As we ring in 2023, sip some champagne and make a resolution to check in on your trademark portfolio more often. It misses you!
Here are a few productive questions to ask:
The general rule of thumb for trademarks in the U.S. – and everywhere else, for that matter – is “the earlier, the better.” It’s almost always the right move to file a trademark application as early as possible, and well in advance of a product or service announcement, both to (a) minimize the possibility of conflicting marks and filings; and (b) mitigate the potential for attempted trademark and domain name “squatting” that inevitably follows a well-publicized product/service announcement. … More
Just this month, two disputes over the trademark rights to beauty pageant names were resolved, pending appeal. In World Pageants LLC v. Miss G-String International LLC, the Trademark Trial and Appeal Board (“TTAB”) dismissed an opposition to the registration of MISS G-STRING INTERNATIONAL because the opposer’s mark (MISS NUDE INTERNATIONAL) just wasn’t similar enough to cause confusion. Meanwhile, in Organizacion Miss America Latina v.… More
In 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
As the U.S. and Cuba progress towards normalizing trade relations, many U.S. companies are contemplating whether it makes sense to do business in Cuba. While some companies already plan to enter the Cuban market, others have no plans to do so. Regardless of where your company falls on that spectrum, failing to protect your brand in Cuba could create major obstacles down the road, even if you have no immediate plans to offer products or services in Cuba.… More
The matter of Terra Sul Corp. v. Boi Na Braza, Inc. involved a concurrent use proceeding between two restaurants over their nearly identical names. In theory, the scope of the conflict was nationwide, but in reality, as one party put it, “[t]his dispute has always been about New York City.” In a recent precedential opinion, the TTAB concluded that, because the “New York restaurant scene’s embrace is sufficiently broad to reach Newark,” a New Jersey restaurant’s area of concurrent use included New York City and,… More
Apparently, the answer is “One Love.” On December 6, 2013, Fifty-Six Hope Road Music, Ltd. (“Hope Road”), which controls reggae legend Bob Marley’s estate, filed a federal trademark infringement action against the restaurant company Raising Cane’s USA, LLC (“Raising Cane’s”). Hope Road alleges ownership of the trademark ONE LOVE in connection with a number of goods and services. It further claims that Raising Cane’s unauthorized use of the same mark in connection with restaurant services is a violation of Hope Road’s rights.… More