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
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
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
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
While the world deals with the growing global pandemic caused by the novel Corona Virus, SARS-CoV-2, and the COVID-19 disease that it causes, some out there are trying to take advantage of the crisis by seeking trademark protection over COVID and/or CORONAVIRUS. These attempts are not only in bad taste but are also unlikely to … Continue Reading
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
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
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
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
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
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
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
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
On April 9, 2019, my IP colleagues Kerry Lee and Matt Jones published an informative post about using the ® and ™ trademark symbols – which are internationally used and recognized to signal trademark registration. As their post had a UK perspective, we thought it would be useful to provide a US perspective as well. … Continue Reading
Although it is very common to see the ® symbol on advertising and marketing materials in everyday life, how many consumers know what it means? And how common is it for brands to misuse the ® symbol? The ® symbol In the UK, you can only insert the small ® symbol after a mark if … Continue Reading
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
On the 14 January 2019, the Trade Marks Regulations 2018 (the Regulations) came into force in the UK, amending provisions in the Trade Mark Act 1994 and the Trade Mark Rules 2008, bringing UK trade mark law in line with that of the EU. The Regulations introduce changes to elements of the application process, disputes … Continue Reading
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
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
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
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
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
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
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