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Category Archives: Trademark

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A Scandalous Mark to Some, Free Speech to Others: Federal Circuit to Decide Whether Controversial Limit on Trademark Registrations Violates First Amendment

Posted in Disparaging Marks, Lanham Act, Section 2(a), Trademark Prosecution

The Federal Circuit has decided to revisit the constitutionality of Section 2(a) of the Lanham Act in the case of In re Shiao Tam, 2015 U.S. App. LEXIS 6840 (Fed. Cir. Apr. 27, 2015). Section 2(a) of the Lanham act allows the USPTO to reject the registration of a trademark that is immoral, scandalous, or… Continue Reading

…..and Don’t Even Think About Advertising a MARCH MADNESS Event Either!

Posted in Section 43(a), Trademark, Trademark Infringement, Trademark Licensing

Written by: Susan Neuberger Weller It is that time of year again, coming off St. Patrick’s Day celebrations, when everyone gets on the college basketball bandwagon in the season of “MARCH MADNESS.” Brackets are being completed, college jerseys are being pulled out of mothballs, bars and restaurants are hiring extra help, and work schedules are… Continue Reading

The Court’s Decision in the FLANAX US Trademark Dispute Gives Bayer a Headache

Posted in Lanham Act, Paris Convention, Section 43(a), Trademark

On February 6, the United States District Court for the Eastern District of Virginia reversed the US Trademark Trial and Appeal Board’s ruling in Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d 1623 (TTAB 2014) holding that Article 6bis of the Paris Convention does not grant trademark rights that are protectable under Section 14(3)… Continue Reading

Use It or Lose It: When Can a Trademark Registered Under Section 44(e) or 66(a) Be Deemed “Abandoned” in the US?

Posted in Fraud, Trademark, Trademark Prosecution

Unlike most countries, US trademark law generally requires that a mark be in use before it can be protected. The US recognizes common law rights in unregistered marks if they have been adopted in good faith and are in actual use on a product or to provide a service to the public. The US also… Continue Reading

Trademarks and Branding: Need Some Ideas for that New Product Name?

Posted in Intent-To-Use Applications, Searching and Clearance, Trademark, Trademark Prosecution

Written by : Susan Neuberger Weller The New York Times Magazine had a very interesting article in its January 18, 2014 issue entitled “Call It What It Is.” The article, written by Neal Gabler, looks into the methods and ideologies used to create new product brand names. As a trademark lawyer who has been practicing for quite… Continue Reading

Don’t Even Think About Advertising a SUPER BOWL Party!

Posted in Dilution, Famous Marks, Lanham Act, Litigation, Trademark

Written by: Susan Neuberger Weller As we all know, Super Bowl XLIX will be played this Sunday in Phoenix, Arizona between the defending Champion Seattle Seahawks and the New England Patriots. There will be events of all kinds organized all around the country focused on this football game. If you are planning something, just remember:… Continue Reading

The US Supreme Court Holds that Juries Should Decide the Issue of Trademark Tacking

Posted in Tacking, Trademark

Written by: Susan Neuberger Weller In the first substantive trademark decision it has issued in a decade, the US Supreme Court, in Hana Financial, Inc. v. Hana Bank, case number 13-1211 (January 21, 2015), affirmed the Ninth Circuit by holding that whether two marks may be tacked for purposes of determining priority is a question… Continue Reading

The US Department of Justice Seeks to Intervene in the Washington Redskins’ Trademark Suit to Defend the Constitutionality of the Lanham Act

Posted in Disparaging Marks, Lanham Act, Section 2(a), Trademark, Trademark Trial and Appeal Board, Uncategorized

Written by: Susan Neuberger Weller The Washington Redskins professional football team will soon not only be battling Native Americans over the registrability of the REDSKINS trademark, but will also have to cross swords with the US Government. Last week, the US Department of Justice filed a Notice of Intervention in the appeal of the US Trademark… Continue Reading

Top Ten Reasons Why US Trademark Searches are Important to Every Business

Posted in Domain Name, Searching and Clearance, Trademark

 As we ring in the new year, we thought we would remind everyone why the importance of a comprehensive trademark search  for a new company name and for a new trademark cannot be overstated: 1. Any word in any language can function as a trademark depending on how it is used. 2. Every business has… Continue Reading

Trademark Licensees May Be Protected in a Licensor’s Bankruptcy Even After a “Free and Clear” Sale

Posted in Bankruptcy, Trademark, Trademark Licensing

Written by: Kevin J. Walsh and Eric R. Blythe The Bankruptcy Code generally permits intellectual property licensees to continue using licensed property despite a licensor’s bankruptcy filing. However, because the “intellectual property” definition in the Bankruptcy Code does not include “trademarks,” courts have varied on whether trademark licensees receive similar protection. A New Jersey bankruptcy court… Continue Reading

It’s a Material IP World: Trademarks, Copyrights, Design Patents and Fabric Designs

Posted in Copyright, Copyright Infringement, Distinctiveness, Fabric Design, Fashion, Fashion, Product Design, Section 2(e) - Functionality, Section 2(f), Trademark, Trademark Infringement

Written by: Susan Neuberger Weller Fabric design is a creative art form that has existed for thousands of years. Although the methods for creating such designs have evolved, the purpose and function of such designs has not changed as significantly.  Fabric designs are used for purely ornamental and decorative purposes, for purposes of identity, and… Continue Reading

Washington Redskins Challenge the Constitutionality of Section 2(a) of the Lanham Act

Posted in Disparaging Marks, Section 2(a), Trademark, Trademark Prosecution, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller The Washington Redskins trademark controversy is far from over. Despite the fact that certain news and sports commentators and mainstream newspapers and organizations have announced that they will no longer use the term “Redskins” when reporting on the National League football team, and the fact that a variety of public… Continue Reading

Tesla Successfully Resolves Chinese Trademark Dispute

Posted in Foreign Filing, Trademark, Trademark Infringement

Further to our recent Tesla Motors post, Bloomberg and BNA report  that Tesla has resolved its trademark dispute with Zhan Baosheng, the individual who registered the TESLA marks in China. Chinese authorities will cancel the existing TESLA Chinese trademark registrations and all web site names registered by Mr. Zahn in China will be transferred to Tesla.  Needless to say,… Continue Reading

And Speaking of Foreign Trademark Filing Strategy: Tesla Motors is Sued in China for Trademark Infringement

Posted in Foreign Filing, Trademark, Trademark Infringement

Written by Susan Neuberger Weller Further to our recent post about the worldwide trademark trials and tribulations of Anheuser-Busch and its BUDWEISER trademark, we now  report that the up-and-coming electric car manufacturer Tesla Motors Inc. has been sued in China for trademark infringement by a Chinese businessman who registered the rights to the TESLA mark… Continue Reading

Trademark Rights around the World: It May Be BUDWEISER® in the US, But Not Everywhere

Posted in Foreign Filing, International Rights, Trademark

Written by: Susan Neuberger Weller   Anheuser-Busch, the venerable American beer brewer, and Budejovicky Budvar NP, a Czech beer brewer, have been fighting since the 19th century over rights around the world to the BUDWEISER trademark. A Czech town called Ceske Budejovice is the original source of this dispute. That town is known in German… Continue Reading

Let’s Set the Record Straight….the Redskins Still Own the REDSKINS Trademarks

Posted in Counterfeits, Disparaging Marks, Section 2(a), Trademark, Trademark Infringement, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller The overwhelming public reaction to the US Trademark Trial and Appeal Board’s June 18 decision canceling six REDSKINS trademark registrations on grounds that the mark disparaged Native Americans has been impressive. However, news articles, op-ed pieces, informal commentary, and anecdotal stories all evidence wide range confusion about and a misunderstanding… Continue Reading

“REDSKINS” US Trademark Registrations are Canceled for Disparaging Native Americans

Posted in Disparaging Marks, Section 2(a), Trademark, Trademark Trial and Appeal Board

Written By: Susan Neuberger Weller A three-judge panel of the US Trademark Trial and Appeal Board (TTAB), for the second time and in a 2-1 decision, has held that the REDSKINS trademark used in connection with professional football and related services by the Washington Redskins National Football League team was disparaging to a substantial composite… Continue Reading

U.S. Supreme Court Allows Pom Wonderful to Pursue Lanham Act Claims against Coca-Cola

Posted in Lanham Act, Litigation, Section 43(a), Trademark

Written By: Susan Neuberger Weller Further to our April 23 post on the Pom Wonderful-Coca-Cola U.S. Supreme Court case, the  Court on Thursday June 12 issued an unanimous decision (with Justice Breyer taking no part in the consideration or decision of the case) reversing the Ninth Circuit  and holding that competitors may bring Lanham Act… Continue Reading

Hershey Is Not So Sweet on Maryland Senator’s HERSHEY Campaign Logo

Posted in Color, Copyright, Copyright Infringement, Fair Use, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller When you think of The Hershey Company, you think of delicious chocolate candy bars, chocolate kisses, and a fabulous amusement park in Hershey, Pennsylvania. The company’s brown candy bar wrappers with the HERSHEY’S trademark prominently displayed on the front have been in use since, at least, 1905, and the company… Continue Reading

OOHRAH! A Few Good Trademarks: The U.S. Military’s Trademark Campaign

Posted in Trademark, Trademark Infringement, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller Recently, there was an interesting article in the The New York Times discussing the current state of military trademarks. Many people might think that federal and state government entities and agencies cannot, do not, or should not own exclusive rights in trademarks used in connection with commercialized products and services. However,… Continue Reading

Counterfeit Certification Marks: How to Certify that the “Certified” is Certified

Posted in Certification Marks, Counterfeits, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller We have all seen or heard about them without, perhaps, knowing what they were or for what they stand: the GOOD HOUSEKEEPING seal of approval, UL certified, ENERGY STAR rated, GROWN IN IDAHO potatoes,  HARRIS TWEED, and many, many more. They are called certification marks and they fall within the province of trademark… Continue Reading

Pom Wonderful and Coke in a Juicy Battle at the U.S. Supreme Court

Posted in Section 43(a), Trademark

Written by: Susan Neuberger Weller On Monday April 21, Pom Wonderful LLC, the maker of a line of POM WONDERFUL® pomegranate juice products, www.pomwonderful.com, and The Coca-Cola Company, which sells MINUTE MAID® juice products, www.minutemaid.com, battled it out before the U.S. Supreme Court on the issue of whether a private party can bring a claim… Continue Reading

Houston, We Have a Problem: City Petitions the US Supreme Court to Register Its Official Seal as a Trademark

Posted in Color, Emoticon, Legislation, Product Configuration, Section 2(b), Trademark, Trademark Prosecution, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller The City of Houston, Texas has filed a Petition For Writ Of Certiorari with the Supreme Court of the United States asking the Court to interpret Section 2(b) of the Lanham Act to determine whether it prohibits a government entity from federally registering its own flag or coat of arms… Continue Reading