Archives: 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) (misrepresentation of source), Section 43(a)(1)(A) (infringement of an unregistered mark) and Section 43(a)(1)(B) (false advertising) of the United States Trademark Statute (the Lanham Act). Belmora LLC v, Bayer Consumer Care AG and Bayer Healthcare LLC, 1:14-cv-00847-GBL (EDVA Feb. 6, 2015).

Bayer Consumer Care AG filed a petition with the TTAB to cancel Belmora LLC’s U.S. trademark registration for FLANAX for a naproxen sodium based analgesic on grounds that it was confusingly similar to Bayer’s FLANAX brand of naproxen sodium analgesic products.  Ordinarily, a case involving identical marks used on virtually identical products is a slam dunk for the prior user. However,  in this case Bayer owned a Mexican, but not a US, trademark registration for FLANAX, and did not sell any FLANAX branded products in the US. Rather, the Bayer naproxen sodium analgesic product available in the US was sold under the trademark ALEVE. Nevertheless, Bayer claimed that Belmora’s actions in the US were misrepresentative and created confusion among US customers as to the source of the FLANAX products sold in the US. Continue Reading The Court’s Decision in the FLANAX US Trademark Dispute Gives Bayer a Headache

 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 of applications for new gTLDs will come an unlimited number of new opportunities on the Internet for entrepreneurs of all types, including trademark infringers. Thus, trademark owners must make some decisions on how to address this new threat. One possibility is the new Trademark Clearinghouse.

Continue Reading The New Generic Top-Level Domains and the New Trademark Clearinghouse: Deciding Whether to Register Your Brands

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 meet the Court’s redefinition of “controversy.”

The Declaratory Judgment act provides that “[i]n a case of actual controversy within its jurisdiction…any court of the United States…may declare the rights and other legal relations of any interested party seeking such a declaration, whether or not further relief is or could be sought.” [28 U.S.C. 2201(a)] In MedImmune, the Court noted that it had explained in prior opinions that the “case of actual controversy” language in the Act refers to the US Constitution’s Article III’s case-or-controversy requirement,  and that a “controversy” under the Declaratory Judgment Act did not require any greater showing than that required under Article III. The Court clarified that declaratory judgment jurisdiction required disputes to be ‘“definite and concrete, touching the legal relations of the parties having adverse legal interests’; and that it be ‘real and substantial’ and ‘admit of specific relief through a decree of a conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts.’” 127 S. Ct. at 771. Or, as put another way, “[t]he question in each case is whether the facts alleged, under all circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” Id. Although this standard test may sound relatively straightforward, it is not always easy in its application, as the floral delivery company 1-800-Flowers.com Inc. recently discovered.

Continue Reading How Do You or Don’t You State a Case for A Declaratory Judgment in a Trademark Dispute?

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 three-year-old trademark infringement lawsuit between them and to meaningfully collaborate to combat online ads for counterfeit goods and prevent the misuse and abuse of trademarks on the Internet.” 

Continue Reading Google and Rosetta Stone Settle AdWords Trademark Infringement Suit

Written 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 sole of a women’s shoe that contrasted with the color on the upper portion of the shoe could be protected as a trademark in the fashion industry. A Federal District Court in California ruled recently, that a company’s use of the color orange for markings and text on its medical syringe could not be protected as a trademark since the color was “functional” when applied to that product. It determined that the color orange was functional in the medical industry because it signifies that a device is for oral use. So, how does this color-as-a-trademark work? Continue Reading When Can You Claim A Color As Your Trademark?

Written 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 kosher deli in Manhattan, has served the “Instant Heart Attack Sandwich” made of two potato pancakes filled with corned beef, pastrami, turkey or salami. In September 2010, the Deli filed a use-based federal trademark application for its “Instant Heart Attack Sandwich” mark, as well as an intent-to-use application for the mark “Triple Bypass Sandwich,” for which it planned to use three potato pancakes instead of bread or buns.  Continue Reading Avoid a “Heart Attack”: Promptly Register Your Trademarks

Written 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 is really interesting is the breakdown of applications. Continue Reading The List of gTLD Applicants: A Breakdown

Written 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.  Continue Reading ICANN’s Trademark Clearinghouse: An Update

Written 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, ICANN took the application system offline until the problem is resolved.  Two weeks later, the TAS system still remains offline.  ICANN claims that it has narrowed the pool of affected applications and the associated posted documents and hopes to reopen the system on April 27, 2012. Continue Reading The Latest From ICANN: New gTLD Application System Shut Down

Written by Jamison Arterton

ICANN has recently appointed the World Intellectual Property Organization (WIPO) to be the exclusive provider of dispute resolution services when a third party files a formal “Legal Rights Objection” or “LRO” to a pending application under the new gTLD program. 

In assessing the validity of an LRO, the WIPO panel will decide whether the applied-for gTLD (i) takes unfair advantage of the unique character or the reputation of the objector’s registered or unregistered trademark, intergovernmental organization (IGO) name or acronym, or (ii) without justification, the gTLD impairs the distinctive character or the reputation of the objector’s mark, IGO name or acronym, or (iii) creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark, IGO name or acronym. Continue Reading WIPO Named Exclusive Arbitrator of “Legal Rights Objections” for New gTLD Program