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23 April 2010

Blow for Pernod Ricard in HAVANA CLUB Case

In a lengthy dispute between Pernod Ricard USA LLC and Bacardi USA Inc that has crossed two federal circuits, two federal agencies and two decades over who controls the HAVANA CLUB mark for rum, a US judge has held that Bacardi has the right to use the mark for rum in the United States, and that its Havana Club labels are neither false nor misleading.

16 April 2010

Tiffany loses to eBay in latest online trademark infringement battle

In Tiffany (NJ) Inc v eBay Inc, the US Court of Appeals for the Second Circuit has affirmed in part and reversed in part a July 2008 district court’s holding. Among other things, the Second Circuit agreed with the lower court's holding regarding trademark infringement, stating that eBay made a lawfully nominative 'fair use' of the famous TIFFANY mark.

13 April 2010

TTAB opens door to foreign fame, but does not allow Fiat to step through

In Fiat Group Automobiles SpA v ISM Inc, a case of first impression, the TTAB has considered whether a mark that is famous outside the United States, but is not in actual use in that country, receives dilution protection under the Trademark Dilution Revision Act. Although it replied in the negative in this case, it left open the possibility that foreign fame may be protectable.

09 April 2010

Practitioners warned to plead carefully before the TTAB

In Odom’s Tenn Pride Sausage Inc v FF Acquisition LLC, the US Court of Appeals for the Federal Circuit has affirmed a decision of the TTAB in which the latter had held that the dissimilarity of an applied-for mark from an opponent’s pleaded marks was sufficient, in and of itself, to preclude a finding of likelihood of confusion as a matter of law.

08 April 2010

Bacardi ducks confusion challenge in latest HAVANA CLUB win

While rum drinkers can tell that if it looks like a duck, swims like a duck and quacks like a duck then it probably is a duck, brand owners accustomed to arguing that their trademarks function primarily as source identifiers will read the most recent HAVANA CLUB rum judgment with dismay.

07 April 2010

Divided TTAB finds mark disparaging for use with wine

In In re Lebanese Arak Corporation, in a precedential opinion, the TTAB has affirmed the examining attorney’s refusal to register the mark KHORAN for wine on the grounds that the mark was disparaging to the beliefs of Muslims. However, the dissenting judges held that the general public would not attribute any specific meaning to KHORAN except for trademark meaning, and would not perceive it as a misspelling of the word 'Koran'.

06 April 2010

Call for legislative change as Utah takes the fight to cybersquatters

Utah has thrown the gauntlet down to other US states by signing the E-Commerce Integrity Act, amid calls for the 1999 Anticybersquatting Consumer Protection Act to be reviewed. The landmark legislation places the state at the head of the fight against cybersquatting and the question now is whether other states will follow Utah’s lead and increase the remedies available to brand owners.

30 March 2010

Espinel must heed brand owners' call for cooperation

Victoria Espinel has set to work on her colossal task of better coordinating IP enforcement across US government departments, with key stakeholders demanding increased government transparency and closer cooperation between agencies and industry.

24 March 2010

No likelihood of confusion or dilution due to different commercial impressions

In Citigroup Inc v Capital City Bank Group Inc, in a precedential opinion, the TTAB has found that the marks CAPITAL CITY BANK, CAPITAL CITY BANK INVESTMENTS, CAPITAL CITY BANK GROWING BUSINESS and CAPITAL CITY BANC INVESTMENTS, all for financial services, were not confusingly similar to, and did not dilute, the famous CITIBANK mark.

19 March 2010

Notice of reliance on internet evidence allowed

In Safer Inc v OMS Investments Inc, the TTAB has held that parties in opposition and cancellation proceedings may offer into evidence printouts of internet web pages pursuant to a notice of reliance under Trademark Rule 2.122(e), in the same manner as a printed publication in general circulation. Such a document must identify the document’s date of publication or the date on which it was accessed, as well as the source of the document.

16 March 2010

President Obama draws a line in the sand over ACTA negotiations

The Anti-counterfeiting Trade Agreement (ACTA) controversy shows no signs of abating, with President Obama stating that the United States will “aggressively protect our intellectual property”. The remarks came after the European Parliament passed a resolution calling for transparency in the ACTA negotiations, arguing that discussions should be limited to the existing European IP rights enforcement system against counterfeiting.

09 March 2010

University granted significant leverage for exploitation of letter combination

The US Court of Appeals for the Federal Circuit has affirmed a decision of the TTAB refusing registration of the University of South Carolina’s SC design mark and granting summary judgment in favour of the University of Southern California. The TTAB had also denied a counterclaim cancellation action attempting to cancel the University of Southern California’s registration for its standard character SC mark.

05 March 2010

Missing actual marketplace realities in confusion surveys can be fatal

In THOIP v The Walt Disney Company, the District Court for the Southern District of New York has excluded the confusion survey of plaintiff THOIP on the grounds that it did not recreate marketplace realities. The court's lengthy opinion provides a primer on the elements to consider in developing viable likelihood of confusion surveys.

26 February 2010

US efforts to create a national IP enforcement strategy stepped up

Victoria Espinel, the new White House IP enforcement coordinator, has issued a notice inviting public input into the creation of an effective national IP enforcement strategy.

23 February 2010

Marks held not to be legal equivalents in tacking case

In In re Nielsen Business Media Inc, the TTAB has affirmed the examiner’s refusal to register the mark THE BOLLYWOOD REPORTER in Classes 16 and 41. The TTAB rejected the applicant's arguments that the rights it had acquired in the mark THE HOLLYWOOD REPORTER on related goods and services could be attributed to THE BOLLYWOOD REPORTER under a theory of tacking.