Tag: Trademarks

Korean Patent Court Finds: Use of Outback motel mark unfairly competes with mark for restaurant services

In a suit alleging trademark infringement and unfair competition, the Korean Patent Court concluded that the use of the mark “” in connection with “unmanned lodging services” used for so-called love motels with an image of a naked woman, did not infringe Outback Steakhouse’s trademark.  But it did constitute unfair competition because that use harmed … Continue Reading

“EACH DAY HAS A COLOR, A SMELL…”: Searching For New Trademark Worlds

The search for spices, and the gold that one expected to find nearby (or earn through sale of the spices), in many ways drove the Age of Exploration.  And spices still hold a special place in our economy and in our imagination; in fact, we believe that spices “all hold magic.” Part of that magic … Continue Reading

Can Trademarks Related to Cannabis be Protected?

Suppose that you want to federally register a trademark that identifies a source of goods or services related to your cannabis business.  What if the trademark covers merchandise indirectly related to cannabis or products directly related to the use of cannabis?  Should you attempt to register your trademark with the U.S. Patent and Trademark Office?  … Continue Reading

Obtaining Statutory Damages for Trademark Infringement – A Cross Border Approach under the Trademark Act of the Republic of Korea

** Originally published by DRI in the DRI IP Committee newsletter** Recently the Korea Supreme Court issued a significant ruling, providing guidance on the availability of statutory damages in trademark infringement actions.  This article discusses that ruling. Under the Trademark Act of the Republic of Korea (“the Act”), a trademark owner is entitled to receive compensation … Continue Reading

“…as best as your interests don’t conflict with mine”: Lawyers Fighting Over Intellectual Property

When one thinks about lawyers and Shakespeare, many recall the oft-quoted and misunderstood statement “the first thing we do, let’s kill all the lawyers.”  ‘Henry VI,” Part II, Act IV, Scene II, Line 73.  But my favorite, as a better reflection of the best of our lot, is: Sir, I shall not be slack; in … Continue Reading

CHANGING CANADIAN TRADEMARK LAWS – THE NEXT STEPS

As part of the implementation of various changes to Canadian Trademark Laws, the Federal Government of Canada released in June, 2017 the new proposed Trademark Regulations for public consultation. Canada has been modernizing its trademark law, including by moving to join three International Treaties administered by the World Intellectual Property Organization (WIPO) dealing with trademarks.  … Continue Reading

Amendments to the pre-trial procedure for IP disputes

On June 1, 2016, the mandatory pre-trial procedure came into force. On May 26, 2017 the State Duma approved in the second reading amendments to the current pre-trial procedure. Under the amendments, the pre-trial procedure extends only to the monetary disputes. The amendments (art. 1252 of the Russian Civil Code) also directly prescribe that the pre-trial procedure … Continue Reading

Can Trademarks Violate Free Speech?

Suppose that you want to register a trademark that identifies a source of goods or services for your business.  What if the trademark may be scandalous or disparage a particular group of people?  Should you register your trademark with the U.S. Patent and Trademark Office?  Can you obtain a registration from the U.S. Patent and … Continue Reading

Matal v. Tam – Disparaging Trademarks are Registrable

It is well known that the trademark laws of the United States differ substantially from the trademark laws of countries around the world.  The United States Supreme Court recently clarified that ‘offensive’ trademarks are registrable, further differentiating the United States from the majority the world. Morality Refusals Many jurisdictions have prohibitions against registration of marks … Continue Reading

Which is the future for movement trademarks in Europe? A work in progress…

EU Regulation no. 2015/2424, entered into force on March 23, 2016, introduced a number of changes to the European trademark regime. Among them, the amended regulation provides for the abolition of the graphic representation requirement. This implies that, as of October 1, 2017, signs may be represented in any suitable form, using the available technology, … Continue Reading

U.S. Supreme Court Invalidates Statutory Provision against Offensive Trademarks

Although U.S. common law trademark rights are gained through use of the mark in commerce (without registration), registration of a trademark with the U.S. Patent and Trademark Office (“USPTO”) provides the owner with additional rights and benefits.  These include nationwide enforcement of the mark against infringers; constructive notice of the registrant’s claim of ownership of … Continue Reading

Picking: A Few IP Collectibles Since My Last Post

There is a popular television show in the United States called American Pickers, which follow the adventures of antique and collectible “pickers” Mike Wolfe and Frank Fritz.  Wolfe and Fritz travel around in a van with the logo Antique Archeology to buy, or “pick,” various items for resale, for clients, or for their own personal … Continue Reading

CAN YOU SLEEP AT NIGHT – YOU NEED TO KNOW ABOUT INJUNCTIONS IN CANADA

The mattress business is a competitive one!  Trade-marks in the mattress business are valuable! Sleep Country Canada Inc. is a major mattress retailer in Canada.  It is best known for its slogan “Why Buy a Mattress Anywhere Else?”.  It owns two Canadian trade-mark registrations for this slogan.  This trade-mark, together with its accompanying musical jingle, … Continue Reading

USPTO Adopts New Regulations for Trademark Specimens of Use

Unlike the practice in many countries, in most cases the U.S. requires a trademark owner to place the mark into actual use in commerce and provide specific types of proof of use before the registration certificate will issue.  Similar requirements apply to the mandatory declaration of use to maintain or renew a U.S. registration.  Effective … Continue Reading

CALIFORNIA MEN PLEAD GUILTY TO $1.66 MILLION TRADEMARK SCAM

As often as we warn our clients about unscrupulous companies that prey on trademark owners using notices and invoices that appear to come from government agencies, these worldwide scams continue to reap large quantities of fraudulent proceeds.  The U.S. Patent and Trademark Office (“USPTO”) works in a variety of ways to alert the public to … Continue Reading

TTAB ADAMANTLY REFUSES TO CHANGE MARIJUANA TRADEMARK POSITION

When we last left the Trademark Trial and Appeal Board (“TTAB,” an administrative arm of the U.S. Patent and Trademark Office), they had issued a precedential opinion that registrations could not be issued for marks that covered the sale and use of marijuana products or paraphernalia primarily intended or designed for use in ingesting or … Continue Reading

IS YOUR TRADEMARK MERELY DESCRIPTIVE?

In the United States, a trademark can be refused registration on the Principal Register because the trademark is deemed merely descriptive.  If the trademark is not allowed for registration on the Principal Register, it may be eligible for registration on the Supplemental Register.  So, how do you determine if your mark is descriptive and which … Continue Reading

Food Fight and Road TRIPS!!!!!: Treaties And Product Names Getting Messy

Two words, uttered in a certain tone and with a certain speed, are apt to suggest a bit of wastefulness, a touch of anarchy, and yet a sense of communal participation.  Those two words, from Faber College of lore to present discussions of law: Food Fight!!!!!.  And, we see the long smoldering discussions of geographical … Continue Reading

SMOKE SIGNALS FROM SPECIMEN OF USE SUPPORT REGISTRATION REFUSAL FOR “HERB” SALES DESCRIBED IN APPLICATION

In a precedential opinion, the Trademark Trial and Appeal Board (“TTAB,” an administrative arm of the U.S. Patent and Trademark Office) affirmed the trademark examiner’s refusal to register HERBAL ACCESS for retail store services featuring “herbs.”  Although the application did not mention marijuana as one of the “herbs” being sold, applicant Morgan Brown’s specimen of … Continue Reading

What’s Your Evidence? The Danger of Hearsay Evidence in IP Litigation

In Pfizer Canada Inc. v. Teva Canada Limited, 2016 FCA 161, the Federal Court of Appeal (“FCA”) recently overturned a substantial damages award in a pharmaceutical patented medicines action on the basis that the trial judge admitted improper hearsay evidence. This is an important reminder that the hearsay rule of evidence is alive and well. At … Continue Reading

Implications of Brexit on Trademarks in the EU

The United Kingdom’s vote on June 23, 2016 to withdraw from the European Union has left many issues in flux, including the rights of owners of European Union Trademark registrations (EUTMs), formerly Community Trade Marks (CTMs). While details of the separation have yet to take shape, below are some points to keep in mind:… Continue Reading

Nuthin’ but a Leaf Thang – Toronto Maple Leafs take issue with Snoop Dogg’s trade-mark application for LEAFS BY SNOOP Logo

Maple Leaf Sports & Entertainment Partnership (“MLSE”), the parent company of the National Hockey League’s Toronto Maple Leafs, has requested an extension of time to oppose a U.S. trade-mark application filed by one Calvin Broadus – better known as Snoop Dogg (“Snoop”) – for a logo featuring the words LEAFS BY SNOOP on a leaf-shaped … Continue Reading

New Fee Proposal for Trademarks in Canada

The Canadian Intellectual Property Office (CIPO) has published a Fee-for-service proposal (the Proposal), seeking public input by July 5, 2016.  The Canadian government significantly amended the Trade-marks Act (the Act) in 2014, in order for Canada to accede to the Singapore Treaty, the Nice Agreement and the Madrid Protocol. Those amendments have not yet come into force, however, pending the adoption of new Regulations on … Continue Reading
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