Archives: Trademarks

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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

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
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