By: Susan Neuberger Weller Those of us in a certain age bracket will remember Mutual of Omaha’s “Wild Kingdom” television program that first began in 1963. The Emmy Award-winning show’s first run ended in 1986, and the show went into production again in 2002 for broadcast on the Animal Planet network. The show is about… Continue Reading
Category Archives: Trademark
Subscribe to Trademark RSS FeedThe New Generic Top-Level Domains and the New Trademark Clearinghouse: Deciding Whether to Register Your Brands
Posted in Anticybersquatting, Domain Name, gTLD Issue, Trademark, Trademark Infringement, Uniform Domain Name Dispute Resolution PolicyBy: Susan Neuberger Weller The Internet Corporation for Assigned Names and Numbers (“ICANN”) is the organization that oversees domain names worldwide. It recently began accepting new applications for expanding the number of generic top-level domains (“gTLDs”) on the Internet. The most popular gTLDs until now have included .com, .info, .org, and .net. With the approval… Continue Reading
A Primer on Policing Your Trademark
Posted in Trademark, Uniform Domain Name Dispute Resolution PolicyWritten by: Ben Wagner Five steps to protect a marks’ value Trademark owners have a duty to police their mark. This applies to all types of marks – brand names, slogans, color, product shapes, or even a smell. The cost of dropping the ball on this duty can range from a bar on future enforcement… Continue Reading
Are Dr. Dre’s Claims of Likelihood of Confusion and Dilution Enough to “Beat” His Opponents?
Posted in Dilution, Section 2(d), Trademark, Trademark InfringementWritten by Susan Neuberger Weller Rapper Dr. Dre and the company he co-founded, Beats Electronics, LLC, are on the offensive at the US Trademark Trial and Appeal Board challenging a multitude of third-party applications for marks which consist of or contain the word “Beat”. The company owns a number of trademark registrations for use of… Continue Reading
David Can Beat Goliath in the Trademark World… Just Ask Mixed Chicks!
Posted in Trademark, Trademark InfringementBy: Susan Neuberger Weller On November 2, 2012, a federal jury in the Central District of California awarded Mixed Chicks LLC, a beauty supply company for mixed-race women, $839,535 in actual damages and $7,275,000 in punitive damages for willfully infringing the MIXED CHICKS® trademark and trade dress with its MIXED SILK line of products. Mixed… Continue Reading
How Do You or Don’t You State a Case for A Declaratory Judgment in a Trademark Dispute?
Posted in TrademarkBy: Susan Neuberger Weller Ever since the US Supreme Court in MedImmune, Inc. v. Genetech, Inc., 549 U.S. 118, 127 S, Ct, 764, 166 L. Ed.604 (2007) threw out the “reasonable apprehension” test as defining the grounds for bringing a declaratory judgment action, courts have considered a wide variety of factual circumstances in deciding which… Continue Reading
Some Companies Must Do More To Protect Brand Identity
Posted in Copyright, TrademarkMy colleague Susan Weller recently authored an article for Law360 on protecting brand identity. You can view the article here: Some Companies Must Do More To Protect Brand Identity
Google and Rosetta Stone Settle AdWords Trademark Infringement Suit
Posted in Google Adwords, Trademark, Trademark InfringementWritten by Geri Haight Six months after the U.S. Court of Appeals for the Fourth Circuit reversed the district court’s dismissal of Rosetta Stone’s trademark infringement lawsuit against Google, the parties issued a joint statement today announcing that they have settled their legal dispute. The parties stated: “Rosetta Stone Inc. and Google have agreed to dismiss the… Continue Reading
Pattern Designs on US Navy Uniforms and Fabric Are Non-Functional Protected Trademarks
Posted in Product Configuration, Section 2(e) - Functionality, Trademark, Trademark Prosecution, Trademark Trial and Appeal BoardWritten by Susan Neuberger Weller A recent TTAB case addresses the issue of functionality and protection of design. In the case In re Navy Exchange Service Command, (“NEXCOM”), the TTAB issued a non-precedential decision on September 29, 2012 in which it reversed the Examining Attorney’s refusal to register four irregular block-shaped, multi-colored pixilated pattern design… Continue Reading
S. 3523: Louboutin, Lululemon, and Fashion Design: Finally Getting Some Respect?
Posted in Copyright, Copyright Infringement, Fashion, Legislation, TrademarkWritten by Susan Neuberger Weller A few weeks ago, the Second Circuit’s ruling in the Louboutin decision made clear that color as a trademark can be protected in the fashion industry. Recently, Lululemon has sued Calvin Klein for design patent infringement over the design of yoga pants. And just before Fashion Week in New York City, New York… Continue Reading
When Can You Claim A Color As Your Trademark?
Posted in Color, TrademarkWritten by Susan Neuberger Weller In its recent decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., the Second Circuit held there was no “per se rule that would deny protection for use of a single color as a trademark in a particular industrial context.” The Court found that the single color red on the… Continue Reading
Louboutin Wins Round Two Against Yves Saint Laurent in Fight Over Red Soles
Posted in Color, Fashion, Litigation, Trademark, Trademark InfringementWritten by Joseph DiCioccio The Second Circuit recently issued an opinion in the Louboutin v. Yves Saint Laurent trademark case. To refresh your memory, Louboutin, the high-end women’s shoe designer, had secured a U.S. trademark registration for the color red as used on the outsoles of women’s shoes. Yves Saint Laurent had been selling shoes… Continue Reading
Should Section 8 Affidavits of Continued Use be filed at Year Three?
Posted in Section 8 Affidavit, Trademark, Trademark ProsecutionWritten by Susan Neuberger Weller The U.S. Patent and Trademark Office on August 16 filed a request for comments regarding amending the first filing deadline for affidavits or declarations of use or excusable nonuse. 77 Fed. Reg. 49,425, and also published a notice of inquiry indicating that it was considering a fee adjustment for trademark applications…. Continue Reading
Legal Challenge To ICM Registry’s and ICANN’s .XXX gTLD Continues – What Are The Implications For Other gTLD Applicants?
Posted in .XXX Domain Names, Domain Name, gTLD Issue, TrademarkWritten by Geri Haight As we reported in December, two adult entertainment companies filed suit in federal district court in Los Angeles against the Internet Corporation for Assigned Names and Numbers (ICANN) and ICM Registry, the sole operator of the .XXX domain name registry. The complaint, filed by adult filmmaker Digital Playground Inc. and Manwin Licensing… Continue Reading
Sunbeam Decision Gives a Ray of Hope to Trademark Licensees
Posted in Bankruptcy, Trademark, Trademark LicensingWritten by Geri Haight Our colleagues in the Bankruptcy Section published a client advisory on a recent decision that has important implications for the bankruptcy rights of trademark licensees (and licensees of other forms of intellectual property). In Sunbeam Products, Inc. v. Chicago American Mfg., LLC, the Seventh Circuit examined whether the rights of a trademark licensee… Continue Reading
ICANN’s New gTLDs Program: Disputes, Comments and Objections
Posted in .XXX Domain Names, Domain Name, gTLD Issue, Trademark, Trademark InfringementWritten by Geri Haight What if someone applied for a new generic Top Level Domain (gTLD) that is confusingly similar to the gTLD applied for by your company? Who has standing to file an objection or to submit a public comment in response to an applied-for gTLD? These are the questions that many participants and observers… Continue Reading
Avoid a “Heart Attack”: Promptly Register Your Trademarks
Posted in Intent-To-Use Applications, Litigation, Trademark, Trademark Infringement, Trademark ProsecutionWritten by Susan Neuberger Weller On July 6, 2012, in Lebewohl v. Heart Attack Grill, LLC , a New York Judge made it possible, in the words of the Wall Street Journal, for people to continue to “Order Up a Heart Attack” in, at least, Las Vegas and Manhattan. Since 2004, the Second Avenue Deli, a… Continue Reading
Hershey Thinks Outside the Box (or the Candy Wrapper) in Seeking Trademark Protection for a Product Shape
Posted in Product Configuration, Trademark, Trademark Prosecution, Trademark Trial and Appeal BoardWritten by Susan Neuberger Weller On July 2, 2012, the U. S. Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB” or “Board”) granted Hershey’s request to register the design and shape of a chocolate bar as a trademark on the Principal Register. The design was described as “a configuration of a candy bar… Continue Reading
The List of gTLD Applicants: A Breakdown
Posted in Domain Name, gTLD Issue, TrademarkWritten by Geri Haight The list of gTLD applications and applicants, disclosed by ICANN yesterday, is a fascinating read. It provides an insight into how the Internet will be transformed (or, depending on your point of view, confused) in the coming years as new domain name extensions are introduced to consumers. But, at the outset, what… Continue Reading
Has Someone Applied to Register Your .BRAND? Find Out On June 13th
Posted in Domain Name, gTLD Issue, Trademark, Trademark InfringementWritten by Geri Haight Last year, the Internet Committee for Assigned Names and Numbers (ICANN), the organization responsible for the coordination of the global Internet domain name system, announced a plan to bring sweeping changes to the Internet’s generic top level domain (gTLD) structure. Internet users are familiar with gTLDs, if not by name. gTLDs… Continue Reading
Is It Proper To Say You Google On GOOGLE®?
Posted in Domain Name, Genericide, Litigation, Trademark, Uniform Domain Name Dispute Resolution PolicyWritten by Susan Weller Do you “google?” That is the essence of the question before the Federal District Court in Arizona in a Complaint filed on May 21, 2012 by David Elliott against Internet search engine giant Google, Inc. In Elliot v Google, Inc., CV-12-1072-PHX-MHB, Elliot claims that Google’s once distinctive mark GOOGLE® has become… Continue Reading
ICANN’s Trademark Clearinghouse: An Update
Posted in Domain Name, gTLD Issue, TrademarkWritten by Geri Haight As part of its plan to dramatically expand the Internet’s infrastructure beyond .com (and other pre-existing generic top level domains (gTLDs)), ICANN, the Internet Corporation for Assigned Names and Numbers, promised brand owners that a variety of additional trademark protection mechanisms would be put in place. One such mechanism is the Trademark Clearinghouse.
gTLD Batching Update: Digital Archery Services Available at a Price
Posted in Domain Name, gTLD Issue, TrademarkWritten by Jamison Arterton As ICANN struggles to get its application system back online, companies have begun lining up to make a profit off of the peculiarities of the application process itself. Pool.com, a domain name drop catch service provider, has recently announced a “Digital Archery Service” which, it claims, can help gTLD applicants get their applications… Continue Reading
The Latest From ICANN: New gTLD Application System Shut Down
Posted in Domain Name, gTLD Issue, TrademarkWritten by Jamison Arterton ICANN has temporarily taken the TAS application system for new generic top level domains (gTLDs) offline due to a “technical glitch.” According to ICANN, a technical problem allowed a limited number of users to view other users’ file names and user names. To protect the applicants’ data, on April 12, 2012,… Continue Reading
