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04 July 2011

Disney entitled to summary judgment based on collateral estoppel

In Stephen Slesinger Inc v Disney Enterprises Inc, in a precedential opinion, the TTAB has found that Disney was entitled to summary judgment based on collateral estoppel. The dispute stemmed from poorly drafted transfer and contractual documents concerning the ownership of the trademarks derived from Winnie-the-Pooh and other characters.

30 June 2011

Licensee barred from asserting naked licensing by licensee estoppel doctrine

In John C Flood of Va Inc v John C Flood Inc, the US Court of Appeals for the District of Columbia Circuit has affirmed the district court’s decision in a long-running trademark dispute between two companies using virtually identical marks on identical services in overlapping geographical areas.

10 June 2011

Bridal shop loses trademark rights due to naked licensing

In Eva’s Bridal Ltd v Halanick Enter Inc, the US Court of Appeals for the Seventh Circuit has held that the plaintiff, a bridal clothing business, did not exercise sufficient quality control over services rendered under its trademarks to survive an abandonment challenge, despite the fact that it had no reason to doubt the standards employed by its licensee.

08 June 2011

The new challenge to traditional trademark filing practices

Unconventional trademark prosecution practices are overtaking traditional law firms. That’s according to the table of top USPTO trademark filing firms for 2010, due to be published in WTR later this month. The fact that the firm of Californian attorney Raj Abhyanker has hit the top spot, filing more than 4,000 marks in one year, is causing controversy among trademark circles.

30 March 2011

'Bacardi Bill' prevails, but there’s hope for Pernod Ricard in judicial dissent

The only Havana Club-branded rum available to buy in the United States for some time yet will be produced by Bacardi. Yesterday, Bacardi’s long-term opponent Pernod Ricard lost its latest attempts to use the HAVANA CLUB mark in the US market. But Pernod Ricard will take some comfort from the fact that one of the three judges dissented.

17 February 2011

Luxury brand Coach sued over trademark enforcement tactics

Staunching the flood of counterfeits for sale on eBay can so easily drown an in-house trademark team that the task is often outsourced to an external service provider. Handbag designer Coach appears to have handed this job to Gibney Anthony and Flaherty, which sent an aggressive cease-and-desist letter to Gina Kim to stop her selling a single, second-hand Coach item online. The bag was authentic, not counterfeit, and Kim was so offended that she has sued Coach for, among other things, misrepresentation of trademark infringement.

10 February 2011

Slap on the back for expert trademark counsel from Sarah Palin

Sarah Palin and her attorneys have given trademark counsel the world over an all-American slap on the back. They appear to yell, “Good job!” This is because, in filing an incomplete application to register SARAH PALIN with the USPTO, Palin and her lawyers have highlighted not only the specialist knowledge required to file but also the simultaneous need for strategic brand-building advice.

20 January 2011

Eighth Circuit: actual confusion is not a prerequisite to monetary relief

In Masters v UHS of Delaware Inc, the US Court of Appeals for the Eighth Circuit has affirmed the district court’s verdict of $2.4 million in favour of plaintiff Mary Masters on her claims of trademark infringement of the mark MASTERS AND JOHNSON. Among other things, the Eighth Circuit found that proof of actual confusion was not necessary to sustain monetary relief.

12 January 2011

Unwanted auction trademarks can fetch $100,000 behind closed doors

Although the first-ever public trademark auction may have failed to spark a bidding frenzy on the day, WTR has discovered that big brand owners have been privately buying up the unsold marks for six-figure sums.

14 December 2010

First public trademark auction raises a measly $150,000

The results of the first-ever public trademark auction are in, with estimates suggesting that the event raised just $150,000 through the sale of fewer than 15% of the trademarks on the block. This level of sales has reinforced lawyers' concern over the auction's reliance on intent-to-use applications only, not full registrations. John Cuticelli, chief executive of auction organiser Racebrook, is quoted as saying on the day that he is not "disheartened" - but he hasn't returned WTR's calls requesting further comment.

09 December 2010

Ninth Circuit addresses standard of proof for determination of naked licensing

In FreecycleSunnyvale v The Freecycle Network, the US Court of Appeals for the Ninth Circuit has affirmed the district court’s decision on summary judgment that FreecycleSunnyvale had not infringed The Freecycle Network's trademark rights. The court addressed, but did not resolve, the standard of proof for a determination of naked licensing. However, it did define a set of facts that unequivocally establish naked licensing.

02 December 2010

20,000 interested parties prepare for the first public trademark auction

The man behind what he believes to be the first public trademark auction has told WTR that he has received around 20,000 inquiries from parties interested in bidding on the 150 marks for sale. The rights are set to go under the hammer in New York on December 8, but IP attorneys remain sceptical that auctions are right for trademarks.

24 November 2010

Trademark register and web usernames to dovetail in new search service

The number one trademark filer in the United States has launched a new service that ties social network username registration to the trademark register. The move will help to drive the debate about the extent to which online locators such domain names and social network usernames will compete with trademarks in terms of importance.

02 November 2010

Drunk on incontestability: the Second Circuit says “not so fast”

In Federal Treasury Enterprise Sojuzplodoimport v Spirits International NV, the US Court of Appeals for the Second Circuit has reversed the district court’s grant of a motion to dismiss trademark claims in a case involving the STOLICHNAYA marks for vodka. Among other things, the district court had erred in concluding that any recorded assignment of an incontestable registration cannot be challenged.

29 October 2010

The frightening morality of trademark disputes

While WTR sparks to life a forthcoming feature on zombie brands, IP attorneys in the United States are considering this terrifying tale of trademark enforcement: a successful Pennsylvanian Hallowe'en experience is suing a not-for-profit competitor in Maryland for trademark infringement. They both use the mark FIELD OF SCREAMS.