Under a new procedure in the United States
Patent and Trademark Office (“USPTO”), trademark registration maintenance and
renewal filings are randomly selected for audit when the goods or services list
includes multiple items. In the audit,
the examiner issues an Office action requesting proof of use of the mark for
two additional goods or services per class in the registration that were not
shown in the specimen(s) of use filed with the maintenance filing. More
Southern District of New York: Preclusive Effect Given to TTAB Decision on Likelihood of Confusion in Trademark Infringement Litigation
Ceasri S.R.L. v. Peju Province Winery, L.P., 2017 WL 6509004 (S.D.N.Y. December 11, 2017)
In 2015, the U.S. Supreme Court held in B&B Hardware, Inc. v. Hargis Industries,
Inc., 135 S.Ct 1293 (2015), that a decision of the Trademark Trial and
Appeal Board of the U.S.More
Trademark Manual of Examining Procedure: Can we Really do That? Little-Known Provisions of the TMEP
The Trademark Manual of Examining Procedure (“TMEP”) is the official manual
of the United States Patent and Trademark Office governing how the Office
handles trademark applications and registrations. Some of its provisions are frustratingly
restrictive for trademark owners, such as prohibitions against accepting
advertising materials as specimens of use for marks for goods. More
U.S. Design Patents: Protecting New Fashion Designs Through U.S. Design Patent Rights
Protections available
for new fashion designs in the U.S. appear more limited than in certain other countries
and jurisdictions. There is no
unregistered design right. Copyright
laws tend not to apply to utilitarian articles like footwear and bags. Moreover, developing trademark and trade
dress rights usually requires extensive prior use sufficient to demonstrate
acquired distinctiveness or secondary meaning in the particular article to
establish source-indicating significance among consumers.More
U.S. Copyright: December 31, 2017 Deadline to Avoid Loss of Safe Harbor Protection Under the Digital Millenium Copyright Act
The Digital Millennium
Copyright Act (“DMCA”) provides internet service providers (“ISPs”) with an
important safe harbor from copyright infringement liability based on infringing
material residing on their systems or networks at the direction of internet users. Among other requirements for safe harbor
eligibility, each ISP must designate an agent to receive notifications of
claimed infringement and provide information concerning the agent to the U.S.More
Trademark Trial and Appeal Board: Trademark Licensee Cannot Establish Priority Based on Use by Licensor
Julie A. Moreno v. Pro
Boxing Supplies,
Opp. Nos. 91214580, 91214877, Canc. No. 92058878 (T.T.A.B. Sept. 8, 2017)
In a recent precedential case, the Trademark
Trial and Appeal Board (“TTAB”) found that use of a mark by a licensor does not
inure to the benefit of a licensee for the purpose of establishing
priority. More
United Kingdom: New “Unjustified Threats” Legislation
The Intellectual
Property (Unjustified Threats) Act 2017
The new Act on
“unjustified threats” came into force in the United Kingdom on October 1, 2017
following a long vetting process and much public commentary by European
practitioners. The concept of a remedy
for “unjustified threats” in intellectual property matters in the U.K.More
Myanmar: New Trademark Law to be Implemented
Myanmar’s first formal
trademark law is expected to take effect in late 2017 or early 2018, and the
Myanmar Intellectual Property Office will be established under the Ministry of
Education. The new law will modernize
Myanmar’s trademark system and align it with international standards.
Notably,More
European Union: Court of Justice of the European Union (“CJEU”) Decisions on Unitary EU Law
A. National Laws do not Supplant EU law on GIs
Instituto dos Vinhos do Douro e do Porto v. EU Intellectual
Property Office (EUIPO) (Case C-56/16 P)( September 14, 2017) .
On October 27, 2006,
Bruichladdich Distillery Co.More
European Union: Certification Mark Registration Now Possible
Trade associations,
government bodies, technical institutes, and other public and private entities
that certify that goods and services meet certain quality standards are now
able to register their certification marks in the EU.
The EU certification
mark, available as of October 1, 2017,More