Searching for Civility in U.S. Trademarks

After more than a hundred years of settled U.S. trademark policy, an interesting problem has developed for the United States Patent and Trademark Office (USPTO). How to square the U.S. Supreme Court’s recent decisions striking down parts of the federal Lanham Act with the USPTO’s historical rejection of immoral, scandalous, or disparaging trademarks? Whether by coincidence or not, the timing is also interesting. “The coming rush to register such trademarks—and the Government’s immediate powerlessness to say no”[1] is coming at a time when civility in our public discourse is at a low ebb.

Interesting problems call for interesting solutions. This article examines the USPTO’s recent partial success involving the rejection of a trademark application for one particular profane word. Not just any profane word, however. Here we are dealing with the word described as “the big one, the queen-mother of dirty words, the “F-dash-dash-dash” word!”[2] Following our review of the recent U.S. precedent, we examine the potential broader implications on USPTO policy and compare this with that of other jurisdictions around the world.

Can a Difference in Punctuation between a Trademark in a Drawing and Specimen of Use be Allowed for Registration?

By Daniel H. Bliss of Howard & Howard on August 27, 2025 Posted in Advertising & Marketing, Branding, Copyright, Trademarks

By Dan H. Bliss

Suppose you want to register a trademark that identifies a source of goods/services for your business. What if the trademark on the specimen of use has punctuation that is different from the drawing of the trademark in the trademark application? Does the punctuation in the trademark specimen of use have to match the trademark drawing exactly? The answer is NO! if the trademark drawing is a “substantially exact representation” of the trademark specimen.

Global Giants vs. Local Legends: The Fanatics v FanFirm IP Battle Unpacked

By Jessica Bell of Kalus Kenny Intelex on August 13, 2025 Posted in Australia, Branding, Copyright, Legislation, Privacy Compliance, Protection & Enforcement, Trademarks

Fanatics, LLC v FanFirm Pty Ltd [2025] FCAFC 87

Jessica Bell, Associate – Kalus Kenny Intelex, Melbourne, Australia.

The Full Federal Court of Australia has passed judgment on a clash between local sports merchandiser, FanFirm Pty Limited, and a global opponent, Fanatics, LLC in a case about when the line between trade mark co-existence and infringement should be drawn.

The Players

Home Team: FanFirm Pty Ltd (FanFirm) – an Australian company operating since 1997 that specialises in arranges sports tours and selling related merchandise.

Away Team: Fanatics, LLC (Fanatics) – a major U.S based online retailer of officially licensed sports merchandise and apparel, selling through multiple via e-commerce platforms. Fanatics’ long list of officially licensed partnerships includes the NBA, F1, NFL and NASCAR.

The Trade Marks

This case concerns two of FanFirm’s registered trade marks. One is the word mark FANATICS and the other is the below device mark (the FanFirm Marks).

WHAT’S THE “USE”?:

By James P. Flynn of Epstein Becker Green and Ariana Tagavi of Epstein Becker Green on July 23, 2025 Posted in Artificial Intelligence, Copyright

Missed Anthropic Perspectives & Mixed AI Meta-Phors Cloud Copyright Law

By James Flynn & Ariana Tagavi,* Epstein Becker Green

The evolution of generative artificial intelligence has prompted courts in two highly-publicized recent federal district court decisions to apply copyright law’s doctrine of fair use to the “training” and output of generative AI systems. We will discuss those two cases—Kadrey v. Meta Platforms, Inc. and Bartz v. Anthropic PBC—in further detail below to illustrate the evolving legal issues surrounding this emerging technology. In addition to addressing AI-focused issues, these rulings revisit, and seem to reinterpret, copyright’s fair use doctrine in a manner displaying two shortcomings to our way of thinking:

First, the opinions appear to conflict with the Supreme Court’s nuanced analysis in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, particularly in their treatment of the first factor of fair use: the purpose and character of the use, and this piece will explore those inconsistencies, concluding that these AI decisions misapply, or insufficiently engage with, Warhol’s guidance on “transformativeness” and market substitution.

Second, these opinions also deal inconsistently, and ultimately unpersuasively for us, with the concept of “copying,” and the “learning” and “training” metaphors, used to describe how large language models (LLMs) are created and then work, leaving largely unexplored in the AI context the existing body of law under the doctrine of non-literal infringement, which prohibits unauthorized reproduction of protected expression beyond exact copying, as seen the Second Circuit decision in Castle Rock Entm’t, Inc. v. Carol Publ’g Grp., Inc. and in other cases.

Let’s turn to those issues now.

New SAG-AFTRA Commercials Contract Is Now in Effect

By Samantha G. Rothaus of Davis+Gilbert LLP, Jordan Thompson of Davis+Gilbert LLP, Howard Weingrad of Davis+Gilbert LLP and James L. Johnston of Davis+Gilbert LLP on July 16, 2025 Posted in Advertising & Marketing, Artificial Intelligence, Branding, Counterfeit Goods, Legislation, Online Content, Privacy Compliance, United States

Authors: James Johnston, Samantha G. Rothaus, Jordan M. Thompson and Howard R. Weingrad.

SAG-AFTRA and the Joint Policy Committee (JPC) have reached agreement on a new Commercials Contract, which is now officially in effect. Notably, the deal was reached without a strike — a rare outcome in recent entertainment-related collective bargaining where disputes, particularly over artificial intelligence (AI), have often led to stalled negotiations and significant production disruptions. A summary of the most notable updates is outlined below.

Navigating “Made in Canada” Claims in 2025

By Marie Lussier of Fogler Rubinoff LLP and Celia Ohayon on July 9, 2025 Posted in Advertising & Marketing, Branding, Canada, Copyright, Trademarks

By Marie Lussier of Fogler, Rubinoff LLP and Celia Ohayon

Since the start of the year, Canadian consumers and businesses have rallied behind the “Elbows Up!” movement and are looking to “buy Canadian”. Homegrown goods are in high demand, and origin claims like “Made in Canada” and “Product of Canada” are getting more attention than ever. These claims, however, are not just feel-good slogans. They are legal statements and their misuse can lead to penalties, regulatory action, and a loss of consumer trust.

What Changed (and What Didn’t)

On March 7, 2025, the Competition Bureau released updated enforcement guidelines for “Product of Canada” and “Made in Canada” claims. The updates did not change the legal requirements but clarified them to make the rules easier to understand and to apply.

Can Non-English Language Trademarks Be Refused Registration Based on the Foreign Equivalents Doctrine?

By Daniel H. Bliss of Howard & Howard on July 1, 2025 Posted in Branding, Copyright, Europe, Foreign Protection, Trademarks, United States

By Dan Bliss of Howard & Howard

Suppose that you want to register your trademark that is in a non-English language on goods or services for your business in the United States. Will your non-English language trademark need to be translated to English to determine its registrability? If so, can your English translation trademark be refused registration with the U.S. Patent and Trademark Office? The answer is YES! if the non-English language trademark is translated into English under the doctrine of foreign equivalents and found, for example, generic or merely descriptive when applied to the goods or services.

How does one determine whether their non-English trademark is registerable? By using the doctrine of foreign equivalents, one can determine whether a non-English language trademark is may be refused registration. E.g., In re N. Paper Mills, 64 F.2d 998 (C.C.P.A. 1933). The doctrine of foreign equivalents has been considered in likelihood of confusion refusals “to determine . . . similarity of connotation in order to ascertain confusing similarity with English word marks.” Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377 (Fed. Cir. 2005); see also 15 U.S.C. § 1052(d) (prohibiting registration when a proposed mark is “likely . . . to cause confusion, or to cause mistake” with another mark).

The Rise of Class Actions in Influencer Marketing: What Brands Need to Know To Protect Themselves

By Paavana L. Kumar of Davis+Gilbert LLP, Jordan Thompson of Davis+Gilbert LLP, Amy Marcus of Davis + Gilbert and Allison Fitzpatrick of Davis+Gilbert LLP on June 25, 2025 Posted in Advertising & Marketing, Branding, Copyright, Counterfeit Goods, Online Content, United States

Authors: Allison Fitzpatrick, Paavana Kumar, Jordan Thompson and Amy Marcus.

Class actions targeting prominent brands using influencers to advertise their products on social media are on the rise, accusing brands and their influencers of failing to properly disclose paid endorsements.

A series of recent cases targeting brands and their influencers rely on a similar set of facts – namely that consumers paid a premium for goods recommended by influencers that they might not otherwise have purchased, believing these recommendations were based upon the genuine opinions of these influencers rather than part of a paid ad. With damages sought in the tens to hundreds of millions of dollars, these class actions are proving to be a major concern for brands that engage in influencer marketing.

Major setback for Tiktok’s trademark rights in India

By Gaurav Bhalla of Ahlawat & Associates on June 18, 2025 Posted in Advertising & Marketing, Asia Pacific, Branding, Case Studies, Copyright, Legislation, Online Content, Trademarks

By Gaurav Bhalla of Ahlawat & Associates

The Bombay High Court recently affirmed the order of the Registrar of Trade Marks whereby TikTok’s application for declaration of its mark as well-known in India was disallowed. Interestingly, this decision (by the Bombay High Court) was not on merits but rather had a heavy influence of sovereignty and integrity of India, its defence and public order. This judgment might serve a message to trademark owners of global digital products to be cautious of the manner of operating their products in India.

TikTok was launched in India in 2017 and became an instant hit with its unique algorithm which offered tailored and engaging short-form content to users. TikTok also obtained a trademark registration further strengthening its trademark rights in India. Subsequently, it filed an application for declaration of its mark as well-known as per the procedure laid down under the Trade Marks Rules, 2017. Interestingly, while the application (for declaration of the mark as well-known) was being examined, TikTok was banned in India (in 2020) citing national security concerns (owing to allegations of data privacy owing to its servers located outside India, circulation of inappropriate content, etc.).

Uber’s Opposition Fails the Grade in Tutors Trade Mark Dispute

By Jessica Bell of Kalus Kenny Intelex and David Cinque on June 10, 2025 Posted in Australia, Branding, Copyright, Protection & Enforcement, Trademarks, United States

Jessica Bell – Lawyer, Kalus Kenny Intelex, Melbourne Australia

David Cinque – Special Counsel, Kalus Kenny Intelex

The Australian Trade Marks Office has permitted the registration of the trade mark UBER TUTORS after finding that transport and delivery giant, Uber Technologies Inc (Uber Tech) failed to oppose the mark’s registration under the Trade Marks Act 1995 (Cth) (Trade Marks Act).

Background

Uber Tech

Uber Tech, most commonly known as ‘Uber’, is well known for its on-demand transportation and delivery services. Uber Tech first began using the UBER trade mark in around late 2010 when the company began providing on-demand transportation services in the United States. Uber Tech quickly grew and by 2011, was providing on-demand transportation services internationally. The company has since expanded, offering on-demand food (Uber Eats) and package (Uber Connect) delivery, and a range of other services.