Tag: Trademark

1
Who Owns an Athlete’s Tattoos? The Player? The Tattoo Artist? A Licensor?
2
COVID-19: USPTO Offers 30-Day Extension of Filing and Payment Deadlines to Those Affected by COVID-19 Outbreak
3
COVID-19: UKIPO declares “interrupted days” to extend deadlines
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Trademark infringement case update: Lucky Brands Dungarees v Marcel Fashion Group
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New USPTO Requirement: Mandatory Electronic Trademark Submissions and Physical Addresses
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‘High’ expectations for Cannabis trade mark ‘hash’ed – Is EU trade mark law ready for Cannabis(TM)?
7
UKIPO knocks undefeated Reds off their perch – The LIVERPOOL trade mark and lessons for brand owners
8
The Claridge’s Affair: A win, but at what cost?
9
The Scotch Whisky Saga: Where Name and Reputation is not enough
10
Beauty and the Beast – A tale of (trade mark infringement) as old as time

Who Owns an Athlete’s Tattoos? The Player? The Tattoo Artist? A Licensor?

Who owns a celebrity’s tattoo, and the extent to which that tattoo can be displayed in a commercial context, raises right of publicity, copyright, and trademark issues. A district court in the recent Solid Oak case found no copyright infringement where a video game incorporated tattoos as inked on professional NBA players. Solid Oak Sketches, LLC v. 2K Games, Inc., No. 16-CV-724-LTS-SDA (S.D.N.Y. March 26, 2020).

This case considered use of tattoos as part of lifelike depictions of professional athletes in video games, however the ruling easily relates to individuals with tattoos who commodify their likeness such as celebrities, social media influencers, and musicians.

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COVID-19: USPTO Offers 30-Day Extension of Filing and Payment Deadlines to Those Affected by COVID-19 Outbreak

In a Notice issued March 31, 2020, the U.S. Patent and Trademark Office (“USPTO”) extended certain filing and payment deadlines due between March 27, 2020, and April 30, 2020, by 30 days from the initial due date, provided that the filing is accompanied by a statement that the delay was due to the COVID-19 outbreak. The USPTO’s authority to offer this extension was part of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), signed into law on March 26, 2020.

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COVID-19: UKIPO declares “interrupted days” to extend deadlines

Following similar measures from the EUIPO and other national registries (see here), the UK Intellectual Property Office (the UKIPO), has declared 24 March 2020, and subsequent days until further notice, “interrupted days”. This means that any deadlines for patents, supplementary protection certificates, trade marks, designs, and applications for these rights, which fall on an interrupted day will be extended until the UKIPO notifies the end of the interrupted days period.

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Trademark infringement case update: Lucky Brands Dungarees v Marcel Fashion Group

A nearly 20-year dispute between two competitors in the apparel industry will be heard by the Supreme Court Monday January 13, 2020, on the legal issue of claim preclusion – highlighting the practical pitfalls of releasing trademark infringement claims in settlement agreement between parties that continue to use the marks at issue. The case is Lucky Brands Dungarees, Inc. v. Marcel Fashion Group, Inc., Case No. 18-1086.

The practical lessons to draw from this dispute are numerous:

  1. the importance of initially clearing marks and implementing a plan to handle potential third party objections
  2. strategic enforcement as to when, and against whom, to enforce trademark rights – and squarely on point with this nearly 20 year battle now before the Supreme Court
  3. careful drafting of what claims are released in the context of future use of the same or similar trademarks.
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New USPTO Requirement: Mandatory Electronic Trademark Submissions and Physical Addresses

On Tuesday July 31, 2019, the United States Patent and Trademark Office (USPTO) issued new Rules and Regulations under Title 37 of the Code of Federal Regulations (CFR) Parts 2, and 7. They were to take effect on December 21, 2019, but will now take effect of February 15, 2020.

The impact of the rule, as implemented, is a new requirement for all trademark applicants and registrants to:

  1. electronically file trademark applications, subsequent documents concerning trademark applications, and documents regarding registrations;
  2. provide and maintain a working e-mail address for receiving correspondence from the USPTO for each trademark application and registration; and
  3. provide and maintain an accurate domicile address as a backup for the USPTO to contact if an e-mail correspondence address fails to work.
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‘High’ expectations for Cannabis trade mark ‘hash’ed – Is EU trade mark law ready for Cannabis(TM)?

The EU General Court has rejected a trade mark application which featured the word ‘Cannabis’ together with images of cannabis leaves as it was contrary to public policy.

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UKIPO knocks undefeated Reds off their perch – The LIVERPOOL trade mark and lessons for brand owners

To the interest of many a scouser and football fan alike, Liverpool Football Club’s attempt to register as a UK trademark LIVERPOOL has been rejected by the UKIPO on the grounds that the word is of “geographical significance” to the city. Liverpool FC had filed its application in regards to various goods in relation to football and the filing had attracted significant public attention.

Other English football clubs (Everton, Chelsea and Tottenham) have managed to register several trade marks for each of their respective area names. In addition Southampton Football Club has managed to register SOUTHAMPTON as an EU trade mark. As a result, it is not surprising that Liverpool FC would seek to register a similar mark to help protect its valuable brand.

However, as a result of the filing the club received significant backlash from the people of Liverpool, including their own supporters, and – probably in a related move – Liverpool FC has said that it does not plan to appeal the refusal and it has withdrawn the application. An additional trade mark application for LIVERPOOL with different claims has also been withdrawn.

The matter presents a great case study for brand owners on balancing the need to protect their brand whilst being considerate of the potential adverse PR that will come with the application for certain trade marks.

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The Claridge’s Affair: A win, but at what cost?

Claridge’s Hotel Limited (Claridge’s) recently succeeded in challenging in IPEC the use of the CLARIDGE name by Claridge Candles Limited (Claridge Candles) – a small one-person business.

However, the success came at with a cost for the world renowned hotel as in doing so it lost one trade mark registration entirely and had a second mark reduced in scope due to a non-use counterclaim, highlighting one of the risks of instituting trade mark infringement action.

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The Scotch Whisky Saga: Where Name and Reputation is not enough

William Grant & Sons, the distiller, blender and owner of Glenfiddich, the independent whisky company which markets itself as the “World’s Most Awarded Single Malt Scotch Whisky”, was unsuccessful in its recent opposition of Glenfield’s label trade mark application.

Back in 2018, Mumbai-based business man Vivek Anasane filed a trade mark application for the label of his ‘Glenfield’ Scotch whisky in an attempt to expand his drinks company into the UK. This was quickly opposed by William Grant & Sons who argued that the Glenfield mark was “visually and phonetically highly similar” to the Glenfiddich word mark.

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Beauty and the Beast – A tale of (trade mark infringement) as old as time

IPEC has ruled over the recent dispute between Beauty Bay (claimant) and Benefit Cosmetics (defendant) which arose after Benefit sold a Christmas gift set contained in a globe shaped box displaying the words “Beauty and the Bay”. The gift set was part of a 13 product collection celebrating 50 years since the Summer of Love and the company’s San Francisco heritage which included products like “Glam Francisco”, “I Left my Heart in Tan Francisco” and “B.Right by the Bay”.

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