A mere three and a half years after the 2016 referendum on membership of the European Union, the UK looks set to “leave” the EU on 31 January 2020. Instead of exiting without a deal (which at one stage looked distinctly possible), the UK’s departure will be pursuant to the New Withdrawal Agreement. Under this … Continue Reading
Within a year after the 1787 Edinburgh edition of his poems, American editions…were published in both Philadelphia and New York. Ever since we [Americans] have adopted the beauty, the humor and the wisdom of Robert Burns as part of our own culture and our own idiom—-often, even usually, without knowing the source in Scotland’s ploughman poet. … Continue Reading
As a principle, Taiwan adopts a “first to file” trademark registration system. Under the system, fame and extensive use are not the requirements for registering a trademark. In addition, under Article 2 of the Trademark Act in Taiwan, the holder of a trademark cannot claim its right under the Act unless the trademark has been … Continue Reading
Before you begin selling your products on a U.S. online marketplace like Amazon, Etsy or Rakuten, there are three intellectual property considerations to make: clearance, acquisition and enforcement. This article provides a summary of all three considerations and includes steps to take to help mitigate risk, decrease instances of infringers and position your product for … Continue Reading
Sports and sports teams have a long history with intellectual property law and, more specifically, trademarks. Sports teams, colleges, and universities have long trademarked their names and logos, and have routinely and aggressively enforced those rights. In 1988 Pat Riley, then the head coach of the National Basketball Association’s Los Angeles Lakers, applied for a … Continue Reading
A federal district court in California has awarded a $2.7-million default judgment to Kim Kardashian West in her lawsuit against a fast fashion online retailer that allegedly used her persona and likeness to sell its clothing, in part by repeatedly tagging her on Instagram and linking to the retailer’s e-commerce site. Kardashian West’s suit is … Continue Reading
The use of artificial intelligence (AI) in the fashion and beauty industries — and the marketing of the same — has steadily gained traction over the last few years and it’s not hard to see why. AI provides a myriad of opportunities and potential applications within the fields of fashion and beauty, but it can … Continue Reading
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 … Continue Reading
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 … Continue Reading
Springsteen. Sinatra. 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 … Continue Reading
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 … Continue Reading
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 … Continue Reading
Settling a circuit split, the U.S. Supreme Court, in an 8-1 decision, has concluded that a trademark licensee’s rights are not automatically terminated when a debtor in bankruptcy rejects the license agreement. The case, Mission Product Holdings, Inc. v. Tempnology, LLC (Mission Product), arose from a pre-bankruptcy trademark license agreement between Tempnology, LLC, the bankrupt debtor, and … Continue Reading
The descendants of a well-known Danish scientist could not prevent the commercial use of the name ØRSTED as a trademark, domain and company name by the Ørsted Group (former Dong Energy A/S). The parties to the dispute Before going into the details of the dispute, the parties are briefly presented in the following. H.C. Ørsted … Continue Reading
2018 saw a number of important trademark cases decided across the United States. Two cases illustrated the similarities between genericness analysis and one of the likelihood of confusion factors considered by the Trademark Trial and Appeal Board (“TTAB”). Royal Crown Co., Inc. v. The Coca-Cola Co., 892 F.3d 1358 (Fed. Cir. 2018) and Omaha Steaks … Continue Reading
Suppose that you want to register a trademark that identifies a source of goods or services for your business. What if the trademark is immoral or scandalous? Should you register your scandalous trademark with the U.S. Patent and Trademark Office? The answer may be YES! In Matal v. Tam, 582 U.S. ___ (2017), the U.S. … Continue Reading
Are apples different from pears? Or are they both just fruit? Or, as cockney rhyming slang would have it, are they stairs? These are the questions (excepting the last one) that the distinguished judges of the Court of Justice of the European Communities (CJEU) have been gr-apple-ing with in the recent case of Pear Technologies … Continue Reading
There is a popular vintage Harley Davidson t-shirt that says “Tough Guys Finish First.” That may be true. But, sometimes, to finish first, one does not need more tough guys; one needs more lawyers, as a crime-related matter involving the Mongols Motor Cycle Club has recently shown. So today we thought that we would use … Continue Reading
The Federal Court recently handed down its decision in Calico Global Pty Ltd v Calico LLC1. This decision highlights the potentially fatal consequences of not updating the IP Australia register to reflect a change in trade mark ownership. The decision also serves as a reminder of the fundamental importance of ensuring that the owner of … Continue Reading
The Federal Trade Commission (FTC) recently decided that agreements reached by 1-800 Contacts, Inc. with a number of its competitors to settle claims that the competitors’ online search advertising infringed on 1-800 Contacts’ trademarks unlawfully restricted the competitors’ ability to engage in search engine marketing, to the detriment of both consumers and search engines. The … Continue Reading
in PDF format CATEGORY: Trademarks CASE: Sony vs. PAG DETAILS: Resolution of the Constitutional Court No. 8-P dated 13 February 2018 SUMMARY: Unlike the counterfeit, the original (grey) product cannot be destroyed under the court judgment (unless it endangers human health, the environment or cultural heritage) and it is impossible to recover a large compensation… Continue Reading
The Amazon Marketplace, an online sales platform for third-party sellers, has seen a significant increase in popularity. It is not, however, the only third-party sales platform, Walmart.com, e-Bay, and Etsy are other popular marketplaces in the U.S., and all offer great ways for international sellers to enter the U.S. market. There are, however, some IP … Continue Reading
June 17, 2019 is the big day – a day anticipated since 2014. The major changes to the Canadian Trademarks Act will be implemented on this day. What does this mean for trademark owners? These changes will affect the types of trademarks which are protectable, the basis for registration, the procedures for filing trademarks, the … Continue Reading
Suppose that you want to register a trademark that identifies a source of goods or services for your business. What if the trademark describes a geographical area such as eastern? Should you register your trademark with the U.S. Patent and Trademark Office? Can you obtain a registration from the U.S. Patent and Trademark Office? The … Continue Reading
