Since August 3, 2019, all foreign-domiciled U.S. trademark applicants, registrants and parties to proceedings before the United States Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board must be represented by an attorney licensed to practice law in the U.S. (as defined in 37 C.F.R. § 11.1). Such U.S. licensed attorneys are required to both affirm that they are members in good standing with the Bar of a state, and provide bar membership information. This new rule also applies to Canadian patent agents who previously represented parties with matters before the USPTO, as well as Canadian trademark attorneys and agents. Canadian patent agents who are reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED) may be appointed as additional practitioners in connection with an application or USPTO proceeding, but must be accompanied by a U.S.-licensed attorney who has separately been appointed to the matter. Continue Reading
Application for the Chinese Translation of a Foreign Trademark as a Trademark with Knowledge of Likelihood of Confusion Considered in Bad Faith
Chinese (Mandarin) is the national language in Taiwan. To expand the market in Taiwan, many foreign companies will select the Chinese translation or transliteration of their foreign brands as locally used brands (trademarks) so that the consumers in Taiwan may identify more easily. However, in Chinese language, one character may have multiple pronunciations or meanings. Given this, one foreign trademark might have multiple alternative ways of Chinese translation or transliteration.
When comparing a foreign trademark with its Chinese translated or transliterated version on their own, there might not be similarity between the two under the traditional standard of trademark similarity. Accordingly, when the Chinese translated or transliterated version of a foreign trademark was applied or registered as a trademark in bad faith, it has been uncertain whether there is a likelihood of confusion under the current practice in Taiwan. In a recent administrative case regarding a trademark opposition, the Intellectual Property Court had addressed this issue and held in the instant case that if the applicant maliciously knew the likelihood of confusion and still applied for the Chinese translated or transliterated version of a foreign trademark, the application is considered to be filed in bad faith and should not be accepted. Continue Reading
PATENT TROLL SUITS DOWN, NOT OUT IN 2018
Over the past half-decade, Congress and the courts have made aggressive efforts to curb the worst abuses of the patent system. In 2013, Congress passed the America Invents Act (AIA), which established the Patent Trial and Appeal Board (PTAB) to hear patent validity challenges outside of the federal court system. In 2014, the U.S. Supreme Court issued its landmark ruling in Alice v. CLS Bank (Alice), which led to thousands of software and business method patents being labeled unpatentable “abstract ideas.” And, as we reported in the 2017 edition of Trends in Marketing Communications Law, the Supreme Court issued TC Heartland v. Kraft Foods (TC Heartland), which neutralized the patent-friendly Eastern District of Texas (ED Tex), and narrowed the potential venues for patent suits. Continue Reading
NO LONGER “FUCT” – SCANDALOUS MARK PROVISION STRUCK DOWN BY SUPREME COURT
What constitutes a “scandalous” trademark? The United States Patent and Trademark Office (USPTO) has been grappling with this question since the enactment of the 1905 Trademark Act, later codified in the 1946 Lanham Act, which forbids registration of any mark that “[c]onsists of or comprises immoral . . . or scandalous matter.” Since the creation of this provision, the USPTO has regularly rejected marks for being “scandalous.” Now, after the 6-3 Supreme Court opinion issued on June 24, 2019, the USPTO will no longer be the arbiter of what constitutes a “scandalous” mark.
In 2017, when the Supreme Court issued its historical decision allowing the federal registration of “disparaging” trademarks in Matel v. Tam, many thought the holding would also encompass so-called “scandalous” marks. Just months after the Supreme Court’s ruling on “disparaging” marks, the Federal Circuit struck down the “scandalous” trademark ban on similar grounds, and, in doing, so overruled the Trademark Office’s refusal to register the mark FUCT for an apparel company in In re Brunetti. Continue Reading
WORLD FAMOUS (By, Say, New Jersey Standards): Expanding The Right Of Publicity Nationally And Internationally
Chuck Wepner (for at least one night in 1975 and then through the “Rocky” avatar).
At least some of the people that rest stops on the New Jersey Turnpike are named after.
These public figures are, or were, world-famous, and certainly had made a name for themselves outside of the Garden State, even if their growth as artists, authors, sports figures or icons was at some point nurtured in the fertile ground of the third state to enter the union. But, if either Springsteen or Sinatra, for example, wished to protect their image on the world stage or before a national audience, neither could invoke, directly or effectively, federal or international law. Continue Reading
A NEW MECHANISM FOR PROTECTING FASHION COMPANIES IN RUSSIA
At the end of June a mechanism providing for temporary protection of industrial designs was introduced into the Russian legal system. In short it requires somebody who uses an industrial design during the period of its patenting to pay compensation to the future holder of the patent. Previously, this type of protection was available only for inventions – although it is still not available for utility models, which are also patentable in Russia.
Authors of the amendments said that this measure is a good way to protect interests of fashion industry in Russia, but let’s check if this is the case. Continue Reading
Establishment of the Intellectual Property (IP) List in the Court of First Instance of the Hong Kong High Court
According to the 2018 Global Competitiveness Report released by the World Economic Forum, Hong Kong was ranked 9th out of 140 economies in terms of IP protection. In accordance with the recommendations made by the Working Group on IP Trading in 2015 (of which the writer is a member), a wide range of measures were introduced to enhance Hong Kong’s role as an IP trading hub to serve overseas IP owners/users as well as those in Mainland China (rising as a major intellectual property user, buyer, provider and seller) including those on legal services and dispute resolution. Continue Reading
Simon Cowell picks bone with “The Pets Factor” UK trade mark
When TV format creator Mark Duffy struck upon the tongue-in-cheek name “The Pets Factor” for what was (presumably) a talent competition for domestic animals, he might well have smiled at his own ingenuity. Conversely, when Simon Cowell heard about the name (via Mr Duffy’s application to register it as a UK trade mark in classes 9 (software) and 41 (entertainment services)) we can guess he probably wasn’t smiling (or if he was, it was probably more of a grimace). Instead, and acting via his company Simco Limited (in conjunction with Freemantle Media) (Simco), Mr Cowell wasted no time in instructing his lawyers to oppose Mr Duffy’s application, which he had made via his company Duf Ltd.
Simco opposed the application on numerous grounds under the Trade Marks Act 1994 (TMA), relying on both registered and unregistered rights in THE X FACTOR (X Factor brand). An important element of Simco’s opposition was the significant reputation and goodwill that it said had developed in the X Factor brand since the singing competition first aired in 2004. Simco argued that THE PETS FACTOR (Pets Factor brand) would amount to a misrepresentation of the origin of Mr Duffy’s proposed services (so-called “passing off”), and was therefore prohibited under section 5(4)(a) TMA. Continue Reading
Understanding Trademarks Act Changes
On June 17, 2019, Canada’s Trademarks Act changed, resulting in its modernization. Canada has now joined five international intellectual property treaties, including the Madrid Protocol, Singapore Treaty and Nice Agreement, all related to trademarks.
There has been a great deal of activity to get ready for the changes. To implement the changes, the Canadian Trademarks Office had to update its technology, hire and train new staff and modify its processes and procedures. It also held national training events and webinars to inform the public. Lawyers and agents who work in the trademark field have had to alter their processes and procedures and learn about the consequences. Here are the highlights: Continue Reading
District of Delaware Update
Last August, two new judges joined the United States District Court for the District of Delaware, Judge Colm F. Connolly and Judge Maryellen Noreika. Judge Connolly filled the seat previously held by Judge Sue L. Robinson and Judge Noreika filled the seat previously held by Judge Gregory M. Sleet. In recent months, both Judge Connolly and Judge Noreika have each adopted new procedures for dealing with case dispositive motions.
Judge Connolly has adopted two form scheduling orders for patent cases, one for cases in which infringement is alleged and one for cases in which only invalidity and not infringement is alleged. Both form scheduling orders permit case dispositive motions after discovery has closed and follow the practice in the District of Delaware which prohibits early case dispositive motions absent leave of the Court. Judge Connolly requires that any motion for summary judgment be accompanied by a separate concise statement detailing each material fact as to which the moving party contends that there are no genuine issues to be tried that are essential for the Court’s determination of the summary judgment motion (not the entire case). Any party who opposes the motion is required to file with its opposing papers a separate document containing a single concise statement that admits or disputes the facts set forth in the moving party’s concise statement, as well as sets forth all material facts as to which it is contended there exists a genuine issue necessary to be litigated. Continue Reading
