Archives: Trademarks

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EU Trade Mark Reforms Given the Green Light – Brand Owners Will Benefit

We previously reported on anticipated reforms to the trade mark system across the EU.  The European Parliament has now approved the reforms as of December 15, which is a little earlier than expected.  These reforms will impact the Europe-wide Community trade mark system as well as the national trade mark system of each EU member state. … Continue Reading

Webinar: Leveraging USPTO Technology Evolution Pilot Program

We recently reported on the United States Patent and Trademark Office’s new Technology Evolution pilot program, under which certain amendments to identifications of goods or services due to changes in evolving technology may be allowed.  There have been just over a dozen of these petitions filed since the pilot inception date of September 1, 2015.  However, most of … Continue Reading

USPTO Pilot Program: Trademark Registration Owners May Now Be Able to Broaden their Goods and Services

Did your company at one time obtain a trademark registration covering goods that can now be considered “old technology,” such as music cassettes, VHS tapes, or floppy discs?  And now that your company has moved on to newer technology, such as downloadable music files, pre-recorded DVDs, or online software, you’re afraid that your long-standing registration … Continue Reading

OHIM: DETOX is not descriptive for the characteristics of “beers”

In CREW Republic Brewery GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case R167/2015-4), the Fourth Board of Appeal of OHIM has found that the registration of the word mark DETOX as a Community trademark (CTM) for “beers” in Class 32 is eligible for registration because its meaning is neither descriptive, nor does … Continue Reading

Disparaging marks: The Washington Redskins Made a Foul Play

Related to our recent blog post on immoral marks, U.S. trademark law also prohibits registration of trademarks that consist of “matter which may disparage … persons, … institutions, beliefs, or national symbols.”  This Section of the Lanham Act is central to the long-running controversy over the name of the well-known professional football team, the Washington … Continue Reading

Investing in IP makes good business sense

Profitable companies may be considering how to invest their extra dollars.  “Investing in IP is a good choice,” says Squire Patton Boggs attorney Bryan Sims, who authored a blog titled “Ready For Investment? Three Reasons Why IP Matters.” Bryan gives three reasons why investing in IP makes sense.  First, the IP rights that are generated from innovation … Continue Reading

Trademark Protection: Strategies for Cuba

Following President Obama’s December 2014 announcement of a relaxed policy towards Cuba, many companies await the opening up of the Cuban market. Some steps can be taken now to protect a company’s valuable trademarks and other IP in Cuba. An exception to the long-standing US embargo on trade with Cuba permits US companies to file … Continue Reading

Supreme Court Decision Underscores the Importance of TTAB Cases

In B&B Hardware, Inc. v. Hargis Industries, Inc. (No. 13-352), the U.S. Supreme Court settled the question whether a finding by the Trademark Trial and Appeal Board (“TTAB”) can trigger issue preclusion in later federal court litigation.  The Court held that “[s]o long as the ordinary elements of issue preclusion are met, when the usages … Continue Reading

The thorny issue of keyword advertising: Interflora and M&S dispute set for retrial

Last year, we brought you news of Interflora’s victory against Marks & Spencer (“M&S”) in a keyword advertising dispute where M&S were found liable for trade mark infringement by the UK High Court. In a dramatic turn of events, the Court of Appeal has overturned the original decision and ordered a retrial by the High … Continue Reading

Quicker EU-wide trade mark protection is now possible (at no extra cost)

The Office for Harmonization in the Internal Market (OHIM – the EU trade mark office) has announced the introduction of a new accelerated procedure for handling Community Trade Mark (CTM) applications.  ‘Fast Track’ guarantees that the early stages of the CTM application process will be dealt with quickly by providing for the expedited examination and … Continue Reading

Hot Topics in Intellectual Property and Technology – Summer Edition

We are pleased to share with you our quarterly bulletin – Hot Topics in Intellectual Property and Technology. This bulletin highlights some topical developments in the UK in the areas of intellectual property and technology, contract, data privacy, trade secrets and advertising and media.  Our Hot Topics briefing is intended to keep you abreast of key … Continue Reading

UK Intellectual Property Office Succeeds in Proceedings against Companies Masquerading as the IPO

The UK Intellectual Property Office (IPO), the official body that grants registered IP rights in the UK, has announced that it has succeeded in legal proceedings against two individuals who ran companies pretending to be the IPO.  In May, the IPO issued passing off proceedings against Aleksandrs Radcuks and Igors Villers, the two individuals behind … Continue Reading

What The Specsavers Decision Taught Brand Owners and the UKIPO

Some useful lessons for brand owners have come out of the recent rulings by the UK and European courts in the trade mark and passing off claim by Specsavers against Asda.  These lessons relate particularly to trade mark registration strategy.  Intellectual property specialist Andrew Clay of Squire Patton Boggs has written an article analysing the rulings … Continue Reading

IP Rights-Holders Given New Powers under EU Customs Laws

In a recent judgment, Europe’s highest court in civil matters, the Court of Justice of the European Union (CJEU), expanded the scope of the EU Customs Regulation.  It ruled that EU customs authorities have the power under the Regulation to seize and detain goods suspected of infringing intellectual property (‘IP’) rights where those goods have … Continue Reading

Hailing on the Redskins

Instead of “Hail to the Redskins” –the traditional fight song of the Washington Redskins Football Team – it has been “hailing on the Redskins” at the U.S. Trademark Office. On June 18, 2014, the Trademark Trial and Appeal Board (TTAB) ordered the cancellation of federal trademark registrations for six REDSKINS marks.  Blackhorse v. Pro-Football, Inc. (TTAB … Continue Reading

Celebrity Tweets Can Cost You Millions

With 255 million monthly active Twitter users and more than 1 billion active Facebook users, social media platforms are powerful tools for companies to build relationships with their consumers and share information about their products.  Although social media offers companies a wide variety of opportunities to engage consumers, such as through conducting online promotions or … Continue Reading