trademark

Donald Trump Wins Trademarks in China

by AEON Law on March 13, 2017

Trump’s Chinese Trademarks:

conflict of interest or

preventative step?

image
This work has been released into the public domain by its author, Vrlobo888 at the wikipedia project. This applies worldwide.

President Donald Trump’s intellectual property ownership has been in the news lately.

(We previously discussed how intellectual property law in the US might change under a Trump administration, and candidate Trump’s use of Neil Young songs.)

The New York Times reported that Trump won a preliminary appeal to register 38 new trademarks in China.

Read the full article →

New Trademark Requirements in Effect

by AEON Law on February 18, 2017

USPTO

Implements new trademark rules;

more proof now required

image

Effective February 17, the US Patent and Trademark Office has amended its rules on trademark usage and intent to use.

The new rules are part of an effort to clear out "dead wood" — trademarks that are registered (and thus not available to others) but not actually in use by their owners.

Read the full article →

Federal Circuit

says "perception" is the key

in SaaS trademark case

image
By 百楽兎 – Own work. Cloud icon is from (Public domain), computer icon is from (GPL), CC BY-SA 3.0, https://commons.wikimedia.org/w/index.php?curid=9955849

The Federal Circuit vacated and remanded a ruling by the Trademark Trial and Appeal Board (TTAB) on whether certain trademarks used for software-as-a-service (SaaS) were eligible for federal trademark protection.

The case is In re JobDiva, Inc.

In 2004, the US Patent and Trademark Office issued JobDiva’s registration for the service mark JOBDIVA for “personnel placement and recruitment” services.

Read the full article →

When Can US Trademark Law Apply outside the US?

by AEON Law on October 4, 2016

Trader Joe’s market

Gets chance to make trademark case

against copycat

image
By Anthony92931 – Own work, CC BY-SA 3.0, https://commons.wikimedia.org/w/index.php?curid=23093504

For the most part, US intellectual property laws apply only inside the territorial boundaries of the US.

There are some rare exceptions. For example, as we blogged about previously, US patent law can apply to cases of infringement on US-flagged ships in international waters.

Read the full article →

Protecting Trademarks via TTAB

by AEON Law on July 20, 2015

WHEN SHOULD YOU FILE AN

OPPOSITION AT TTAB?

PROTECTING TRADEMARKS

One way to protect your trademark rights at an early stage is to institute a trademark opposition proceeding with the Trademark Trial and Appeal Board (TTAB).

alarm clock

This action gives you an opportunity to object to a trademark application that you feel could harm your business or confuse consumers about the true source of the goods or services involved.

It’s important to keep in mind that you have a very limited window in which to file such an opposition.

Once a proposed trademark is published, opposers only have 30 days in which to start an opposition proceeding.

Opposers can also file a request for an extension of time to oppose, but this extension request must still be filed within the 30 days. If you’re even considering opposing a rival mark, this buys you some time to decide.

(This opposition process only applies to applications on the Principal Register. Oppositions to marks on the Supplemental Register may be filed after the mark is registered.)

You can oppose a proposed mark on the following grounds:

  • The proposed mark is likely to cause confusion with one or more of your own trademarks.
  • The proposed mark is merely descriptive – for example, “Apple” brand apple juice.
  • In the case of a design mark, the design is functional rather than aesthetic.

A “functionality” challenge can be used offensively as well as defensively, as shown by a recent trade dress decision involving Apple iPhones.

As reported by Fortune,

Apple claimed Samsung’s smartphones looked so much like Apple’s that customers were confused and that the iPhone’s reputation was thereby tarnished. The jury agreed.

However, the Federal Circuit disagreed, finding that the iPhone’s rounded corners were functional – they help you get the phone out of your pocket without snagging it.

Thus, if you’re concerned that a trade dress registration by a competitor could foreclose your use of functional features in your own products, you may want to consider an opposition proceeding.

Takeaway

Many companies have their trademark lawyers regularly monitor trademark applications in order to submit timely oppositions. Please contact us if you’re interested in this service.

 

Yes, Legos Can Be Protected By Trademark

EVERYTHING IS AWESOME FOR LEGO AS COURT PROTECTS FIGURINES The General Court of the European Union has ruled that the shape of Lego figurines can be registered as a trademark. The case comes in the wake of a similar recent advisory decision by the advocate general of the European Court of Justice that the shape […]

Read the full article →