LawUpdates.com - Trademark Law Updates

U.S. Customs and Border Protection Announces IPR Interim Final Rule

2012-05-29T21:43:38+00:00

New Statutes, Regulations and Rules || Disclosure of Information for Certain Intellectual Property Rights Enforced at the Border || The U.S. Customs and Border Protection has published in the Federal Register an Intellectual Property Rights Interim Final Rule (IFR) which takes effect immediately upon publication.

USPTO Issues TEAS 4.9 Release

2012-02-29T19:25:50+00:00

New Statutes, Regulations and Rules || TEAS 4.9 Release || The following highlights most of the changes to be placed into production in TEAS 4.9.

Bicameral, Bipartisan IP Protection Bill That Will Not Break the Net Filed in Both Chambers

2012-02-8T20:33:05+00:00

New Proposed Legislation || Online Protection and Enforcement of Digital Trade Act || Rep. Darrell Issa, R-Calif, has officially introduced H.R. 3782, the Online Protection & Enforcement of Digital Trade Act in the U.S. House of Representatives.

Additional Courtesy Electronic Mail Addresses Now Permitted for Trademark Correspondence

2012-02-7T22:30:01+00:00

New Statutes, Regulations and Rules || Additional Courtesy Electronic Mail Addresses || As part of efforts by the United States Patent and Trademark Office (“USPTO”) to improve the experience of trademark applicants and registrants and to benefit from the advantages of increased electronic processing, effective November 19, 2011, the USPTO began permitting the submission of more than one electronic mail (e-mail) address…

Commentary: Chloé v. Queen Bee: Exercising Personal Jurisdiction for Infringement in Internet Transactions

2010-11-2T19:51:07+00:00

Expert Legal Commentary || By Olivier A. Taillieu and Jeffrey J. Zuber || The Second Circuit recently “updated its jurisprudence” on personal jurisdiction “in the age of internet commerce,” using a long-arm statute to exercise personal jurisdiction over a foreign defendant accused of selling counterfeit goods over the Internet. In Chloé v. Queen Bee of Beverly Hills, LLC, 616 F.3d 158 (2nd Cir.…

USPTO Expands Consistency Initiative

2010-06-25T17:26:35+00:00

New Statutes, Regulations and Rules || Continued and Expanded Consistency Initiative || After assessing the Trademark Consistency Initiative Pilot Program, the United States Patent and Trademark Office (“USPTO,” or “Office”) has decided to extend the program and make two significant changes.

Commentary: Crash Dummy Movie v. Mattel: Overcoming the Presumption of Abandonment

2010-06-8T17:55:12+00:00

Expert Legal Commentary || By Thomas F. Zuber and Olivier A. Taillieu || The Federal Circuit Court affirmed a TTAB decision finding that Mattel successfully rebutted the presumption that it had abandoned a mark it had acquired from Tyco but had not used for at least three years. In Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387 (Fed. Cir. 2010), Mattel…

Commentary: Tiffany v. eBay: General Awareness of Mass Infringement Not Enough to Establish Contributory infringement

2010-05-10T23:05:21+00:00

Expert Legal Commentary || By Jeffrey J. Zuber and Yuri Mikulka || The Second Circuit U.S. Court of Appeals has affirmed that brand owners are ultimately responsible for policing and fighting counterfeits, even when a high volume of infringement occurs in one outlet. In Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93 (2nd Cir. 2010), the Second Circuit held that a…

European Union Court Issues Ruling in Trademark Dispute between Google and Louis Vuitton

2010-05-6T17:33:15+00:00

New Statutes, Regulations and Rules || Google France and Google Inc. et al. v Louis Vuitton Malletier et al. || The Court of Justice of the European Union (“Court”) has issued a decision in the trademark dispute between Google and leather-goods maker Louis Vuitton Malletier .

New Trademark Law Takes Effect

2010-04-2T17:39:58+00:00

New Statutes, Regulations and Rules || Trademark Technical and Conforming Amendment Act of 2010 || The Trademark Technical and Conforming Amendment Act of 2010 became effective on March 17, 2010, Pub. Law No. 111-146, 124 Stat. 66 (2010), according to the United States Patent and Trademark Office (“USPTO”).

Bill to Ease Burdens on Trademark Owners Set to Become Law After Its Passage in the House and Senate

2010-03-8T18:25:37+00:00

New Proposed Legislation || Trademark Law Technical and Conforming Amendments Act || Legislation authored by Senator Patrick Leahy (D-Vt.) to help assist trademark owners in maintaining the protection of their brands will now head to the President’s desk to be signed into law, after its passage by the House of Representatives and the Senate on March 3, 2010 and January 28, 2010,…

USPTO Revises Trademark Practice Rules on Recognition of Reps, and Changing Correspondence Address

2010-02-10T19:32:01+00:00

New Statutes, Regulations and Rules || Changes in Requirements for Signature of Documents, Recognition of Representatives, and Changing Correspondence Address || The United States Patent and Trademark Office (“USPTO,” or ‘‘Office’’) has revised the Trademark Rules of Practice to set forth the requirements for signature of documents filed in the Office, recognition of representatives, and establishing and changing the correspondence address in trademark cases.

Commentary: Starbucks v. Wolfe’s Borough Coffee: “Substantial Similarity” Not Required to Prove Dilution by Blurring

2010-01-29T22:03:48+00:00

Expert Legal Commentary || By Thomas F. Zuber and Jan Jensen || The Second Circuit U.S. Court of Appeals held that the Trademark Dilution Revision Act of 2005 (“TDRA”) does not require proof of “substantial similarity” between the marks in question for a trademark owner to establish dilution by blurring. In Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2nd…

Commentary: Wham-O v. Manley Toys: No Fed. Jurisdiction to Declare a Mark Nongeneric

2009-12-31T07:04:27+00:00

Expert Legal Commentary || By Jeffrey J. Zuber and Laura D. Castner || A California district court dismissed a declaratory judgment action brought by a trademark owner, seeking to skip a TTAB proceeding and get the Court to declare that its trademarks had not become generic and thus subject to cancellation.The Court held that in the absence of an actual infringement claim, there…

Commentary: In re Bose: Fed. Cir. Rejects Medinol and Requires Intent to Establish Trademark Fraud

2009-10-31T01:07:14+00:00

Expert Legal Commentary || By Laura D. Castner and Yuri Mikulka || The Federal Circuit held that trademark fraud can only be found when the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO. The opinion in In re Bose, ___ F.3d ___, No. 2008-1448, 2009 WL 2709312 (Fed. Cir. Aug. 31, 2009), specifically rejects…

Commentary: U.S. v. Diallo: Defining “Use” in the Context of Counterfeiting

2009-10-28T07:15:09+00:00

Expert Legal Commentary || By Olivier A. Taillieu and Jeffrey J. Zuber || The U.S. Court of Appeals for the Third Circuit determined that “use,” in the context of federal trademark laws, does not require active employment of a counterfeit mark by displaying or offering an item bearing the mark for sale. In United States of America v. Mamadou Diallo, 575 F.3d 252…

Commentary: Rescuecom v. Google: Keyword Ad Sales May Constitute “Use in Commerce”

2009-07-16T21:59:04+00:00

Expert Legal Commentary || By Jeffrey J. Zuber and Laura D. Castner || The Second Circuit held that Google’s practice of recommending and selling plaintiff’s exact trademark to Google’s advertisers (including plaintiff’s competitors) in order to trigger ads forms a basis for an actionable claim under sections 32 and 43 of the Lanham Act, 15 U.S.C. sections 1114 and 1125. Reversing the District…

Commentary: Internet Specialties v. Milon-DiGiorgio: Raising the Standard for a Laches Defense in Trademark Cases

2009-07-9T19:00:14+00:00

Expert Legal Commentary || By Olivier A. Taillieu and Laura D. Castner || In Internet Specialties West v. Milon-DiGiorgio Enterprises, Inc., 559 F.3d 985 (9thCir. 2009), the U.S. Court of Appeals for the Ninth Circuit upheld the district court's grant of an injunction prohibiting the use of a registered domain name and mark that was determined to be confusingly similar to a pre-registered…

Commentary: In re Spirits Int’l: A Mark Is Geographically Deceptively Misdescriptive Only if Materially Deceptive to a Substantial Portion of the Intended Audience

2009-06-26T19:38:34+00:00

Expert Legal Commentary || By Thomas F. Zuber and Laura D. Castner || Clarifying the application of the doctrine of foreign equivalents, the Federal Circuit held that a mark is geographically deceptively misdescriptive if a substantial portion of the relevant consumer market is likely to be deceived by the mark. In In re Spirits International, 563 F.3d 1347 (Fed. Cir. 2009), the Federal…

Rep. Conyers Files House Version of Patent Reform Act of 2009

2009-04-24T16:52:00+00:00

New Proposed Legislation || Patent Reform Act of 2009 || Rep. John Conyers, Jr. (D-Mi) has filed a House version of the Patent Reform Act of 2009 to match the Senate version filed by Senators Orrin Hatch (R-Ut) and Patrick Leahy (D-Vt) (S. 515).

Commentary: LSU v. Smack Apparel: Trademark Protection for Color Schemes

2009-02-6T17:50:17+00:00

Expert Legal Commentary || By Jeffrey J. Zuber and D. Dennis La || In Bd. of Supervisors for La. State Univ. v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008), the Fifth Circuit upheld the district court’s finding that a t-shirt maker who used school color schemes in combination with specific facts and indicia about the school infringed on the schools’ trademark…

Commentary: Audi v. Shokan Coachworks: Trademark Infringement in Email Signature

2009-01-27T23:38:50+00:00

Expert Legal Commentary || By Olivier A. Taillieu and D. Dennis La || In the case Audi AG v. Shokan Coachworks Inc., 2008 WL 4911730, No. 1:07-CV-00173 (N.D.N.Y. 2008), the federal district court grappled with a slew of trademark claims, combining into one opinion many of the issues raised by a number of other previous courts. Specifically, the court could not grant summary…

Commentary: E.S.S. Entm’t 2000 v. Rock Star Videos: First Amendment Trumps Trademark Rights

2009-01-7T03:43:41+00:00

Expert Legal Commentary || By Jeffrey J. Zuber and D. Dennis La || In E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008), the 9th Circuit U.S. Court of Appeals confirmed that when trademark rights clash with the First Amendment, the First Amendment usually wins – at least in cases involving artistic or creative endeavors. The court…

Amendments to Trademark Rules of Practice to Take Effect on January 16, 2009

2008-11-24T18:34:00+00:00

New Statutes, Regulations and Rules || Miscellaneous Changes to Trademark Rules of Practice ||

Commentary: Tiffany v. eBay: A Trademark Owner Must Police Its Own Marks on the Internet

2008-09-26T16:59:31+00:00

Expert Legal Commentary || By Olivier A. Taillieu and D. Dennis La || In its significant opinion in Tiffany v. eBay, ___ F. Supp. 2d ___, 2008 WL 2755787 (No. 04 Civ. 4607) (S.D.N.Y. , July 14, 2008) the Southern District of New York rejected an effort by renowned jeweler Tiffany to expand the reach of contributory trademark infringement. Tiffany’s theory of secondary…