Posts Tagged: "trademarks"

The U.S. Supreme Court yesterday granted a petition filed in August this year by Jack Daniel’s Properties, Inc. seeking clarification on whether the First Amendment protects VIP Products, LLC, a maker of dog toys that made humorous use of Jack Daniel’s trademarks for commercial purposes, against claims of infringement and dilution. The High Court previously denied Jack Daniel’s petition in January of 2021, and the U.S. Court of Appeals for the Ninth Circuit “summarily affirmed” the district court’s summary judgment ruling for VIP on remand. In its ruling in 2020, the Ninth Circuit said VIP’s dog toy mimicking a Jack Daniel’s whiskey bottle was an expressive work entitled to First Amendment protection, reversing the district court’s initial holding that the toy infringed and diluted Jack Daniel’s marks and remanding the case back to the district court for a determination on the merits of the infringement claim.

The United States Court of Appeals for the Ninth Circuit on Tuesday affirmed the dismissal of Metamorfoza’s trademark infringement and unfair competition claims against Big Funny over a trademark that included the disclaimed phrase “Museum of Illusions.” Big Funny also cross-appealed the district court’s denial of its motion for attorneys’ fees, but the Court of Appeals agreed with the district court, finding that it had acted within its discretion in denying fees under 15 U.S.C. § 1117(a) because the case was not “exceptional.” Big Funny and Metamorfoza both operate multiple museums called “Museum of Illusions” in the United States. Big Funny operates museums in California and Florida, while Metamorfoza has museums in New York, Missouri and Texas.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming the grant of a narrowly-tailored preliminary injunction to SoClean, Inc., a medical device company that makes CPAP machines, based on trademark infringement claims against Sunset Healthcare Solutions, Inc. SoClean alleged in 2021 that Sunset infringed its U.S. Trademark Registration No. 6,080,195. The registration covers the configuration of replacement filters for its sanitizing devices.

The U.S. Patent and Trademark Office’s (USPTO’s) Trademark Trial and Appeal Board (TTAB) ruled in favor of Sony on October 28 in a decision that sustained the corporation’s opposition to an  application to register the mark SONISTREAM for a streaming platform. The TTAB ruled last Friday that the “SoniStream mark is likely to dilute Opposer’s famous SONY mark by blurring.” The Board found that SoniStream is similar enough in name “to trigger consumers” of SoniStream to think of the Sony brand. Of the six factors used to evaluate the case, the TTAB found that four were likely to dilute the Sony brand.

Trust and estate attorneys regularly advise their clients to enter into prenuptial agreements to protect the valuable assets each spouse brings to the marriage as well as how to distribute community property in the event of a divorce. Brand collaborations with celebrities, influencers or other brands are much like marriages, but brand collaborations are even more unlikely to last. Why not plan for the split, whether it be a conscious uncoupling or a Page 6 kind of divorce, with a prenup? The high profile split between Adidas and Ye (fka Kanye West) reminds us that collaboration agreements should not only plan for the best of times, but it is worth setting up the agreement to account for a sudden and troubling end.   

Security issues have long dogged the U.S. trademark system. Unscrupulous operators – sometimes competitors, sometimes bad actors with nothing better to do – too frequently muck up the application process by modifying those filings or filing improper submissions. This is no small problem given the U.S. Patent and Trademark Office (the USPTO) remains a mammoth and international hub of trademark filings. In fiscal 2021, trademark application filings topped 943,000, a record high. This marked an increase of about 28% from the prior year, with that increase driven primarily by Chinese filers.

Usain Bolt filed a recent U.S. trademark application depicting his widely recognized victory pose. The trademark has been applied for in relation to items such as clothing, jewellery, shoes and restaurant and bar services. As Bolt has retired from athletics, he is clearly hoping to add more strings to his bow.

Yesterday, the United States Intellectual Property Alliance (USIPA) issued the results of a nationwide survey designed to determine the level of intellectual property awareness among American adults. Perhaps unsurprisingly, USIPA’s survey found that, while most American believed they understood IP, seven out of 10 survey respondents could not identify examples of intellectual property when asked. This new research should add new urgency to the efforts of IP advocates who are trying to increase participation in the U.S. IP system.

Earlier this week, the U.S. Patent and Trademark Office (USPTO) suspended the sponsored accounts of two U.S. attorneys who loaned their name and bar credentials to an Indian law firm so they could file trademark submissions in violation of USPTO rules. The Indian firm used the names of the American attorneys to pose as U.S.-based attorneys and represent clients in trademark registration. The accounts were suspended for violating the Trademark Verified Account Agreement. The USPTO removed the attorneys’ authorization to sponsor attorney support staff accounts on the USPTO.gov system. The USPTO sent the two attorneys, Julian Haffner of YK Law and Grace Lee Huang of Meritech Law, letters in September notifying them of the violations and resulting suspension.

The process of bringing a new pharmaceutical drug to market is time-consuming and expensive. The process of naming the new drug, while not as scientifically complex, is often no less work. Drugs have several names, including their chemical (or scientific), generic (or non-proprietary) and brand (or proprietary) names. The chemical name specifies the molecular structure of the drug. The generic name specifies the underlying compound of the drug and includes a “stem” that informs health care professionals about how the drug will work in the body. In the United States, generic names must be approved by the United States Adopted Names (USAN) Council and the World Health Organization (WHO) INN Programme. While the chemical and generic names may be available for use by others in the industry, the brand name—under which the new drug is typically marketed—is unique and exclusive to the brand owner and is the focus of this article.

On September 23, the office of the U.S. Solicitor General filed a brief with the U.S. Supreme Court on the issues at play in Abitron Austria GmbH v. Hetronic International, Inc., a trademark case in which the U.S. Court of Appeals for the Tenth Circuit affirmed a $90 million damages award for trademark infringement based on infringement occurring almost entirely outside of the United States. The Solicitor General’s brief asks the nation’s highest court to grant cert on Abitron Austria’s appeal in order to properly limit the application of the Lanham Act so that damages are only awarded when the alleged infringement has a likelihood of causing confusion among U.S. consumers.

Despite efforts to legalize marijuana, cannabis remains unlawful under U.S. federal law. This means that it is not possible to obtain federal trademark registrations for marks used in connection with cannabis goods or services. Federal registrations for Cannabidiol (CBD) products or services are similarly very difficult to obtain. The law on this topic is developing quickly. For those in this commercial space, it often feels as if the legal sands are shifting beneath their feet. Best practices for their brand protection can be difficult to navigate. The purpose of this article is to provide a brief overview of where the federal law currently stands and where it may be headed.

With its widespread use on social networks, mainly on Twitter, the hashtag has become a real communication tool. As a result, there have been a number of trademark registrations with the “#” symbol in the last few years. The question remains, however, as to whether using a third-party trademark with the “#” sign can be considered trademark use and is therefore likely to be infringing the trademark owner’s rights. The Oxford dictionary defines the hashtag as “a word or phrase with the symbol ‘#’ in front of it, used on social media websites and apps so that you can search for all messages with the same subject”.

In an amicus brief filed with the U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday, September 16, David E. Boundy is backing Chestek PLLC’s appeal asking the CAFC to vacate a Trademark Trial and Appeal Board (TTAB) judgment that upheld an examiner’s refusal of the mark CHESTEK LEGAL for failure to comply with the U.S. Patent and Trademark Office’s (USPTO’s) “domicile address requirement.” This requirement originates from the USPTO’s proposed rule issued on February 15, 2019, and subsequent final rule published on July 2, 2019. The changes were ostensibly intended to crack down on fraudulent trademark filings, which have posed a significant problem for the Office in recent years, by requiring that foreign applicants engage U.S. counsel.

During the final day of IPWatchdog LIVE in Dallas, Texas on Tuesday, a panel of attorneys discussed issues surrounding “dangerous fakes,” which are counterfeit goods that pose health risks to consumers. The panelists began with a brief overview of how U.S. Customs and Border Protection (CBP) identifies and seizes infringing goods. The panel also outlined the role that U.S. Consumer Product Safety Commission (CPSC) plays in working to identify dangerous fakes in conjunction with CBP.