Archives: Trademarks

Subscribe to Trademarks RSS Feed

Recreational Marijuana and Marijuana-Related Products Found Not to Be in the “Zone of Expansion” of Smokers Articles, Including Vaping Devices

A New York District Court recently denied a preliminary injunction to stop use of the mark WOODSTOCK in association with cannabis and cannabis-related products, in part because cannabis and cannabis-related products were found not to be in the “zone of expansion” of the movant, despite movant’s federal registrations of WOODSTOCK for smoker articles. Woodstock Ventures … Continue Reading

Supreme Court Grants Certiorari in Game-Changing Trademark Appeals

Continuing to feed its appetite for trademark rulings, the U.S. Supreme Court has recently granted petitions for certiorari of two Second Circuit decisions implicating trademark law. The first case could change the burden of proof for recovering an infringer’s profits as damages in trademark disputes, while the second case may limit a defendant’s ability to … Continue Reading

Supreme Court Finds “Scandalous” Trademark Rule Unconstitutional

The U.S. Supreme Court has ruled that the U.S. Trademark Act’s section 2(a) provision precluding registration of “immoral” or “scandalous” trademarks violates the First Amendment of the U.S. Constitution. The ruling came in the case of Iancu v. Brunetti, an appeal from the U.S. Trademark Office’s refusal to register the trademark F.U.C.T. for a line … Continue Reading

USPTO Issues New Examination Guide for Examination of Marks for Cannabis and Cannabis-Related Goods and Services

The newly released Examination Guide  for trademark examiners at the US Patent and Trademark Office (“USPTO”) entitled “Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill” clarifies that applications for hemp and hemp derived products, including CBD, filed after Dec. 20, 2018 as either intent-to-use or having … Continue Reading

Supreme Court Grants Cert in Brunetti Appeal

The U.S. Supreme Court has agreed to hear arguments in the case of Iancu v. Brunetti. This, as you may recall, is an appeal regarding the constitutionality of the Lanham Trademark Act’s section 2(a) provision precluding registration of “immoral” or “scandalous” trademarks. In the wake of the much-discussed 2017 Supreme Court decision in Matal v. … Continue Reading

Update: Give Me Liberty, or Give Me Death? Supreme Court May Resolve Circuit Split on Effect of Rejection of Trademark Licenses in Bankruptcy

In my September 11 blog post, Give Me Liberty, or Give Me Death?, I noted that the First Circuit’s decision in Tempnology—that rejection of a trademark license in bankruptcy divested the nondebtor licensee of its right to use the trademark—was subject to the licensee’s pending petition for certiorari. On October 26, 2018, the United States Supreme … Continue Reading

Federal Circuit’s Converse Ruling Provides Useful Secondary Meaning Guidelines

The Federal Circuit ruled on October 30 that the International Trade Commission had applied the wrong analysis in adjudicating plaintiff Converse’s trademark claims against Skechers and New Balance arising from the design of an athletic shoe. The holding remands the case and keeps Converse’s suit against its competitors alive. But more usefully, the opinion offers … Continue Reading

Give Me Liberty, or Give Me Death? Supreme Court May Resolve Circuit Split on Effect of Rejection of Trademark Licenses in Bankruptcy

It might sound odd to the ears of an intellectual property lawyer, but trademarks are not intellectual property—as defined in Section 101(35A) of the Bankruptcy Code, anyway. The significance of the omission of trademarks from this definition is that it is unclear what happens to the rights of a licensee of a trademark when a … Continue Reading

Alicia Bell and Carla Quisenberry Join ORLA’s Boiled Down Podcast to Discuss Cease and Desist Letters

Cease and desist letters can serve as a warning ahead of full scale litigation, however there are some possible resolutions before ending up in court. Alicia Bell and Carla Quisenberry joined the Oregon Restaurant and Lodging Association‘s Boiled Down podcast this week to discuss demand letters, how to avoid them, and your options if you … Continue Reading

Christian Louboutin Claims Victory in EU Court Trademark Battle Over Its Iconic Red-Soled Shoes

On Tuesday, June 12, 2018, the European Union’s (EU) highest court, the Court of Justice of the European Union (the CJEU) (La Cour de justice de l’Union européenne), held that French designer Christian Louboutin’s mark consisting of a color applied to the sole of a shoe is not subject to the EU’s prohibition of the … Continue Reading

Dissecting the PIRATE PISS Decision: Why Beer and Rum Are Still Related Goods (in the TTAB’s Opinion) and What Brand Owners Should Do Before Adopting a New Alcohol Brand

For years, the TTAB has affirmed refusals of similar marks covering food and beverage offerings—finding such goods and services to be related. This includes many TTAB decisions finding that alcoholic and non-alcoholic beverages are related (see the TTABlog for a nice overview). Patrón Spirits International AG v. Conyngham Brewing Co., Case No. 91226939 (TTAB June … Continue Reading

Play-Doh Scent is Now a Federally Registered Trademark: Why Brands Should Embrace Non-Traditional Trademarks

Did you know you can federally register a scent as a brand? Hasbro, Inc.’s recent registration of the smell of Play-Doh “toy modeling compounds” has highlighted one of the lesser-known brand categories: scents. The United States defines a trademark as any “word, name, symbol, or device, or any combination thereof…to identify and distinguish his or … Continue Reading

Replacement Parts Manufacturer Gets Burned: Music City Metals Co., Inc. v. Jingchang Cai

Music City Metals (MCM) built a thriving business designing and selling replacement parts for name-brand BBQ grills. Too good, it turns out, as a number of foreign competitors also jumped into the game, copying MCM’s own replacement parts and selling those replacements for the replacements. While MCM thought it was fine to market itself as … Continue Reading

Alicia Bell Published in Modern Restaurant Management: Protecting Your Restaurant’s Intellectual Property Is More Important Than You Think

As the restaurant industry grows, and as customers pay more attention to local and artisan foods and celebrity chefs, there’s an increased interest in protecting recipes, signature dishes, and restaurant brands as intellectual property. In an article for Modern Restaurant Management, Alicia Bell discusses what restaurant owners can do to protect their intellectual property. To … Continue Reading

Federal Circuit Strikes Down the Lanham Act’s Ban on Scandalous and Immoral Marks in the Wake of Tam

In the wake of Matal v. Tam, where the Supremes 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, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit unsurprisingly struck down the Lanham Act’s … Continue Reading

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 Supreme Court Hears 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

U.S. Trademark Office Fees Go Up, Effective January 14, 2017

Back in June, we shared that the U.S. Trademark Office announced a fee increase and it was intended to go into effect October 1, 2016. Well, the U.S. Trademark Office fees did not go up on October 1, 2016, but will go up (as previously announced) on January 14, 2017. All those filing with the U.S. Trademark … 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
LexBlog