Trademark

As we help clients navigate through the trademark application process we are careful to always explain the risks as well as the rewards associated with the breath of their registration.  Not surprisingly, afterwards we also emphasize the need to routinely maintain and update ones Intellectual Property portfolio because it is after all an investment that should not be neglected.  However, when the TTAB decided Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007), we hoped that the appeal of the decision would result in an interpretation that was more in line with the policies of public disclosure that the USPTO has consistently applied. 

Specially, the concern was that the Board had found that Bose’s 2001 renewal of its registration for the word-mark WAVE in connection with audio tape recorders and players was fraudulent because the company no longer manufactured those products. The issue of actual use, however, arose after the renewal when Bose opposed the registration of the HEXAWAVE mark and Hexawave fired back accusing Bose of committing fraud on the PTO.  In essence, the Board’s finding of fraud hinged on the determination that Bose “should have known” which in essence established a standard of subjective intent.  This finding led to the coining of the term fraudit, which are audits on Intellectual Property portfolios that seek to uncover what the owner “should have known.” 

Pursuant to Florida SB 872 the sate ficticious name statute 865.09, F.S, is being amended to require that a business publish its intent to use said ficticious name.  While some have noted some exceptions to this requirement, such as a valid Florida Trademark Registration, here, certaily the publication requirement offers a new way to police existing Sate and Federal Trademark rights. 

Until recent times, countries like Brazil, Russia, India, and China have sometimes been viewed by foreign brand owners as offering insufficient trademark protection.  Increasingly, however, the economic successes of these rapidly developing economies appear to be nurturing increasingly sophisticated and responsive legal systems, and particularly with respect to trademark law.  Moreover, as these economies become increasingly consumer-oriented, their success appears to be opening new markets for foreign brands, while concurrently providing improved legal protection.
 
One article of interest that summarizes related issues for brand owners can be found at Managing Intellectual Property.  As noted, brand owners will want to become familiar with the law and culture for each jurisdiction and, in many instances, will want to plan on securing trademark (and other IP) protection before doing business in a particular jurisdiction. 
 

The U.S. Bureau of Customs and Border Protection ("CBP") prevailed in a recent decision from the United States Court of Appeals for the Ninth Circuit, which concluded that CBP was authorized to seize watches bearing the counterfeit trademark "TOMMY", and impose a fine as a civil penalty on the importer, even though the owner of the mark at issue did not make or sell watches at the time of the seizure.  The case is entitled United States of America v. Able Time, Inc., and the decision can be found here

Thursday, 07 August 2008 17:50

SOUTHERN CAL BEATS SOUTH CAROLINA

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In a battle of Division I-A Schools, the University of Southern California prevailed over the University of South Carolina in a decision from the Trademark Trial and Appeal Board concerning the use of the mark "SC" on various goods.  Read the decision here.

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