Recently, I’ve been meeting with many small business owners who have many good questions about intellectual property and whether the federal IP protections apply to them. The answer is a resounding YES! If you are a business of any size with something unique to offer your consumer base, then you likely have some sort of brand, logo or slogan that …
FAIR USE OR INFRINGEMENT?
Last month, the Second Circuit ruled that media-monitoring service TVEyes violated copyright law by re-distributing searchable audiovisual content clips from news outlets, including Fox News Network, reversing an earlier ruling that the service was protected by the fair use doctrine. The Second Circuit held that TVEyes’ use was transformative, but since the redistribution made available virtually all of Fox News’ …
What is the Difference Between my Company Name and my Trademarks?
Recently, I’ve been encountering a lot of confusion among business owners as to the difference between their company name (what is registered with the Secretary of State’s Office) and their trademark or brand name. This can be especially confusing if your company name and your trademark are essentially the same, except for the corporate identity descriptor at the end (for …
The Importance of Trademark Searching
Congratulations! You’ve decided on a new name for your new company or brand. How exciting! Before you apply for federal trademark protection, it’s important to conduct some type of trademark searching. But what kind? Many clients tell me they have already conducted a search of the USPTO records; however, this only provides part of the story. When we in our …
U.S. Supreme Court Strikes Down Trademark Disparagement Clause as Unconstitutional
On June 19, 2017, a unanimous U.S. Supreme Court (Judge Gorsuch did not participate in the hearing or decision) held that the U.S. Patent and Trademark Office (PTO) could no longer refuse federal registration of “disparaging trademarks” holding that the “disparagement clause” of the Federal Trademark Act (also known as the Lanham Act) violates the Free Speech Clause of the First …
Singing the Surname Blues
Last month, the Trademark Trial and Appeal Board (“TTAB” or “Board”) issued a precedential decision, affirming the Trademark Office’s refusal of registration for BELUSHI’S for “travel reservations” and related services and “hotel…restaurant and catering services” and related services” on grounds that the mark is “primarily merely a surname.” Although the Board admitted in this case the surname is rare, it …
Wasted Away Again in Marijuanaville?
What do marijuana and margarita have in common? Well, according to the Trademark Trial and Appeal Board, both are terms that the public associates with representing a similar “state of mind” whether induced by a cocktail or the grassy substance. Recently, the Board found that the marks MARIJUANAVILLE applied for various clothing items in Class 25 to be confusingly similar …
False Advertising: No Competition Required
SCOTUS: Non-Competitors Have Standing Under Lanham Act Earlier this week, the U.S. Supreme Court unanimously held that a plaintiff need not be a direct competitor in order to have standing to bring a false advertising claim under the Lanham Act. The Court relied upon a statutory interpretation to reach its decision. It provided two main reasons for its decision: so …
Catalogs as Specimens
Catalogs as Specimens Earlier this month, the TTAB refused registration for the mark TSUBAKI: THE CHOICE FOR CHAIN pursuant to Sections 1 and 45 of the Trademark Act on the ground that applicant U.S. Tsubaki, Inc. failed to submit a specimen showing proper trademark use. Applicant submitted six (6) specimens with its application – all of them catalogs or advertising …
Candy Crushes the Competition
CANDY is a Sweet Trademark In the past few weeks, the internet has been on fire with commentary from so-called experts and laypeople alike aghast at how King.com was able to get its application for CANDY through the U.S. Trademark Office. That trademark application is currently pending at the Trademark Office, which means, the registration has not yet issued in …