Archives: Trademarks

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Trademark Solicitation Scams

Last month the United States Patent and Trademark Office (“the Office”) announced its cooperation in a Department of Justice investigation into a trademark scam perpetrated by two California men that defrauded about 4,446 people of $1.66 million. Trademark scams have been steadily on the rise over the past few years, which we have previously written … Continue Reading

UPDATE: BOSTON’S Founder and a Former Bandmate Still Seek Peace of Mind

Empty stage with band equipmentWe have written previously about Scholz v. Goudreau, No. 13-CV-10951 (D. Mass.); the case recently went to trial on the parties’ surviving claims, and they are now immersed in post-trial briefing. Tom Scholz and Barry Goudreau were once bandmates in BOSTON, and since Goudreau left the group in 1981, the two have occasionally litigated the … Continue Reading

U.S. Commerce Department Releases Updated Report Showing Intellectual Property-Intensive Industries Contribute $6.6 Trillion and 45.5 Million Jobs to U.S. Economy

Digital arrow and circuit boardThe U.S. Commerce Department recently released a comprehensive report, entitled “Intellectual Property and the U.S. Economy: 2016 Update” (the “Report”). The Report, which was co-authored by the Economics & Statistics Administration and the United States Patent and Trademark Office, builds upon an earlier 2012 report, finding that “IP-intensive industries continue to be a major, integral … Continue Reading

TTAB Rules Changes Confirmed – Effective January 14, 2017

The public comments have been considered and the Trademark Trial and Appeal Board rule changes proposed in April 2016 and summarized in this blog post have been confirmed with only minor exceptions. The new rules will be effective on January 14, 2017, and will apply to all opposition and cancellation proceedings active on that date … Continue Reading

A Common Cue Creates No Confusion

Car stereoCue, Inc. sells high-end home audio equipment (e.g., table radios and speakers). In 2007, it applied to register the trademark CUE ACOUSTICS, and in late 2009 the USPTO allowed its application. Cue’s CUE ACOUSTICS mark was registered in August 2012, and later that year, its application for a separate mark—CUE—was allowed. Cue filed a Statement … Continue Reading

Time Is Now to Assess E.U. TM Registration Goods Wording in Advance of September Deadline

There is a September 23, 2016 deadline for clarifying product or service specification wording within European trademark registrations in certain situations where that is necessary. Trademark registration products and services are categorized by almost all commercially relevant national trademark registries around the world, including the U.S. and the E.U., into 45 International Classes (Classes). These … Continue Reading

Steps Professional Services Firms Can Take to Protect a House Mark

Professional service firms at times seem to focus on protecting the names of their service offerings or platforms at the expense of their house marks. Pat Concannon, a partner in Nutter’s Intellectual Property and Business Departments, with over 20 years of experience devoted to helping businesses establish and protect their brands, analyzes why professional service … Continue Reading

Court Silences Sound Spark Studios’ Trademark Claims

In the summer of 2012, Jeremy Southgate applied with the United States Patent and Trademark Office to register a design mark for “Sound Spark Studios.” A little over a year-and-a-half later, Southgate formed Sound Spark Studios, LLC, and he registered it in Delaware. He characterized the entity as a “music and entertainment company.” The Sound … Continue Reading

U.S. Trademark Opposition/Cancellation Rule Change Proposals of Special Interest to Non-U.S. Companies

On April 4, 2016 the United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking that details proposed changes to the USPTO’s rules of practice for trademark application opposition and registration cancellation proceedings. Public comments are due by June 3, 2016. While it is possible that the rules will be modified further … Continue Reading

Significant Changes to the Rules Related to European Trademarks – Three Things You Should Know

The European Union’s (EU) trademark regulations are undergoing a significant overhaul as of March 23, 2016. For starters, the terminology is changing: the title “Community Trade Mark” or “CTM,” will be replaced by “European Union Trade Mark,” or “EUTM.” There are more changes than can be fully summarized within the scope of this blog post. … Continue Reading

New Dangers at the TTAB

TrademarkThe Trademark Trial and Appeal Board of the United States Patent and Trademark Office has recently become a more dangerous place. The Trademark Trial and Appeal Board—usually referred to by its acronym “TTAB,” which is spoken (most often) as four separate letters (tee, tee, ay, bee) rather than the obvious and more concise vocalization of … Continue Reading

City Fitness Attempts to Exercise Service Mark Rights

In a decision dismissing plaintiffs’ claims of service mark infringement, the District of Massachusetts held that the plaintiffs’ transfer of “goodwill” in an asset purchase agreement also transferred plaintiffs’ rights to their service marks. In Pereyra and City Fitness Group, LLC v. Sedky, et al. (No. 15-cv-12854, 2015 WL 7854061, December 3, 2015) plaintiffs City … Continue Reading

Federal Circuit: Lanham Act “Disparaging” Mark Prohibition Unconstitutional

On December 22nd the Court of Appeals for the Federal Circuit issued its sua sponte en banc In re Tam decision regarding the constitutionality of the “disparaging” marks bar under Section 2(a) of the Lanham Act.  A Federal Circuit panel previously upheld a Trademark Trial and Appeal Board (the TTAB) decision affirming the refusal under … Continue Reading

More than a Feeling, Less than Trademark Infringement

Empty illuminated stageIn Scholz v. Goudreau, No. 13-CV-10951, 2015 WL 5554012 (D. Mass. Sept. 21, 2015) rock legends are before the District of Massachusetts grappling, in part, over a familiar band’s legacy. After guitarist Barry Goudreau left the band BOSTON in 1981, he filed a suit against Thomas Scholz—one of the band’s founders—as well as BOSTON’s other … Continue Reading

Ninth Circuit Reverses Itself, Slouching Away from “Initial Interest Confusion” Doctrine

Over the summer we analyzed a decision by the Court of Appeals for the Ninth Circuit that denied Amazon.com, Inc.’s (Amazon) motion for summary judgment as to watchmaker Multi Time Machine, Inc.’s (MTM) claims that Amazon’s use of MTM’s trademarks as keywords at amazon.com was infringing. The Ninth Circuit has now taken the unusual step … Continue Reading

Licensing, Logo Protection, and Fair Use – Rounding Out Nutter’s How-To Series on Branding

Trademark licenseNutter’s series on building a brand began with the selection of a trademark and the process of formally protecting a mark via trademark registration. More recent articles in the series have addressed policing a brand, proper trademark usage, and brand considerations in the social media environment. This article, the last in the series, focuses on … Continue Reading

USPTO Now Allows Applicants to Modernize Their Descriptions of Goods and Services for Registered Trademarks

Trademark SymbolOn September 1, 2015, the U.S. Patent and Trademark Office (USPTO) launched a pilot program that allows some trademark owners the opportunity to amend their identifications of goods or services that would otherwise be beyond the scope of the current identification. The program allows owners to “catch-up” their trademark registrations with the “wheels of technology” … Continue Reading

Trademark and Domain Name Scams on the Rise

Comp-3-TM-Scam-ExamplesSummary: The nature of public trademark data lends itself to information mining and a significant amount of confusion, deception, and fraud. Accordingly, many private businesses have monopolized public data for their own commercial gain. These private businesses send scam e-mails and letters to clients and counsel including “invoices” that are often paid due to their perceived … Continue Reading

“Initial Interest Confusion” Trademark Doctrine Still Has Legs in Ninth Circuit

The doctrine of “initial interest confusion,” scorned by many legal commentators and rejected by numerous courts, is alive and well in the Ninth Circuit, as evidenced by its recent usage by a watch manufacturer to overcome a summary judgment motion by online retailer Amazon. The initial interest confusion doctrine holds that a defendant can be … Continue Reading

Is It a Matter of Time: Does the Time Stamp for Competing Filings Uploaded on the Same Day at the TTAB Matter?

Time StampSummary: Recently the United States Trademark Trial and Appeal Board (TTAB) considered the implications of competing filings that occurred on the same day. In particular, a trademark applicant filed an express abandonment of its trademark application, and, later that same day, a third party filed an opposition against the trademark application. While the TTAB agreed with … Continue Reading

Lanham Act Disparaging Mark Registration Refusal Standards Await Constitutional Review

Redskins Trademarks3-7.27.15Summary: It is rare that legal decisions are reported on by “The Worldwide Leader in Sports,” but that is exactly what happened when the U.S. District Court for the Eastern District of Virginia affirmed the U.S. Patent and Trademark Office Trademark Trial and Appeal Board’s decision to cancel six trademark registrations owned by Pro-Football, Inc., which does … Continue Reading

What Constitutes Trademark “Use”?

The United States is one of the few countries that requires a showing of use for extension of trademark protection. Accordingly, questions concerning how “use” can be established are important to both domestic clients and international clients filing trademarks in the United States. Traditionally the United States Patent and Trademark Office (USPTO) interpreted the use … Continue Reading

Nutter’s IP Bulletin How-To Series on Branding: What to Do Once Your Trademark Registers—The Brand & New Media

Nutter’s series on building a brand began with the selection of a mark and the process of formally protecting it via trademark registration. At this point in the series, the mark is registered and ready for use and investment to elevate it into a brand. Moving from a mere “mark” to a lauded “brand” takes us … Continue Reading

Nutter’s IP Bulletin How-To Series on Branding: What to Do Once Your Trademark Registers – Avoiding Genericism and Dilution

As discussed in the previous article in Nutter’s IP Branding Series, monitoring competitors’ use of your marks and marks possibly akin to your marks, and enforcing your rights in your marks against those competitors, is an important aspect of protecting and building your brand. Equally important is policing your own use of the mark, the use … Continue Reading
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