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Category Archives: Trademark

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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, Useful Artticles

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

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