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Trademark

As a follow-up to a previous blog entry, it’s finally official -- reform legislation in the European Community (“EU”) will take effect on March 23, 2016 and bring major changes to the CTM (“Community Trade Mark”) registration system.  Over the past 20 years, the CTM has become a staple of international trademark portfolios as a cost-effective way to achieve protection in 28 member countries in a single package.  Among the most notable changes, the CTM name will be changed to the “European Union Trade Mark,” or “EUTM.”  Also, the registrar’s office in Alicante, Spain, now known as OHIM (“Office of Harmonization in the International Market”), will be re-named as the “European Union Intellectual Property Office,” or “EUIPO.”  In addition to minor, technical changes, the overhaul will increase filing fees for multiple-class applications, replacing the existing structure of up-to 3 classes for the initial filing fee.  Of note, any application filed before March 23rd will still benefit from the 3-for-1 filing fee, so clients are encouraged to consider immediate filing to reduce costs.  Other changes to the law will impose stricter rules for specific listings of goods and services, which will affect existing registrations and upcoming renewals, and there also will be enhanced enforcement provisions available to registrants, especially against counterfeit and gray market goods.  The Firm continues to assist clients with trademark registration and enforcement in virtually every country of the world.

The Federal Circuit has ruled that Section 2(a) of the Lanham Act, which allows the U.S. Patent and Trademark Office to deny or cancel a trademark if it disparages persons, institutions, beliefs, or national symbols, violates the First Amendment. The ruling vacated the U.S. Patent and Trademark Office’s refusal to grant a trademark registration to an Asian-American band seeking to register the mark “The Slants” on the grounds that the mark is offensive to Asian-Americans. 

In-N-Out, the popular California based fast food chain, has sued food delivery startup DoorDash for trademark infringement and unfair competition.

In the Complaint, In-N-Out claims that Defendant, DoorDash's use of "Plaintiff's famous trademarks implies that Defendant not only delivers In-N-Out products to its customers, but that the quality and services offered by Defendant is the same as if consumers had made purchases directly from Plaintiff. Upon information and belief, the quality of services offered by Defendant does not at all comport with the standards that consumers expect from Plaintiff's goods and services. Further, Plaintiff has no control over the time it takes Defendant to deliver Plaintiff's goods to consumers, or over the temperature at which the goods are kept during delivery, nor over the food handling and safety practices of Defendant's delivery drivers. While Plaintiff adheres to the Food Code, on information and belief, Defendant does not adhere to such regulations, including with regard to compliance with required food safety and handling practices."

The CTM (Community Trade Mark) registration, which provides protection across most of Europe, has become a staple of international trademark portfolios since introduction in 1996.  But, some big changes are coming for the 20th anniversary.  Most notably, the CTM name will be changed to the “European Union Trade Mark.”  Also, the registrar’s office in Alicante, Spain, now known as OHIM (Office of Harmonization in the International Market), will be re-named as the “European Union Intellectual Property Office,” and the Community Trade Mark Courts will be called the “European Trade Mark Courts.”  Other technical changes will include new filing/renewal fee structures, stricter rules for listing goods and services, and some enhanced mechanisms for enforcement against infringers.  Final approval by the European Parliament is expected imminently, at which time most changes will become effective, but portions of the overhaul package will require adoption into the national laws of member countries.   The Firm continues to assist clients with trademark registration and enforcement in virtually every country of the world.

Are you ready for some football? In the midst of preparing for football season, the National Football Association ("NFL") continues its fight to overcome cancellations of the Washington Redskins' trademarks. The NFL is appealing a district court decision to the Fourth Circuit.

Wednesday, 15 July 2015 23:18

Apple is Being Sued Over "iWatch" Trademark

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Apple’s newest device the Apple Watch, which was released a few months ago, is now the subject of a trademark dispute with a European trademark holder. Probendi, an Irish software development company and owner of the rights to the “iWatch” trademark in the European Union, is upset that Apple bought Google ads for the term “iWatch”. If you run a Google search of the term “iWatch”, the top result and advertisement will be for the Apple Watch.

Wednesday, 01 July 2015 22:34

EDM’s “House” Mouse vs. the Magic Kingdom

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Electronic Dance Music (EDM) Famed DJ Deadmau5 and The Walt Disney Company have settled their trademark dispute over the use of the “Deadmau5 Mouse Head” Logo. Just when it seemed likely that the two sides were headed for a lengthy legal battle over the use of the Deadmau5 logo, it has been revealed that the two sides have reached a settlement agreement.

Last March, the District Court for the Northern District of California entered a final judgment in the Apple v. Samsung saga, awarding Apple almost $930 Million in damages for Samsung’s infringement of Apple's trade dress, both registered and unregistered, and design and utility patents. After several appeals, the Federal Circuit announced that Apple’s trade dress is functional and remanded to the District Court for entry of final judgment on damages only pertaining to the various patent infringements.

On March 24, 2015, in B&B Hardware, Inc. v. Hargis Industries, Inc., the Supreme Court held that a Trademark Trial and Appeal Board (TTAB) decision is to be given issue preclusion effect when the usages it adjudciated are materially the same as those before a later district court proceeding.

Wednesday, 28 January 2015 23:02

The number "12" Mark

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The Seattle Seahawks, a National Football Team is scheduled to play the New England Patriots in this year’s much anticipated Super Bowl matchup. As many football fans might be aware, the Seahawks gained attention from everyone for winning last year’s Super Bowl, complimented by their stingy secondary defense. However, the Seahawks also gained attention from everyone in the media for another reason: dubbing their home fans as “the 12th man.”

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