Archives: Trademarks

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USPTO Provides Further Relief to Patent and Trademark Applicants In Response to the Continuing COVID-19 Pandemic

As a further update to our earlier posts (U.S. Patent and Trademark Office Increases Extensions to Deadlines under the CARES Act; How the USPTO is Responding to the Coronavirus Outbreak; and USPTO and Copyright Office Announce Extensions to Deadlines Under the CARES Act) regarding actions taken by the United States Patent and Trademark Office (USPTO) … Continue Reading

U.S. Patent and Trademark Office Increases Extensions to Deadlines under the CARES Act

As a further update to earlier posts (“How the USPTO is Responding to the Coronavirus Outbreak” and “USPTO and Copyright Office Announces Extensions to Deadlines”) regarding recent actions taken by the United States Patent and Trademark Office (USPTO) due to the COVID-19 pandemic, the USPTO announced this week an increased extension of time for the … Continue Reading

Your Trademark Just Became More Valuable: Romag Fasteners, Inc. v. Fossil Group, Inc.

Under the Lanham Act, a trademark owner can recover damages (i.e., the owners lost sales because of infringement), but also is entitled to disgorgement of the infringer’s profits from the infringement. But typically (at least in the Ninth Circuit), if damages are awarded, the plaintiff recovers damages only for lost sales (which are very hard … Continue Reading

First Amendment Beats Trademark Rights Three Times in One Day

Trademarks protect against consumer confusion. But the First Amendment protects speech even when it may result in some confusion. When these two principles intersect, trademark holders may be surprised to find that the First Amendment often wins. In three March 31 decisions, courts sided with First Amendment freedom of expression over commercial claims alleging violation … Continue Reading

Thinking about Using Trademarks to Capitalize on the COVID-19 Pandemic? Think Again.

Over the past few weeks, many entrepreneurially-minded people have filed trademark registration applications with the U.S. Patent & Trademark Office in apparent attempts to cash in on the current global health crisis. Example marks from this influx of applications include: I HEART COVID-19, COVID-19 INFECTED, #CORONAVIRUS, WARNING MY RIDE IS SICKER THAN THE CORONAVIRUS, and … Continue Reading

USPTO and Copyright Office Announce Extensions to Deadlines Under the CARES Act

As an update to our earlier post regarding deadlines and operation of the United States Patent and Trademark Office (USPTO) during the ongoing COVID-19 situation, the USPTO under the authority of the CARES Act announced extensions to the time allowed to file certain patent and trademark-related documents and to pay certain required fees. While the … Continue Reading

When Can a Domain Name Be a Trademark? Supreme Court Will Decide

On Friday, November 8, 2019, the Supreme Court granted certiorari in United States Patent and Trademark Office et al. v. Booking.com BV, to decide whether “the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” The case involves the travel website Booking.com, which … Continue Reading

I, Robot: PTO Seeks Comments on Protection for AI-Created Works

Earlier this year, the United States Patent and Trademark Office (USPTO) held a groundbreaking conference on the impact of artificial intelligence on the development of intellectual property. This week, the USPTO issued a follow-up notice, requesting comments on the copyright, trademark, and other intellectual property rights issues that may be impacted by the rise of … Continue Reading

Pop Culture: Captain Marvel, Shazam, and a 12-Year Legal Battle

Among the latest entries in the quickly expanding catalogue of blockbuster movies about comic book characters are Marvel’s Captain Marvel and DC’s Shazam!, both of which have generated hundreds of millions of dollars at the box office this year. Given the present financial success of these characters, it may come as a surprise to fans … Continue Reading

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
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