Under 15 U.S.C. § 1117(a), trademark holder who proves infringement may receive as damages an award of profits “subject to the principles of equity.” This phrase has divided the circuit courts going back several decades, with six circuits requiring a finding of willful infringement in order to obtain an infringer’s profits, and the other six circuits allowing for such damages without a finding of willful infringement.… More
Tag Archives: Trademark
BIG MAC Trademark Not That Big in the EU: How McDonald’s Failed to Prove Genuine Use of its EU Trademark
On January 11, 2019, the Cancellation Division of the European Union Intellectual Property Office (“EUIPO”) rendered a surprising decision that revoked in its entirety the McDonald’s Company’s BIG MAC trademark registration, which had been registered in the EU since December 1998.
This is the latest chapter in a fight between McDonald’s and Supermac’s, a competing chain that operates fast-food restaurants in both parts of Ireland.… More
If you haven’t heard already, New York Fashion Week is here! As usual, a lineup of awe-inspiring shows is expected to roll out over the next several days, as it does every September and February, highlighting the latest fashion trends of some of world’s most famous designers. One of the big stories surrounding New York Fashion Week this year is the amount of cultural diversity expected to appear on the runway. … More
Law Students Seek to “Free Rapunzel from The Trademark Tower” by Opposing RAPUNZEL as a Trademark for Dolls
In an interesting case pending before the TTAB, law students from the Suffolk University IP and Entrepreneurship Clinic have opposed an application filed by United Trademark Holdings, Inc. to register RAPUNZEL as a trademark for dolls and toy figures. The students, led by clinic director Loletta “Lolita” Darden, represent Professor Rebecca Curtin, a trademark law professor and mother of a young girl who has purchased dolls. … More
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
The Ultimate Girls Versus Boys Battle Of The Trademarks: Girl Scouts Sue Boy Scouts for Trademark Infringement and Dilution
When I heard that the Girl Scouts of the United States of America filed a lawsuit against the Boy Scouts of America last week, I was fascinated. As a former Girl Scout and troop leader myself, who also happens to practice trademark law, I have a lot of thoughts about this case. Many people predicted that the Boy Scouts’ decision to admit girls last year would put the organizations on a collision course. … More
Disputes over restaurant trademarks are not exactly rare. However, we couldn’t help noticing that on September 28, 2018, injunctions issued hours apart in two restaurant name disputes involving high profile New York marks.
City of New York v. Tavern on the Green
The iconic Tavern on the Green restaurant in Central Park is owned by the City of New York, but has been operated by concessionaires since it opened in 1934.… More
When does the globally available website of a foreign company subject that company to jurisdiction in the United States for purposes of a trademark infringement action? Does it make a difference if the foreign company has applied for a United States trademark registration? In Plixner International v. Scrutinizer GmbH, the First Circuit was reluctant to adopt any rules of general applicability,… More
Over the past few years, we have seen numerous instances of companies protecting their trademarks in creative ways – approaches that leverage humor and the brands themselves in order to achieve an acceptable legal outcome while simultaneously promoting the company and its brands, thus minimizing the risk of public relations blowback. In this “Creative Trademark Enforcement” series of blog posts, I’m continuing to explore some of the more interesting takes on this approach,… More
Picture yourself at dusk along the river, walking through a massive outdoor art installation featuring tens of thousands of individually-placed spheres of light on short stalks, reminiscent of blooming flowers. Ok, now stop and answer this: what kind of intellectual property would you use to protect this installation? If you answered “trade dress,” you get a frowny-face sticker, at least according to the Eighth Circuit’s recent opinion in Munro v.… More
If you are having trouble obtaining a federal trademark registration for a product’s packaging, some lawyer has probably mentioned to you that copyright protection is a potential alternative or supplement. This is good advice – to a point. Copyright registration is relatively cheap, nobody will pester you about secondary meaning or use in interstate commerce, and you don’t need consumer confusion evidence to prove infringement. However, when it comes to creative expression,… More
The Federal Circuit just issued its en banc decision in Nantkwest v. Iancu, concluding that the proper statutory construction of Section 145 of the patent statute, which allows patent applicants to file actions in a federal district court to challenge the denial of patent applications by the Patent and Trademark Office (USPTO), does not require the challengers to pay the USPTO’s attorneys’ fees.… More
Restating the Obvious: Beer and Wine are Related Goods for Trademark Purposes, Except when They Aren’t
Beer and wine are related goods for trademark purposes. Right? We’ve seen that truism announced by the Trademark Trial and Appeal Board (TTAB) time and time again. So, do you really have to prove it from scratch in every trademark proceeding?
Yes, you do. Sure, it may seem obvious that consumers expect beer and wine to emanate from the same source. After all, they are both beverages,… More
Last night I was told by the owner of Red Hen in Lexington,… More