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Category Archives: Trademark

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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

Can an Emoticon be Protected as a Trademark?

Posted in 15 U.S.C. 1051(b), Emoticon, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller Gap Inc. and Diane Von Furstenberg’s company DVF Studio have asked the federal court in the Southern District of New York to rule on whether the heart emoticon <3 can be protected as a trademark. Their declaratory judgment complaint filed against VeryMeri Creative Media Inc., 13 civ 8943 (December 17, 2013),… Continue Reading

TTAB Refuses to Register “The Slants,” Finding it to be “Disparaging”

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

Written by: Susan Neuberger Weller Racial and ethnic disparagement is a hot topic at the Trademark Trial and Appeal Board these days. While a decision is still pending in the latest cancellation action involving the long disputed WASHINGTON REDSKINS professional football team marks, the Board in In re Simon Shiao Tam, recently affirmed a federal… Continue Reading

Oops! Assignment of Intent-to-Use Trademark Applications: Easy But Not Simple

Posted in 15 U.S.C. 1051(b), Assignment, Intent-To-Use Applications, Trademark, Trademark Prosecution, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller  The language in the Trademark Act is very clear on the issue of assignment of intent-to-use applications.  In a recently issued precedential opinion, the Trademark Trial and Appeal Board has held, once again, that Section 10(a)(1) of the Act really means what it simply states, namely, that prior to filing… Continue Reading

The (Best) Method to the Madness Behind Choosing a Company Name or Mark

Posted in Arbitrary marks, Descriptive marks, Fanciful marks, Genericide, Suggestive marks, Trademark

Written by: Susan Neuberger Weller The Wall Street Journal ran a print article on July 18, 2013 titled “What’s Behind Those Quirky Startup Names?” in which the author Lindsey Gellman discussed the derivation behind unique startup names such as Mibblio, Kaggle, Shodogg, and Zaarly. One of the reasons for these types of names and spellings, she… Continue Reading

An Ivy League Brand: Trademark Infringement in Academia

Posted in Litigation, Trademark

Written by Jamison Arterton As any recent college graduate knows, upon graduation you join an alumni network that carries with it a certain perception.   While your GPA, field of study and extracurricular are key in obtaining that all-important first job, your tuition payments during your college stint have also bought you access to a brand…. Continue Reading

Hells Angels and Toys “R” Us Settle “Death Head” Trademark Litigation

Posted in 15 U.S.C. 1051(b), Dilution, Fraud, Intent-To-Use Applications, Trademark, Trademark Infringement, Trademark Prosecution

Written by: Susan Neuberger Weller When I think of the Hells Angels, what immediately comes to mind are  a notorious gang of men in leather on Harley-Davidson motorcycles, the 1960’s counterculture, and news reports of illicit activity. When I think of Toys “R” Us, what immediately comes to mind are Barbie® dolls, Candyland® board games,… Continue Reading

RG3 and Common Law Trademark Rights: What You Don’t Know Can Hurt You

Posted in Common Law Marks, Trademark, Trademark Infringement, Trademark Prosecution, Trademark Searching, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller  Following in the footsteps of many sports and entertainment celebrities, the Washington Redskins’ quarterback Robert Griffin III, through his company Thr3escompany LLC, filed a number of US trademark and service mark applications for various marks including his full name as well as his nickname RGIII, sometimes used as RG3. The… Continue Reading

Trademark Protection in the European Community Expanded to 28 Countries

Posted in Trademark, Trademark Prosecution

Written by: Susan Neuberger Weller It took eight years of negotiations, but Croatia will  finally join the  European Community effective  July 1, 2013. This is good news for those who  own or seek trademark and design protection through the European Community system since protection will now be expanded to cover  28 Member States. These member states will… Continue Reading

Counterfeits, Trademark Infringement, and Contributory Liability: Your Vendors are Your Problem

Posted in Contributory Infringement, Counterfeits, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller  Counterfeit goods seem to be everywhere, and efforts to police their ubiquitous existence often seem futile. However, a recent decision involving counterfeit Coach products should inspire those who host vendors of counterfeit products to rethink their business strategy.

More About Trademark Surnames: The Borghese Dispute

Posted in Surnames, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller  Right on the heels of our surname blog comes a New York Times article on a long-running trademark litigation over rights to the Borghese surname. The Borgheses hail from an Italian noble family and their using the family history for marketing purposes is what prompted a lawsuit which goes to… Continue Reading

Louboutin Sees Red Again: Protecting Color as a Trademark

Posted in Color, Fashion, Litigation, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller  Christian Louboutin filed suit last week in Federal District Court in New York against Charles Jourdan Fashion Footwear and unnamed companies and John and Jane Does for trademark counterfeiting and infringement and other related claims based upon the Defendants’ sales of women’s shoes bearing red soles. As we previously reported,… Continue Reading

Why Can’t I Use My Own Name? : Trademarks and Surnames

Posted in Section 2 (e) – Surnames, Surnames, Trademark

Written by: Susan Neuberger Weller  There are many “myths” that float about in the general public about what can and cannot function as a trademark. For example, people often tell me that they “know” that “common words” can never be protected as trademarks. That, of course, is totally false. Common words can absolutely function as… Continue Reading

Laches, Acquiescence, and Trademark Injunctions

Posted in Trademark, Trademark Infringement

Who Should Be Upstream Without a (Greek) Paddle?  By: Susan Neuberger Weller On May 8, a long time manufacturer of ceremonial paddles marketed to fraternities and sororities filed a petition for certiorari with the US Supreme Court seeking relief from an injunction barring him from using Greek organizations’ trademarks in his advertising. Thomas Kenneth Abraham d/b/a… Continue Reading

The Issues of Trademark Infringement and Dilution Go “Wild”

Posted in Dilution, Trademark, Trademark Infringement

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

The 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 Policy

 By: 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

Are Dr. Dre’s Claims of Likelihood of Confusion and Dilution Enough to “Beat” His Opponents?

Posted in Dilution, Section 2(d), Trademark, Trademark Infringement

Written 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 Infringement

By: 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 Trademark

By: 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

Google and Rosetta Stone Settle AdWords Trademark Infringement Suit

Posted in Google Adwords, Trademark, Trademark Infringement

Written 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 Board

Written 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, Trademark

 Written 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