MACCOFFEE Found Likely To Ride Coat-Tails Of McDonald’s EU ‘Mc’ Family Of Trademarks

On July 5, 2016, the European General Court rendered an interesting decision illustrating the broad protection enjoyed by those trademarks with “a reputation in the EU.” The full text of the decision is available in English here and in French here.

The case involved a Singapore company called Future Enterprises, which filed an EU trademark for MACCOFFEE on October 13, 2008 for a wide variety of food products and beverages in classes 29,… More

The Federal Trademark Statute Assumes Hillary Can’t Win

HiliaryToday’s example of unintentional sexism comes to us from Section 2(c) of the Lanham Act.  On its face, the language of the statute assumes that someone other than Hillary will win the 2016 presidential election – and it won’t be Jill Stein.  It could be Donald Trump, Bernie Sanders, Gary Johnson, or your dad, but it’ll be someone male.

Section 2 of the Lanham Act,… More

The Pleads Of The Many: 50 Years of Star Trek Lawsuits

EnterpriseThis year marks the fiftieth anniversary of the premiere of the original series of Star Trek, which first aired on NBC in September 1966. On July 22, this milestone will be marked in earnest when Paramount Pictures releases the new film, Star Trek Beyond (which sadly includes the final Chekovian performance by the recently-departed Anton Yelchin).… More

Bastille Day Fireworks and Copyright

Bastille Day FireworksBastille Day is a French national holiday that commemorates the storming of the Bastille on July 14, 1789, an important episode in the French Revolution. Each year, Paris celebrates the day with an elaborate military parade down the Champs Elysées. Large and small fire departments across France hold balls with music, wine and dancing; and of course fireworks are set off from the Eiffel Tower.… More

Trademark Red Tape: Post-Registration Proof Pilot To Go Permanent

USPTO Red TapeRegular readers of the Trademark and Copyright Law Blog and our Trademark Red Tape™ column may recall our previous report on a pilot study by the United States Patent & Trademark Office (PTO) about post-registration proof of use.  Under current PTO practice, a specimen demonstrating use of a mark on a single good or service within a class is sufficient to maintain registration for an entire class,… More

The Death Of Alexander Hamilton And The Birth Of The American Free Press

Portrait of Alexander HamiltonAlexander Hamilton has more to do with American independence than you might think. His efforts as a Founding Father (the hottest Founding Father on Broadway, it should be noted) helped the United States achieve political independence from Great Britain.  But Hamilton also made a vital contribution towards helping the American justice system declare jurisprudential independence from the English courts, particularly with regard to defamation and free speech.… More

Q&A: Catherine Muyl On Brexit’s Impact On European Patents, Trademarks

brexitTrademark and Copyright Law Blog author Catherine Muyl was interviewed by Andrew Chung of Reuters yesterday about the impact of Brexit on European Patents and Trademarks. You can find a link to the story here. Catherine’s blog posts about the implications of Brexit for trademark owners are available here and here.… More

A Brexit Primer for Trademark Owners

Keep Calm 2On June 23, the citizens of the UK voted Yes to the question “Should the UK leave the European Union?” Here are some answers to questions that we are hearing from trademark owners.

Question 1. Is now a good time to panic?

Uncertainty creates stress but we have at least one certainty: from a strictly legal point of view, there will be no immediate impact.… More

Grapes, Girls and Goddesses: Federal Circuit Affirms MAYARI Trademark Registration For Wine

MayaIn our annual Trademark Year in Wine and Beer, we discussed Oakville Hills Cellar v. Georgallis Holdings LLC, in which the application of Georgallis (doing business as Kissos Wines) to register MAYARI for wine was opposed by Oakville (doing business as Dalla Valle Vineyards), holder of the MAYA mark for wine. To keep things simple,… More

Brexit: Potential Consequences For European Union Trademarks

Brexit Direction Sign

Updated June 24, 2016

A few hours ago, citizens of the United Kingdom voted in favor of leaving the European Union. This is a monumental step which historians will analyze in order to understand why and how it became possible. In the meantime, lawyers will have to figure out the consequences, including how to untangle this 60 year-old relationship.

European patents should not be affected by Brexit because the Munich Convention is not a European Union instrument.… More

Objective Reasonableness Can Be Central to Fee-Shifting Analysis in Copyright Cases

GyroIn Kirtsaeng v. John Wiley & Sons, Inc., the Supreme Court clarified the test for awarding attorney’s fees when applying the Copyright Act’s discretionary fee-shifting provision, 17 U.S.C. § 505. The Court held that the objective reasonableness of a losing party’s position should be given “substantial weight”—but not necessarily control—the outcome of a fee petition.  The lower courts had varied considerably in their approach to the discretionary fee-shifting analysis. … More

Eat Your Art Out: Intellectual Property Protection for Food

Mondrian Cake 2Let’s face it, we live in a food-crazed world.  Our current preoccupation with food has less to do with eating it; we also are fascinated with looking at it.  Posting photos of food on Instagram is now a universal pastime.  Food reality shows like Top Chef, Cake Boss, and Chopped are extremely popular and chefs are now considered bona fide celebrities,… More

Trademark and Copyright Law Blog Co-Editor David Kluft to Speak on Intellectual Property and Social Media Law

MeDavid Kluft, co-editor of the Trademark and Copyright Law Blog and Intellectual Property partner at Foley Hoag LLP, will be speaking at the 19th Annual New England Intellectual Property Law Conference.  The conference, sponsored by Massachusetts Continuing Legal Education, will take place beginning at 12:30pm on June 23, 2016 at the MCLE Conference Center, Ten Winter Place in Boston. … More

Eight is Not Enough: Second Circuit Adopts Eleven Factor Nominative Fair Use Test in Certification Mark Case

Security ISCInternational Information Systems Security Certification Consortium (known as ISC2) is a non-profit organization that owns a registered certification mark for the term CISSP® (meaning “Certified Information Systems Professional”).  In 2010, ISC2 sued Security University, a for-profit company that provides training in this field, because Security University described its lead instructor as a “Master CISSP®” or a “CISSP® Master.”  Although these advertisements had disclaimers stating that the Security University classes were “not endorsed,… More

Trademark Red Tape: Incoming Fee Increases And Sweeping TTAB Rule Changes

ASDJune 2016

Welcome to Trademark Red Tape, our periodic round-up of trademark news and happenings at the United States Patent & Trademark Office.  Here are the highlights: