Under the Lanham Act, a trademark is considered abandoned “when its use has been discontinued with intent not to resume such use.” Three consecutive years of nonuse constitutes a prima facie showing of abandonment. As a result, if an owner abandons its trademark, the owner cannot prevent newcomers from coming along and bringing the trademark back to life. Trademark owners must actively use their marks in commerce to ensure a third-party will not revive the mark in the future and benefit from the original owner’s use. The developing case The Real USFL, LLC v. Fox Sports, Inc., demonstrates this concept in full force.
The U.S. Supreme Court ruled today that a generic word like “booking” combined with “.com” can achieve trademark registration even if the generic word alone cannot. The opinion, authored by Justice Ruth Bader Ginsberg, rejected the U.S. Patent and Trademark Office’s nearly per se argument that “generic.com” terms are ineligible for trademark registration regardless of consumer perception evidence. “Whether any given ‘generic.com’ term is generic, we hold, depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term ...
You may be tempted this time of year to create advertising featuring The Elf on the Shelf® (“TEOTS”) interacting in humorous ways with your product or service. DON’T! While your audience may engage and enjoy such a campaign, TEOTS products should not be used to promote or endorse your products or brands. TEOTS’s 2015 Specialty Retailer Asset Guidelines state that doing so without express written consent from TEOTS may constitute intellectual property infringement. There’s likely a more updated version of these Guidelines; nevertheless, the twenty-page .PDF makes it ...
Once a company owns a trademark, it must police the mark for unauthorized use, or risk losing its rights. As a result, companies will send “cease and desist” letters to enforce and protect their marks. At times, however, legal rights are only one consideration. Public opinion and consumer perception are also part of the equation, as the Aloha Poke Co. (“Aloha Poke”), a Chicago based restaurant, recently learned firsthand.
The MLB team in Cleveland has finally decided to stop wearing "Chief Wahoo," a caricature of a Native American, on their uniforms. The change will happen in 2019. Interestingly, however, the team told ESPN that it "will still sell merchandise featuring the mascot in Northeast Ohio" because "[t]he team must maintain a retail presence so that MLB and the Indians can keep ownership of the trademark."
In perhaps the least surprising trademark decision of the past 12 months, and one that could have been rendered in under 5 pages (rather than the 50 it actually took), the Court of Appeals for the Federal Circuit last Friday held that the Lanham Act’s Section 2(a) bar on registration of marks which “consist of or comprises immoral…or scandalous matter” is an unconstitutional, content-based restriction on speech. In re Brunetti, Appeal No. 2015-1109 (Fed. Cir. December 15, 2017). In that case, Erik Brunetti had toiled for more than 6 years attempting to register his mark, FUCT, for clothing. Those efforts were uniformly unsuccessful despite some weakly-creative arguments that the word, “fuct,” was not actually vulgar, and even if it was, Section 2(a) did not bar registration of “vulgar” marks.
In a non-precedential decision, the Trademark Trial and Appeal Board (“Board”) recently reversed a refusal to register Heritage Distilling Company’s application for the mark, BSB, for “distilled spirits” based on the following mark owned by Black Shirt Brewing Co. for “brewpub services; taproom services; taproom services featuring beer brewed on the premises”:
As Fiona the hippo, at the Cincinnati Zoo, battled from being born six weeks premature to weighing 375 pounds with a healthy side of sass, she gathered a huge and fierce following. #TeamFiona has taken the world by storm.
This morning, we awoke to the news that the U.K. has voted to exit the European Union. Our first thought was whether this vote, and the expected unwinding of the U.K. from the European legal system, will have any impact on our clients’ European intellectual property rights in the U.K.
I guess we should have seen this coming – or not. As reported by CNN on Tuesday, Apple has obtained a federal trademark registration for its slogan, THERE’S AN APP FOR THAT. Well, ok…CNN got it wrong; the PTO has only just accepted Apple’s Statement of Use, which means that a registration is imminent, but we’ll let CNN slide on this one.
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- Trademark Abandonment: Lessons from The Real USFL v. Fox Sports
- Generic.com Terms Are Not Per Se Generic
- EU Trademarks Post-Brexit: Now What?
- Don’t end up on The Elf on the Shelf’s naughty list!
- Stay Out of Trouble With the Federal Trade Commission
- "Aloha Poke": Social Media and Consumer Perception are Part of the Trademark Enforcement Equation
- Could Any Old Yahoo Nab Chief Wahoo?
- Trademark Registration Practice is Officially…umm…Well, You’ll See
- Booze is Booze, Right? Not so fast...
- Enroll in Amazon’s Brand Registry 2.0… But Only if You Own a Registered Trademark