Archives: Trademarks

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We Built This City on…False Advertising?

Fifty years ago, it was the “Summer of Love” in San Francisco, with Jefferson Airplane’s 1967 album “Surrealistic Pillow” providing the soundtrack. My how times have changed! Earlier this week, the United States District Court for the Northern District of California came out with its initial decision in Chaquico v. Freiberg, which involves the latest … Continue Reading

USPTO Switches Gears on Registration of Disparaging Marks, but Not on Scandalous Marks

On June 26, 2017, a week after the U.S. Supreme Court unanimously held that the “disparagement clause” in Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), violates the Free Speech Clause of the First Amendment in Matal v. Tam, the U.S. Patent and Trademark Office (the “USPTO”) has updated (Examination Guide 1-17) its … Continue Reading

Portland Band The Slants Singing a Happy Tune After the Supreme Court Unanimously Holds That the Disparagement Clause Violates the First Amendment

Background Yesterday, six months after hearing oral argument (and nearly six years after Simon Tam filed his trademark application for “THE SLANTS”), the U.S. Supreme Court unanimously affirmed the U.S. Court of Appeals for the Federal Circuit’s en banc decision in In re Tam, holding that the disparagement clause in Section 2(a) of the Lanham … Continue Reading

The Supremes Hear Oral Argument in Portland Band The Slants’ Trademark Case

On Wednesday, January 18, 2017, the U.S. Supreme Court heard oral argument in Lee v. Tam, a case reviewing the U.S. Court of Appeals for the Federal Circuit’s en banc decision in In re Tam holding that the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. Section 1052(a), was facially invalid under … Continue Reading

Christian Faith Fellowship Church is Going 12 Rounds with adidas AG in David-versus-Goliath Trademark Battle

Last week, Christian Faith Fellowship Church prevailed at the U.S. Court of Appeals for the Federal Circuit on its appeal of a final judgment of the Trademark Trial and Appeal Board (TTAB) that, in response to a petition filed by adidas AG (Adidas), cancelled its trademarks for failing to use the marks in commerce before … Continue Reading

Precedential TTAB Ruling Vaporizes Marijuana-Related Trademark Registrations

After the Patent and Trademark Office’s (PTO) youthful experimentation with allowing trademark registrations for “processed plant matter for medicinal purposes, namely medical marijuana” in 2010, the Trademark Trial and Appeal Board (TTAB) has now made it clear that neither it nor the PTO is going to allow registration of cannabis-related trade or service marks, at least … Continue Reading

Free Speech and Functionality

The Founding Fathers ensconced intellectual property rights into the fabric of the original Constitution. Article I, Section 8, Clause 8, of the United States Constitution grants Congress the power “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and … Continue Reading

Deadwood on the U.S. Trademark Register: Random Audit Pilot Program Proposed to be Made Permanent

The U.S. Patent and Trademark Office (USPTO) has long been concerned about so called “deadwood” on its register — registrations granted where the registration is not being used or not used on all goods/services identified in the registration, but the registration’s existence keeps others from obtaining registration protection for similar goods/services. This is particularly an … Continue Reading

U.S. Patent and Trademark Office Announces an Adjustment to Trademark Fees taking effect October 1, 2016

On May 27, 2016, the U.S. Patent and Trademark Office (USPTO) announced an adjustment to trademark fees that will take effect October 1, 2016 (the beginning of fiscal year 2017 for the U.S. Government). 81 Fed. Reg. 33619 (May 27, 2016). The good news for electronic filers using the USPTO’s TEAS and ESTTA filing systems, the fees are … Continue Reading

The Proposed TTAB Rules Package – What You Need to Know

On April 4, 2016, the U.S. Trademark Office announced the long-awaited proposed Trademark Trial and Appeal Board (TTAB) rule changes. The TTAB hears appeals from denial of trademark registrations (ex parte appeals) and holds trials between parties involving oppositions of pending trademark applications, cancellations of registered trademark, applications for concurrent use of a registered trademark, and interference proceedings … Continue Reading

Government Concedes that Recent Federal Circuit Ruling on Registration of “Disparaging” Trademarks Applies to “Scandalous and Immoral” Marks As Well

Here’s an update to my comment on In re Tam published a couple of weeks ago. In a letter to a clerk for the Court of Appeals for the Federal Circuit in the pending Trademark Office appellate case In re Brunetti (CAFC No. 2015-1109), the U.S. Department of Justice concedes that the CAFC’s recent decision in In re Tam forecloses enforcement … Continue Reading

Proposed European Trademark Rules Change: Eliminating the Kitchen Sink Fee Structure

After several years of negotiation, a provisional agreement concerning a number of changes to European Community trademark practice was reached by the European Commission, Parliament, and Council in April 2015. One key change is a proposal to do away with the current application and renewal fee structure. Currently, the application filing fee includes three trademark … Continue Reading

To Tack or Not To Tack, that is the (Trademark) Question

A month ago, the U.S. Supreme Court came down with its first pure trademark matter opinion in many years (false advertising cases are in a separate category for the purposes of this article). The trademark bar was all a twitter—literally (tweeting through Twitter) and figuratively. But for the average consumer, and even sophisticated business executive, … Continue Reading

Supreme Court Hears Two Important Trademark Cases This Week

This week, the U.S. Supreme Court heard oral arguments on two important trademark cases: Hana Financial, Inc. v. Hana Bank and B&B Hardware v. Hargis Industries. In Hana, the Court considers the “tacking” doctrine, whereby mark owners attempt to “tack” the priority of an earlier-used mark onto a later-adopted mark in order to extend back in time the priority … Continue Reading

Trademark Purchasers in Bankruptcy and Existing Licensees: Buyer Beware!

Under Crumbs Bake Shop, Inc., (“Crumbs“), the warning of caveat emptor applies to purchasers of trademarks pursuant to a sale under 11 U.S.C. Sections 363(b) and (f), where the trademarks are subject to existing licensing agreements. The Chapter 11 debtors obtained an order approving the sale of substantially all of their assets, including trademarks (but specifically excluding trademark … Continue Reading

Portland-Owned Gilt Boutique Files Lawsuit Against Gilt Groupe, Inc.

Press Release-10.13.14 PORTLAND, Ore. – Miller Nash LLP announced today that it has filed a trademark-infringement lawsuit against online retailer Gilt Groupe, Inc., a $500 million company based in New York. Miller Nash filed the suit on behalf of northwest Portland boutique Gilt and its founder, Paula Bixel. Gilt, which sells local, sustainable and unique … Continue Reading

Going Global or Staying Local: Determining What Level of Trademark is Right for Your Business: Competition

In my previous posts (September 25: Use, September 29: Costs & Complexities), we discussed how use and cost considerations affect the development of a global branding strategy. Since there is no ‘bar date’ for applying for a trademark, a sensible approach is to apply only in the country (or countries) where your mark is being used, and … Continue Reading

Going Global or Staying Local: Determining What Level of Trademark is Right for Your Business: Costs and Complexities

In my September 25th post (Going Global or Staying Local: Determining What Level of Trademark is Right for Your Business: Use), we discussed the use requirements for filing at the local, national, and international level. While use is perhaps the biggest factor in determining where you can legally seek trademark protection, cost is certainty the … Continue Reading

Going Global or Staying Local: Determining What Level of Trademark is Right for Your Business: Use

You’ve done the hard work in selecting an incredible brand name that will promote your business and bring it success (and hopefully, you’ve also cleared it to make sure no one else beat you to that great name). Now, it’s time to protect your investment by registering for trademark protection, but where to begin? Trademarks … Continue Reading

Lessons from INTA: For Brands, Think Globally

I was in Hong Kong attending the International Trademark Association (INTA) annual meeting a couple of weeks ago. This was the first annual meeting held in Asia. And the new INTA executive director made it clear that INTA is taking seriously the “international” aspect, with every 3rd year meeting being held outside of North America. … Continue Reading

Do You Have a Well-Established Brand? What Are You Doing to Prevent Your Trademark from Becoming Generic and Unenforceable?

Most people know Tiffany and Company (or “Tiffany & Co.”) and associate that company and the word “Tiffany” with high-end jewelry. But a recent ruling out of the Southern District of New York indicates that “Tiffany” as a term to describe engagement ring settings may have become generic (and therefore no longer a protectable trademark … Continue Reading
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