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Tag Archives: Trademark Law

Hidden Trademark Landmines in Comparative and Compatibility Advertisements

Posted in Intellectual Property Litigation, IP

Nespresso has filed a lawsuit against Jones Brothers Coffee Distribution Company alleging trademark and trade dress infringement. In support of its trademark infringement claim, Nespresso alleges that Jones Brothers’ use of the words “Nespresso Compatible” in connection with its coffee capsules will cause consumers to believe that the Jones Brothers product is endorsed and/or sponsored… Continue Reading

SCOTUS to Decide if Trademark Licensees Lose Their Rights When the Licensor Becomes Insolvent

Posted in IP, Trademark Law

The Supreme Court has granted review in the matter known as Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, where it will decide whether a licensee loses its right to use a licensed trademark if the licensor files bankruptcy and the bankruptcy trustee chooses to reject the licensor’s license agreement. This decision could significantly… Continue Reading

IP Law Blog Contributor Josh Escovedo Recognized as a Top Trademarks Author in JD Supra 2019 Readers’ Choice Awards

Posted in IP Law Blog Lawyers In The News

Intellectual Property Law Blog contributor Josh Escovedo was recognized this week as a Top Author for the topic of trademarks in the JD Supra 2019 Reader’s Choice Awards. Josh Escovedo practices in Weintraub’s Litigation and Intellectual Property sections.  He counsels and advises clients in a variety of litigation matters with an emphasis on intellectual property, commercial, and… Continue Reading

Consumers Have Standing to Challenge Trademark Registrations

Posted in Trademark Law

The Trademark Trial and Appeals Board recently issued an interesting decision regarding standing to oppose the registration of trademark applications. United Trademark Holdings, Inc. filed for registration of the mark RAPUNZEL for use in conjunction with dolls and toy figures. However, after the USPTO’s examining attorney published the mark for opposition, a law professor filed… Continue Reading

Googling Google

Posted in Copyright Law, Cyberspace Law, Trademark Law, Web/Tech

“I googled it …” has become ubiquitous in every day conversation. Many of us refer to “googling” as the act of searching the internet regardless of whether we use the Google search engine to do so.  But has our everyday use of the verb “googling” rendered the Google trademark unprotectable?  “Nope,” said the Ninth Circuit… Continue Reading

Website Listing of Tequila Client Work Gets PR Firm a Trademark Shot

Posted in Copyright Law, Patent Law, Trademark Law

Can the owner of renowned tequila brand Patrón prevent a former marketing and PR firm from listing it as a client on its website and discussing the services it provided?  Patrón believes it can and has sued its former marketing firm, The Reindeer Group, for trademark infringement in Federal court in Texas. In 2009 Patrón… Continue Reading

Five IP Pitfalls That Start-Up (and Grown Up) Companies Can Easily Avoid

Posted in Copyright Law, Legal Info, Patent Law, Trade Secrets, Trademark Law

In business, there are numerous opportunities for pitfalls, mistakes and errors and they come up in all different legal areas – from basic formation issues to labor and employment to intellectual property. Mistakes and missteps involving intellectual property can be particularly problematic because IP is a company asset; it constitutes a part of (often a… Continue Reading

Pacifico Defends its Trademark Rights on Canadian Soil

Posted in Trademark Law

Another intellectual property dispute has arisen in the brewing industry. This time, however, the battle took place on Canadian soil. British Columbia based Pacific Western Brewing (“PWB”) sued renowned Mexican brewery Cerveceria del Pacifico (“CDP”), arguing the latter’s name was confusingly similar to PWB’s various brew-related trademarks. For those who do not know, Cerveceria del… Continue Reading

Does Trump Own “Make America Great Again?”

Posted in Trademark Law

As I frequently mention in my articles, trademark law is a much more prevalent part of the average person’s life than they realize. We are surrounded by the trademarks of numerous companies every time that we step outside, or even when we look around our own homes. However, we would not generally expect for trademark… Continue Reading

Tiffany & Company v. Costco Wholesale: Tiffany is far from Generic

Posted in Trademark Law

On September 9, 2015, the United States District Court for the Southern District of New York ruled that Costco was willfully infringing Tiffany & Co.’s trademarks by selling diamond engagement rings bearing the renowned jewelry retailer’s name. The suit started back in 2012 when a patron of Costco in Huntington Beach, California decided to reach… Continue Reading

California Homegrown: Protect Your Pot!

Posted in Trademark Law

Let’s face it, we live in a progressive era. Many things that were once taboo in the eyes of the law have become not only socially acceptable, but legal. For example, twenty years ago, if a California state police officer saw you walking down the street smoking what he knew to be marijuana, you were… Continue Reading

The Long Lashes of the Law: The Federal Circuit Rejects Nation-wide Application of An Injunction Based on California Unfair Competition Statutes

Posted in Legal Info, Trademark Law

By:David Gabor On December 30, 2013, the Federal Court of Appeals, in Allergan, Inc. v. Athena Cosmetics, Inc., et al., an as-yet unpublished decision, affirmed a California District Court ruling that has the potential significantly to affect advertising law and the use of the California unfair competition statute at B&P Code §17200, et seq. to… Continue Reading

GoldieBlox v. Beastie Boys – “Girls To Bring A Lawsuit”

Posted in Copyright Law, Entertainment Law, Trademark Law

 By: Scott Hervey From all appearances, it would have been a fight worth watching. In one corner was the Beastie Boys, the Brooklyn bread, 80s powerhouse rap group; they aggressively enforce their intellectual property rights and have never allowed their music to be used in advertisements.  (This commitment was so important to the group that in his… Continue Reading

Weaving a Trademark

Posted in Copyright Law, Patent Law, Trademark Law

 By: Lisa Y. Wang This month, the Trademark Trial and Appeals Board ruled that Bottega Veneta, a luxury Italian fashion brand, well known for its "weave design" handbags and accessories, could register a trademark for that specific design. Bottega Veneta handbags and accessories do not have obvious logos on the outside, signifying its origin. Instead, the weave… Continue Reading

Bad Domain Names

Posted in Trademark Law

Very often one of a business’ most valuable assets is its internet domain name. Even in large, well-established companies, a portfolio of well-chosen domains amount to a significant set of assets, often driving sales and advertising. Yet many businesses often make poor choices in connection with these assets. As the World Wide Web began to mature into… Continue Reading

THE NINTH CIRCUIT THROWS A PENALTY FLAG AGAINST ELECTRONIC ARTS

Posted in Privacy, Trademark Law

  By Dale C. Campbell On July 31, 2012, the Ninth Circuit issued its ruling protecting the right of privacy held by collegiate athletes against the use of their likeness in connection with video games. (Keller v. Electronic Arts, Inc. (2013) 9th Circuit Court of Appeals 10-15387. This decision joins the Third Circuit’s decision in Ryan Hart… Continue Reading

Keyword Advertising Quagmire

Posted in Trademark Law

  By Scott Hervey “Everyone does it” exclaimed the IT staffer in charge of the company’s website. "Everyone uses their competitor’s brand as a keyword to trigger a paid advertisement."   The company’s chief marketing officer remembers something her mother use to say about jumping off a bridge…but that’s not important right now. They received a letter from… Continue Reading

THE BREASTAURANT TRADEMARK – NOT SUCH, A BIG DEAL AFTER ALL

Posted in Trademark Law

By Scott Hervey What do Hooters, Twin Peaks, Canz, Tilted Kilt, and Mugs N Jugs have in common.  These are all “Breastaurants.” According to Wikipedia, a breastaurant is a “restaurant that has sexual undertones, most commonly in the form of large-breasted, skimpily dressed waitresses and barmaids.”    However, on October 23, 2012  the United States Patent… Continue Reading

What’s In a Name? Trademark Infringement and Artistic Expression

Posted in Trademark Law

By Nathan H. Geronimo A recent case in California’s Sixth District Court of Appeal, Winchester Mystery House, LLC v. Global Asylum, Inc., illustrates California’s treatment of trademark infringement with regard to claims involving artistic works.  Winchester Mystery House is a well-known tourist attraction in San Jose, California.  It is a large, Victorian-style mansion built and… Continue Reading