For years, buzz has circled around whether Google would enter into the smart watch arena. It appears the wait is now over, as Google recently filed a trademark application for PIXEL WATCH in connection with smartwatches and smartwatch accessories. Although dates have not yet been confirmed, news leaks are reporting that the wearable device from Google may be announced as early as May, and be available for purchase in October.
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Firm Partner, Meredith Frank Mendez, Chairs the 2022 Florida Bar IP Law Symposium, Associates Also Presenting
Firm Partner, Meredith Frank Mendez, is the Chairperson of the 2022 Florida Bar Intellectual Property Law Symposium, the premier event in the state for members of the IP Bar. Held at the Biltmore Hotel in Coral Gables on April 28 and 29, the IP Symposium will feature a series of case study panel discussions covering a wide range of IP law topics, including a mock summary judgment argument before Honorable Lisette Reid from the Southern District of Florida and Honorable Julie S. Sneed from the Middle District of Florida, and the impact of the American Axle & Manufacturing, Inc. case on Section 101 of the Patent Act case with panelist, Honorable Paul Michel, former Chief Judge of the Federal Circuit. Panel discussions will also include relevant new topics such as NFTs and Name, Image, and Likeness in college athletics. The IP Symposium will also have a panel with David Carson, one of the first Copyright Claims Officers at the U.S. Copyright Office to discuss the recently-formed Copyright Claims Board. Each of the panels is expected to cover some of the more advanced aspects of IP. The Keynote Speaker on Thursday is the Director of the U.S. Patent and Trademark Office, Drew Hirshfeld, who will be giving a “fireside chat” about many relevant topics, including the Trademark Modernization Act. The keynote speaker on Friday will be Dennis Crouch, author of the popular Patently-O blog that is regularly read by most U.S. patent law professionals. Firm Senior Associate, W. John Eagan, also will be presenting the patent section of the “Year in Review” program and Firm Associate, Cleo Suero, will moderate a panel about NFTs on April 29. For more information: https://member.floridabar.org/s/lt-event?id=a1R1R0000088zSaUAI#/Agenda%20-%20Speakers
The Firm congratulates Kelly Malloy, a Registered Patent Agent in the Miami office, on her recent tapping into the Iron Arrow Honor Society. Founded in 1926, Iron Arrow is the highest honor that can be bestowed at the University of Miami. The Society’s purpose is the protection, improvement, and general welfare of UM, and it is a recognized clan of the Miccosukee Tribe of Indians of Florida. Additionally, Iron Arrow’s criteria for membership are scholarship, leadership, character, humility, and love of alma mater. Ms. Malloy is one of just 17 selected for membership this semester out of all students, faculty, staff, and alumni across all of UM’s undergraduate, graduate, medical, and law communities. She is a J.D. candidate and, upon completing the Florida Bar, the Firm looks forward to Ms. Malloy becoming a full-time Associate Attorney in the Fall.
In November 2021, Vans, Inc. and VF Outdoor, LLC (collectively, “Vans”) filed suit in the U.S. District Court for the Central District of California against Walmart, Inc. (“Walmart”) and two other entities associated with Walmart: The Doll Maker, LLC and Trendy Trading, LLC. In its complaint, Vans alleged, inter alia, that Walmart had infringed on Vans’ trademarks and trade dress rights when Walmart began selling and promoting “over twenty blatant knockoff versions of Vans shoes . . . through [its] own in-house labels, including ‘Time and Tru,’ ‘Wonder Nation,’ and ‘No Boundaries’” in 2018. In filing its complaint, Vans sought a preliminary injunction based on the alleged notion that Walmart “flooded the market with cheap, low-quality, and confusingly similar shoes that harm Vans’ goodwill and reputation.”
At a hearing on January 24, 2022, however, Walmart implored U.S. District Judge David O. Carter not to grant the preliminary impeachment on Vans’ behalf, claiming not only that issuing such an order would cost Walmart “tens of millions of dollars,” but also that “Vans is not losing sales, . . . its reputation is not being diminished . . . [and it] is not suffering any irreparable harm.” In response to Walmart’s plea to the judge for relief, at a hearing the following month, Vans claimed it was facing an “existential crisis” and that Walmart’s copycat designs were putting Vans’ bottom line in “mortal peril.”
This case is Vans, Inc. et al. v. Walmart, Inc. et al., Case No. 8:21-cv-01876. The images above are provided in Vans’ complaint filed in the U.S. District Court for the Central District of California. The Complaint can be found at the following link: https://fingfx.thomsonreuters.com/gfx/legaldocs/zdpxonkoyvx/IP%20VANS%20TRADEMARKS%20complaint-min%20(1).pdf
Asserting claims for dilution and a likelihood of confusion, Sony Pictures Television recently filed a trademark opposition proceeding, seeking to protect the BREAKING BAD television series featuring chemist-teacher-turned-druglord Walter White. The applicant, Thomas Mihill, filed an intent-to-use application in connection with his BAKING BAD brand for use in a cooking show. While the parties share similarity in terms of televisions shows, a question remains as to whether consumers are likely to confuse a cooking show with one of the most popular Netflix series of all time.
After nearly four years of battle with the U.S. Patent and Trademark Office (USPTO), high-end fashion company Off-White secured a trademark registration for its signature red zip tie in connection with footwear, with color claimed as a feature of the mark. Off-White, which became a well-recognized streetwear brand under the direction of American fashion designer Virgil Abloh, began affixing the zip tie to its products in May 2016 and filed to obtain trademark rights in July 2018.
The USPTO Examining Attorney assigned to the application issued four Office Actions over the years, each time refusing Off-White’s attempt to trademark the zip tie for a slew of reasons. Off-White ultimately overcame these rejections, in large part by submitting arguments and evidence that the zip tie is non-functional and communicates to consumers that the shoe is an Off-White product. For example, the fashion company submitted that “[c]elebrities and other consumers do not wear shoes with Applicant’s Mark attached because of how Applicant’s Mark looks, but because of the message it conveys to others: this is a product produced by Applicant.”