Section » Trademarks
Picture Is Not a Mandatory Requirement for a Website-Based Specimen of Use Submitted with Trademark Application
Federal Circuit reverses Trademark Office’s holding that an internet specimen of use must include a picture of the goods to be registrable. In re Michael Sones, Docket No. 2009-1140 (Dec. 23, 2009) In re Sones is an appeal from the Trademark Trial and Appeal Board’s (“TTAB”) rejection of Michael Sones’ registration application for the mark
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Trademark Cancellation Proceeding
In Trademark Cancellation Proceeding: Presumption Of Validity For Section 2(f) Registration Includes Presumption Of Acquired Distinctiveness; Record Automatically Includes Application File The Cold War Museum, Inc. v. Cold War Air Museum, Inc., No. 2009-1172 (Fed. Cir. Nov. 5, 2009) Federal Circuit reversed
Tampering with UPCs Can Constitute Trademark Infringement
On June 19, 2009, the U.S. Court of Appeals for the Second Circuit held that selling an otherwise genuine product with the trademark holder’s unique production code (UPC) altered or removed can constitute trademark infringement. Zino Davidoff SA v. CVS Corp., 571 F.3d 238 (2d Cir. 2009). Defendant
Federal Circuit Clarifies Fraud Standard in Trademark Cases
Court Overrules Medinol: In re Bose Corporation (Decided August 31, 2009) During the last six years, many an unwary trademark registrant has fallen victim to the harsh decision handed down by the USPTO’s Trademark Trial and Appeal Board (“Board”) in the 2003 case entitled Medinol v.
An IP Fight Broke Out At the ‘Canes Hockey Game
Hip-hop artist Tye Banks wrote and recorded the song “Carolina Hurricanes” after the Carolina Hurricanes won the Stanley Cup in 2006. In 2007, Banks and Hurricane management had an informal agreement that provided for the use of Banks’ song in connection with Hurricane hockey which lasted for a
When (Not) to Use the Doctrine of Foreign Equivalents and the Registration Symbol
In Brown Shoe Co., Inc. v. Robbins, Opposition No. 91176273, (TTAB May 13, 2009), Opposer Brown Shoe, owner of two PALOMA registrations for clothing and shoes, successfully blocked Applicant Robbins’ registration of PALOMITA for clothing on likelihood of confusion grounds. The Trademark Trial and Appeal
Plaintiff in Counterfeiting Case Cannot Receive Both Statutory Damages and Attorney’s Fees
In K & N Engineering, Inc. v. Bulat, 510 F.3d 1079 (9th Cir. Dec. 18, 2007), a case involving alleged counterfeiting, the Ninth Circuit Court of Appeals reversed the district court’s grant of both statutory damages and attorney’s fees. Plaintiff-Appellee K&N Engineering, Inc. (K&N) manufactures
American Airlines Sues Yahoo! for Trademark Infringement Based on Sale of Keyword Advertising
Three months after settling a similar keyword advertising case against Google, American Airlines has sued Yahoo! in the U.S. District Court for the Northern District of Texas (American Airlines, Inc. v. Yahoo! Inc., No. 4:2008-CV-626 (Oct. 17, 2008)). Plaintiff American Airlines, the world’s largest
Use of House Mark Insufficient to Avoid Confusion
Comparison of SPLENDA packaging (McNeil) and store-brand packaging (Heartland) In McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, No. 07-2644, 2007 WL 4478981 (3d Cir. Dec. 24, 2007), a case involving alleged trade
Selection of Associated Goods/Services Descriptions for U.S. Trademark Applications
Many applicants for U.S. trademark registrations, especially foreign applicants, prepare listings of associated products (“goods”) and/or services under a given trademark that are either not acceptable under U.S. trademark laws or are undesirable for several reasons. Even when such listings are acceptable