants” to be used with live music performance entertainment on the basis that the term is a highly disparaging reference to people of Asian-American descent. The writ of certiorari was issued for this case after the U.S. Court of Appeals for the Federal Circuit (Fed. Cir.) issued a decision last December in In re Tam, an appeal filed by Simon Tam to overturn the TTAB decision. In that case, the Federal Circuit voted 9-to-3 to vacate the TTAB decision to deny the trademark to Tam because § 2(a) of the Lanham Act was unconstitutional “under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech.” The majority opinion issued by Federal Circuit noted that the First Amendment protects even hurtful speech and that the federal government has offered no legitimate interests justifying § 2(a) of the Lanham Act.

The distinctive character is one of the universally accepted criteria for registration of a sign as a trademark. This criterion is derived from the main function of a trademark, i.e. to distinguish the goods or services of one undertaking from those of other undertakings. This requirement is set out in Article 6quinquies (B) (2) of the Paris Convention for the Protection of Industrial Property and in the national laws of the countries that are parties to this Convention. Ukraine and the European Union (the “EU”) are no exception. Both in Ukraine (Article 6(2) of the Law of Ukraine “On Protection of Rights to Trademarks”) and in the EU (Article 3(1) of the EU Directive to approximate the laws of the Member States relating to trade marks), signs which are devoid of any distinctive character may not be registered as trademarks.

There are a large number of trademarks owned both by the Cubs and by MLB which are being infringed upon, according to the suit. The Cubs want to prevent the sale of goods including indicia associated with the team including famous former players like Ryne Sandberg and Ernie Banks; references to team successes like 1908, the last year in which the Cubs won the World Series; traditions like the “W” flag or “Go Cubs Go”; broadcast personalities; and famous Cubs managers. The Cubs are also looking to block goods depicting Wrigley Field as the Cubs own word and design marks related to the stadium, its iconic marquee and its ivy-covered red brick walls.

A series of 12 trademark applications filed by Black Knight Sports and Entertainment, LLC, the consortium which owns the new NHL franchise, with the U.S. Patent and Trademark Office gives us a good idea of the three team nicknames which have made it to the final round of consideration. According to these trademark applications, the NHL team in Las Vegas will take one of the following names: Silver Knights, Golden Knights or Desert Knights. Interestingly, the Las Vegas franchise cannot use Knights by itself as the team will play in Canada and the Canadian rights to that name are held by the London Knights of the Ontario Hockey League.