Posts Tagged: "trademark"

The U.S Court of Appeals for the Federal Circuit (CAFC) on Tuesday vacated and remanded a decision from the Trademark Trial and Appeal Board (TTAB) based on an incorrect application of the DuPont factors in determining the likelihood of confusion of a famous mark. Bureau National Interprofessional du Cognac (“the Bureau”), the union that oversees the production of COGNAC spirits, and Institut National des Appellations d’Origine, an administrative agency within the French government, filed an opposition to a trademark application for COLOGNE & COGNAC ENTERTAINMENT (“the Applicant”), a hip-hop label.

X Corp., formerly known as Twitter Inc., was hit with another trademark infringement lawsuit last week out of the Northern District of California. The plaintiff, DB Communications LLC d/b/a Multiply, sued X Corp., claiming trademark infringement under the Lanham Act, among other claims, based on its use of the ‘X’ trademark. 

The conventional wisdom given to burgeoning designers is never to name your brand after yourself. Yet designers rarely heed that advice, hoping to capitalize on the cache associated with their names when they are first starting out, and then selling the exclusive rights to use their names to larger companies, especially those with a portfolio of other brands under their belts. While this is a tale as old as time in the fashion industry (just ask Gucci, Kate Spade, Tom Ford, and Paul Frank), the recent settlement between JLM Couture, a multi-label bridal house, and Hayley Paige Gutman, a fashion designer and social media influencer, tells a different story.

The Summer Olympics starts in just a few days, and with it comes a flurry of cease-and-desist letters from the U.S. Olympic Committee (USOC). The Olympics benefits from extra special trademark protection here in the United States. Unlike in other countries, the federal government does not fund Team USA, so our athletes mostly rely on sponsorship dollars to compete. When advertisers use the Olympics brand without authorization, the USOC views this as a loss of sponsorship dollars.

After filing 13 lawsuits in 2023 claiming trademark infringement, deceptive trade practices, and false advertising related to the pharmaceuticals Ozempic and Wegovy, Novo Nordisk—a 100-year-old pharmaceutical company with its origins in Denmark—is once again making headlines.  Over the past few weeks, Novo Nordisk filed nine new lawsuits against small clinics, medical spas, and compounding pharmacies, alleging false advertising and trademark infringement. The company has also sent numerous cease and desist letters to similar businesses accusing them of trademark infringement and false advertising.

The first half of 2024 has been a significant one for IP in Europe. This article does not attempt a comprehensive review of all IP developments across Europe in 2024, not least because the detail of the Unified Patent Court’s (UPC’s) decisions and operations are outside the scope of the article. The first half of the year yielded some significant early jurisprudence in the UPC, including the first appellate decisions on preliminary injunctions, claim construction, access to documents and opt-outs. The profile of the new court’s users has also evolved with significant increases in filings made by pharma companies and by NPEs. Likewise, the proportion of requests for Unitary Patents (which may be enforced only in the UPC) rose.

On Monday, June 24, the U.S. Supreme Court granted the petition for writ of certiorari filed in Dewberry Group, Inc. v. Dewberry Engineers Inc., taking up an appeal of a profits disgorgement award affirmed by a panel majority in the U.S. Court of Appeals for the Fourth Circuit. The petition from Dewberry Group challenges the Fourth Circuit’s endorsement of an expansive disgorgement remedy that reached into profits earned by affiliates of the petitioner, who were not included as defendants in the case, without any regard to principles of corporate veil piercing.

Last week, the New Civil Liberties Alliance (NCLA) filed an amicus brief with the U.S. Supreme Court urging the justices to grant the petition for writ of certiorari in Chestek PLLC v. Vidal, which challenges the U.S. Patent and Trademark Office’s (USPTO) promulgation of rules requiring trademark applicants to disclose their domicile address. The NCLA’s brief contends that, by allowing the USPTO to act without following notice-and-comment rulemaking under the Administrative Procedures Act (APA), the U.S. Court of Appeals for the Federal Circuit has uniquely isolated the USPTO from democratic oversight for rulemaking that creates profound economic effects.

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.

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.

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.

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 Takeaway.com’s logo. Relish Labs petitioned the Court in January of this year.

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.

“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.

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!”