HILARY J. SUMNER
Creating Assets from Innovations

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IP In the News

TRADEMARK SCAM LETTERS - THINGS TO LOOK FOR

Posted on August 15, 2019 at 6:35 PM Comments comments (0)

More and more of my clients have been receiving trademark scam letters purporting to be from the United States Patent and Trademark Office.  These letters often appear official in nature and include scary notations such as "CANCELLATION PENDING."  These companies have defruaded trademark owners of millions. If you have received this type of note, the following article includes some things to look for such as exorbitant fees or fast approaching deadlines.

CLICK HERE FOR SOME TIPS ON SPOTTING FAKE TRADEMARK FEE LETTERS



Walmart Ordered to pay $95.5 Million for TM Infringement

Posted on February 19, 2019 at 3:45 PM Comments comments (0)

Walmart was recently ordered to pay Variety Stores after a jury found that the company infringed Variety's registered trademark BACKYARD. The jury concluded that Walmart's use of the mark in a line of grilling products constituted willful infringement, resulting in a $95.5M treble damage award.

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Levi Throws Its Weight in TM Suit and Loses

Posted on February 9, 2019 at 11:30 AM Comments comments (0)

Since 1936, Levi has been placing a small fabric tag with the name LEVI on the pockets of uts denim products.  The company recently filed a trademark suit against Barbour, an English clothier that has been in business since 1894.  Levi claimed that the blue fabric tags placed in the pckets of Barbour clothing created a liklihood of confusion. On February 1st, a Judge dismissed the case calling Levi Strauss a "bully."

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"Scandalous" trademarks on the Heels of Matal v. Tam

Posted on September 26, 2018 at 5:10 PM Comments comments (0)

Proctor & Gamble has recently filed two trademark applications for  "WTF" and "FML" - two colorful acronyms containing the word "F*CK".  These marks would have formerly been rejected on the basis that they are "scandalous" or "immoral;"  however, recent decisions validating registration of THE SLANTS (a band with Asian members) and REDSKINS (an NFL team) has changed the trademark landscape. A recent Federal Court decision noted, "the First Amendment protects private expression, even private expression which is offensive to a substantial composite of the general public,” holding that FUCT is a registerable trademark.

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Is it Safe to Use a "Dead" Trademark?

Posted on May 26, 2018 at 4:55 PM Comments comments (0)


Cancellation of a trademark registration does not extinguish common law trademark rights. If the owner continues to use the mark after abandonment or cancellation by the USPTO, that owner will still enjoy common law protections allowing for use within the current "zone of commerce."  While it may possible to register a canceled or abandoned mark, one should think carefully and research any potentially confusingly similar uses.

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Louis Vitton Doesn't See the Humor

Posted on December 15, 2017 at 10:15 AM Comments comments (0)

A hand bag company called My Other Bag (MOB) has been engaged in a long legal battle with Louis Vitton.  The company claimed that MOB's canvas tote bags depicting images of Louis Vitton bags was an infringing use of their copyrights and trademarks and was diluting their brands. The District Court for the Southern District of New York held that such use amounted to parody and was an acceptable use.  The Second Circuit affirmed and the Supreme Court rejected Louis Vitton's appeal.  CLICK HERE FOR FULL ARTICLE





Amazon Attempts to Trademark Blue Rings

Posted on December 11, 2017 at 11:45 AM Comments comments (0)

In July 2016, Amazon submitted an application to trademark the blue rings that encircle the top of their Echo product.  This type of trademark has been granted in the past and will turn on whether the general public associates these cyan rings with the voice-controlled speaker.  CLICK HERE FOR ARTICLE



Be Wary of Bluffing an IP Action in the UK

Posted on November 15, 2017 at 6:00 PM Comments comments (0)

"Threatening" a potential infringer for acts performed in the UK will now be govered by a new Intellectual Property Unjustified Threats Act. The act took effect on October 1, 2017 and outlines "permitted communications" between potential adversaries in patent, trademark and designs.  It should be noted that the act will not apply to copyright infringements, assertions of passing off or trade secret actions.  CLICK HERE FOR FULL ARTICLE


Cheerios Loses Fight to Trademark Yellow Cereal Box

Posted on September 1, 2017 at 10:25 AM Comments comments (0)

After two years of trying to secure the color yellow as a trademark, the TTAB has ruled that consumers do not necessarily associate a yellow box with Cheerios brand cereal Click here for full article




Choose your Trademark Carefully! 7 Unfortunate Branding Mistakes...

Posted on December 14, 2016 at 5:00 PM Comments comments (0)

When creating a trademark it is important to look at the selected name from all angles and potential misunderstandings... 

CLICK HERE FOR ARTICLE ON THE 7 MOST UNFORTUNATE BRAND NAMES EVER TRADEMARKED