Posts Tagged: "trademarks"

At an initial examination proceeding, JPO examiner refused the trademark with respect to all goods in class 9 on the grounds that consumers can easily perceive or conceive the late Whitney Houston, an American famous singer from the applied mark “WHITNEY HOUSTON” written in a common font design. Besides, in a business to deal with music recordings, the title of a song or an album as well as name of performer or player are routinely indicated on goods or packages to show contents of it. Therefore, relevant consumers and traders at a sight of the applied mark used on designated goods in class 9 are just likely to conceive the goods contains music or performance by the late Whitney Houston. If so, IR no. 1204044 is subject to refusal based on Article 3(1)(iii) of the Trademark Law. Furthermore, when the applied mark is used on music recordings unrelated to Whitney Houston, consumers will surely be in trouble since they expect the goods contains song or performance of the late Whitney Houston. If so, it should be refused for registration based on Article 4(1)(xvi) due to misconception of quality of goods.

Many states have statutes that make counterfeiting a state crime, but often only if the trademark is registered in that state. According to Lo Cicero, state registrations give local prosecutors and law enforcement officers jurisdiction – and they may be more able and willing to tackle local counterfeiters than are busy federal prosecutors. Thus, where budgets will allow and brand owners have significant counterfeit concerns obtaining state trademark registrations in at least several states, including California and New York, could be a worthwhile investment.

At this year’s IDEA World, TRX’s booth is very close to Aktiv Solutions, a distributor of fitness equipment. The two are only separated by one booth in between them run by the mind-body fitness firm Merrithew. Among the products distributed by Aktiv include a functional training ecosystem created by Gym Rax, a developer of modular storage and suspension solutions for fitness facilities. And Gym Rax recently filed a lawsuit alleging that TRX is committing trademark infringement. On June 12th of this year, Gym Rax International filed a complaint for federal trademark infringement against Fitness Anywhere LLC, doing business as TRX, in the Central District of California.

Chicago-based chewing gum company Wm. Wrigley Jr. Company filed a trademark infringement suit against e-cigarette seller Chi-Town Vapers LLC of Bensenville, IL. The suit targets Chi-Town for marketing certain e-cigarette materials which bear a striking resemblance to chewing gum products manufactured by Wrigley. The case is filed in the U.S. District Court for the Northern District of Illinois (N.D. Ill.).

Cincinnati, OH-based grocery retailer Kroger Company (NYSE:KR) recently filed a trademark infringement suit against German-based discount supermarket chain Lidl over a private food label. The suit, filed in the U.S. District Court for the Eastern District of Virginia (E.D. Va.), alleges both trademark and service mark infringement and is seeking to have a related U.S. trademark application filed by Lidl cancelled. The suit comes just weeks after Lidl opened its first locations in the United States.

“Filing a trademark application with the goal of claiming a right to a particular term – with nothing more – is a fundamental misunderstanding of our trademark laws,” Alston & Bird partner Jason Rosenberg, explained. “Individuals and corporations rushing to design t-shirts and coffee mugs with phrases like ‘What the covfefe?’ on them aren’t likely to be able to claim ownership of the term, or stop anyone else from using it. You cannot simply hear a word you like, file a trademark application, and claim it as your own.  In the United States, the law requires more.”

It appears that Beyoncé’s trademark filing activities raise the question as to whether she, through her trademark holding company, is attempting fraud on the USPTO. “Fraud” is a nasty legal word, but that is the proper term of art to use when there is a question about whether an applicant has been forthcoming and honest with the USPTO. Applicants before the USPTO owe a duty of candor, which if breached by the applicant is because the applicant is said to have committed fraud on the Office… It’s also possible that, if the couple never intended on making the goods and services claimed in the BLUE IVY CARTER application, they have no true intent to offer those same goods and services listed under the RUMI CARTER and SIR CARTER applications.

The news headlines are becoming ever more populated with stories of big brands trying and failing in some instances to register a trade mark for their product. Lindt infamously failed to register their signature gold foiled chocolate bunny in Germany, similarly Rubiks lost its bid to register the EU trademark for the puzzle. The latest addition to this string of companies was Nestlé who attempted and failed to register the KitKat design. Nestlé’s application for trade mark registration failed on the ground that the four finger chocolate bar design was not distinctive enough. This raises the question in the world of intellectual property law as to just what will surpass the trade mark test, and indeed what this test consists of within the UK.

I will host a free webinar on Monday, July 10, 2017 at 12pm ET. The title of our discussion is Combating Repeat Infringers, but we will address the issue of counterfeits from top to bottom. Joining me for this webinar will be Maysa Razavi, heading of Anti-Counterfeiting for INTA, Anthony Lo Cicero, a litigator with 40 years of experience relating to trademark enforcement and brand protection, and Joan Porta the Brand Protection Manager for Red Points. We will explore the magnitude of the problem, solutions for dealing with infringers in an online environment, and how if necessary to escalate enforcement to take the fight to Customs and into the courtroom if necessary.

The Supreme Court ruled that the anti-disparagement clause in the Lanham Act violates the Free Speech Clause in the First Amendment. Matal v. Tam. As a result, the United States Patent and Trademark Office may no longer deny registration of a federal trademark application on the ground of disparagement. Several states, including Massachusetts and New Hampshire, have anti-disparagement trademark provisions that will no longer be enforceable either… The statute does not define ‘scandalous’, but like the restriction against disparaging marks, the courts and the PTO focus on whether a mark is offensive.

Earlier this month, Kiss frontman Gene Simmons filed to trademark the “Devil Horns” hand gesture, but this unusual application was soon after abandoned. The application listed the date of first use as November 14, 1974, and the specimen of use was a photograph of Simmons flashing the hand gesture alongside Foo Fighters’ Dave Grohl. Just two weeks later, Simmons reconsidered if he had valid trademark rights to the hand gesture, as he abandoned the application.

Kyiv, Odessa, Crimea, Novy Svet, Inkerman – not only these are the names of locations, but also the signs registered as trademarks for alcoholic beverages, and some cases, the companies themselves, in the Ukraine. The Odessa Sparkling Wine Company has been producing and selling ODESSA branded sparkling wine for more than 20 years now.  However, they have faced an unusual challenge when trying to register ODESSA trademark.

On June 21st, however, an administrative trademark judge at the Trademark Trial and Appeal Board (TTAB) granted Blue Ivy’s motion for early discovery. The discovery is limited to the grounds of no bona fide intent and fraud on the USPTO. Blue Ivy alleges that, although BGK Trademark Holdings is claiming the use of the BLUE IVY CARTER mark for a wide range of goods and services, that there’s no true intent to use the mark in commerce at all.

After a streak of six patent decisions uniformly overruling the Federal Circuit, and for the first time all term, the Supreme Court finally handed the Federal Circuit a win this week. In its landmark ruling in Matal v. Tam (formerly Lee v. Tam), the U.S. Supreme Court struck down the restriction on the registration of marks that “disparage” under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). Justice Samuel A. Alito Jr. wrote unanimously for the eight justices in holding that Section 2(a)’s prohibition on disparaging registrations violates “a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

The trademark application also gives some idea as to how immersive an entertainment experience Nintendo is hoping will be built at its themed areas in Universal parks. Along with arcade games and handheld game apparati, Nintendo is also seeking trademark protection for providing games via smartphone and providing games via a telecommunication network. The trademark application would also protect the mark on the organization and management of video game events, indicating that these themed areas could also host Nintendo video game tournaments just as the world is seeing an increase in eSports revenues.