Trademarks

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“Booking” a Front Seat at SCOTUS: US Supreme Court Reviews Generic Trademarks in the .com Age

The Supreme Court arguments in USPTO v. Booking.com B.V.[1] on May 4, 2020, marked a historic first: the Supreme Court held oral arguments remotely, by telephone. As a result, lawyers and Supreme Court enthusiasts were able to listen to the argument in real time. Further, both the Petitioner USPTO and the Respondent Booking.com were represented … Continue Reading

It’s A Snap: Supreme Court Rules that Trademark Owners can Recover Infringer’s Profits without Proving that Infringement was Willful

On April 23, 2020, the Supreme Court ruled that a trademark owner may recover an infringer’s profits under the federal Lanham Act without having to prove that the trademark infringement was “willful.” The ruling, in Romag Fasteners, Inc. v. Fossil Group, Inc. (Docket No. 18-1233), resolved a split among the Circuit Courts on this issue. … Continue Reading

Respirator Mask Price Gouging and Trademark Infringement? Not on 3M’s Watch

On April 10, 2020, 3M Co. sued an unauthorized vendor for attempting to sell an NYC agency $45 million worth of 3M-brand respirator masks at 500% of 3M’s list price, or more. Amid the COVID-19 pandemic, as government agencies scramble to procure personal protective equipment (PPE), unscrupulous parties are capitalizing on the crisis through price … Continue Reading

USPTO Extends Trademark-Related Timing Deadlines under the CARES Act, as Other National Trademark Offices Extend their Timing Deadlines or Provide Notice of Delays

On March 31, 2020, in response to the Coronavirus Aid, Relief, and Economic Security (“CARES”) Act, the United States Patent and Trademark Office (“USPTO”) extended the time to file certain trademark-related documents and fees. In its announcement, the Director of the USPTO determined that the outbreak prejudices the rights of trademark applicants, registrants, and owners, … Continue Reading

As broad as it is long: CJEU rules that trade mark owners need not amend broad specifications

On 29 January 2020, brand owners across the EU were reassured in relation to the content of their trade mark specifications following the decision of the Court of Justice of the EU (CJEU) in Sky v SkyKick (C-371/18). The CJEU provided welcome confirmation that trade mark registrations with specifications comprising of broad terms such as … Continue Reading

Bentley Forced to Hit the Brakes

In what are challenging economic times, concentric diversification is increasingly being considered by businesses as a way of gaining an advantage over competitors. In the automotive sector in particular, manufacturers are expanding their offerings, particularly in the after-sales market, to supplement sales of traditional products. The recent High Court decision in Bentley 1962 Ltd v … Continue Reading

Not So Hot: Challenger Bank Fails in Attempts to Register “Hot Coral” Colour Mark

There are some colours that consumers associate with particular brands. For example, EasyJet is known for its distinctive orange livery, while Cadbury is known for the dark purple colour which it uses on the packaging of some of its chocolate bars and in its advertising. However, it is far from straightforward for brands to register … Continue Reading

Fluid Trademarks: Will Companies Go With the Flow?

Consistency and repetition are important in building a brand.  Or are they?  The digital economy is evolving so quickly that it has pushed brand owners to challenge trademark fundamentals by adopting trademarks that evolve as well.  Proponents of such shifting trademarks, called “fluid” marks, believe that they attract the attention of potential consumers, increase brand … Continue Reading

Risqué Business: US Supreme Court Opens Trademark Registry to “Immoral or Scandalous” Trademarks

On June 24, 2019, the US Supreme Court invalidated the Lanham Act’s ban on registering “immoral or scandalous” trademarks. In Iancu v. Brunetti, the Court held that that the ban, in Section 2(a) of the Lanham Act, violated the First Amendment because it required the Government to discriminate against certain viewpoints: marks considered to have … Continue Reading

Federal Circuit Affirms that Likelihood of Confusion – not “Use in Commerce” – is the Hallmark of Trademark Infringement

In VersaTop Support Sys., LLC v. Ga. Expo, Inc., 2019 U.S. App. LEXIS 11404 (Fed. Cir.  Apr. 19, 2019), the Federal Circuit turned its eye to the Trademark Statute and reaffirmed that the cornerstone of an infringement action under the Lanham Act – with or without “use in commerce” as that term is defined in … Continue Reading

The future is…female sports sponsorship

With womens’ sporting events becoming increasingly popular with tv and live action crowds, brands searching for new sports sponsorship opportunities are turning to womens’ sports. Squire Patton Boggs’ Sports Shorts blog considered the advantages of such deals for brands in a recent post, which also looks at some high value sponsorships in the area.  … Continue Reading

Changes in China Concerning the Trademark Law and the Trade Secret Provisions of the Anti-Unfair Competition Law Address Concerns of Western Countries

Recent cases of trademark theft involving Chinese employees of US companies and China’s ever rampant phenomenon of trademark squatting have emerged as very critical areas of dispute between China and several Western countries. On April 23, 2019, two new sets of regulations were adopted by China’s State Council addressing these concerns. Both introduce more effective … Continue Reading

Recent Changes in Trademark Procedures in China

The beginning of 2019 brought about two important changes to trademark filing and prosecution proceedings in China. These changes will impact all brand owners. Update of the China Goods and Service Classification Effective January 1, 2019, the China Trademark Office (CTMO) has adopted a new 2019 version of the classification table. Goods and service specifications … Continue Reading

Anti-counterfeiting operations plan to tackle intellectual property crime

Counterfeit goods now account for up to 2.5% of world trade and 5% of imports in the EU and are a significant problem for many industries in a rapidly evolving digital world. As businesses are aware, tackling IP infringements in counterfeit goods by law enforcement alone is not always effective. Therefore, it will be welcome … Continue Reading

New Requirements for Foreign Companies filing Trademark Appeals in China

The Beijing IP Court has exclusive jurisdiction over appeals concerning rejection and invalidation of trademarks in China. To initiate an appeal to this Court, foreign companies must provide a notarized and legalized power of attorney and a legalized certificate of good standing of the foreign company. Until recently, it was an accepted practice to have … Continue Reading

Are Trademark Licensees Protected In A Licensor Bankruptcy? 

The Supreme Court Is Now Poised to Answer This Question.   Certain licensees of intellectual property are expressly given expanded rights when their licensors file bankruptcy.  But, what about trademark licensees?  Trademarks are not among the defined categories of “intellectual property” for bankruptcy purposes.  Nonetheless, are trademark licensees otherwise protected in a licensor bankruptcy?  The … Continue Reading

EU Court Ruling Keeps Shoe Designers On Their Toes

Last month, on the heels of the ruling from the District Court of The Hague, the Court of Justice of the European Union (CJEU) ruled that Christian Louboutin’s red high-heeled soles are protectable as a trademark. As previously discussed, Louboutin decided to sue to protect its hue.  Louboutin has owned a registered Benelux trademark for … Continue Reading

The China Rules of Evidence Series – Online Purchase of Infringing Products and Forum Shopping in Trademark Infringement Cases

In China, to succeed in an intellectual property (IP) infringement lawsuit, it is beneficial to have the case heard in a court that specializes in IP disputes (e.g., the IP courts in Beijing, Shanghai and Guangzhou). Securing a court that is away from the domicile of the infringer may also be beneficial, as it will … Continue Reading

Tempnology – The Latest Ruling On Protecting Trademark Licensees in Licensor Bankruptcy

In the US, trademark licensees are not expressly given expanded rights when their licensor files bankruptcy. This is in contrast to licensees of other intellectual property and is the result of the interpretation of Section 365(n) and Section 101(35A) of the Bankruptcy Code. In Mission Prod. Holdings, Inc. v. Tempnology, LLC (In re Tempnology, LLC), … Continue Reading

Brand Owners Can Restrict Online Sales To Preserve Luxury Image, says ECJ

The European Court of Justice (“ECJ”) has provided an interesting decision in the recent case of Coty Germany GmbH (“Coty”) v Parfümerie Akzente GmbH (“Parfümerie Akzente”). The case confirms that luxury manufacturers can restrict sales of their products via online marketplaces, in order to preserve the luxury image of the goods.… Continue Reading
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