HILARY J. SUMNER
Creating Assets from Innovations

LAW OFFICE OF  

Click here to edit subtitle

IP In the News

"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.

CLICK HERE FOR FULL ARTICLE

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.

CLICK HERE FOR FULL ARTICLE

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

IKEA Loses Right to Trademark in Indonesia

Posted on February 8, 2016 at 2:40 PM Comments comments (0)

IKEA filed for an Indonesian trademark in 2010 but failed to use it commercially for three consecutive years.  As a result, the Supreme Court in Indonesia recently ruled that IKEA's lack of use invalidated the trademark and awarded the mark to a small furniture maker.  In Indonesia as in the United States it is critical to continue to use a trademark commercially in order to secure rights in that mark.  CLICK HERE FOR ARTICLE



UK Court Rules that Nestle Cannot Trademark Kit Kat Shape

Posted on January 29, 2016 at 7:10 PM Comments comments (0)

A court in the United Kingdom recently held that Nestle cannot trademark the shape of its chocolate kit kat bar. This may pave the way for competitors such as Cadbury to make a similarly shaped bar.  Nestle plans to appeal this decision.

CLICK HERE FOR FULL ARTICLE


Redskins Lose Fight to Keep Trademarks - A New Trend in Disparaging?

Posted on July 15, 2014 at 9:35 AM Comments comments (0)

UPDATE:  Redskins ask Supreme Court to Review the Case https://www.washingtonpost.com/news/dc-sports-bog/wp/2016/04/26/redskins-ask-supreme-court-to-review-trademark-case/" target="_blank">Click Here for Article


The Trademark Trial and Appeal Board recently held that the Redskins mark is disparaging to Native Americans and ordered the cancellation of six of the team's trademarks.  The team no longer has a federally registered mark; however, it is still free to use "Redskins" as an unregistered trademark. While this cancellation will not force the team to change its name it will make it more difficult to curb unauthorized sales of counterfeit merchandise. 


This new USPTO trend in challenging offensive or disparaging marks is being seen in the application for other marks.  The USPTO recently refused to issue the AMISH MAFIA mark to the Discovery Channel finding it "disparaging."  What is troubling about this refusal is that the mark is something of an oxymoron.  It cannot truly be offensive if there is no such organization.  This refusal seems even more arbitrary in light of the fact that a host of other "Mafia" marks are already on the principal register. 


The Discovery Channel challenged the examiner's refusal noting: "MAFIA GRANNIES (Reg. No. 4250545) does not disparage all grandmothers; PORTUGUESE MAFIA (Reg. No. 4404311) does not disparage all people of Portuguese descent; DUTCH MAFIA (Reg. Nos. 4391891, 4391890, and 4391887) does not disparage all people of Dutch descent; AMERICAN MAFIA (Reg. No. 4208994) does not disparage all Americans; THE MEXICAN MAFIA (Reg. No. 3665101) does not disparage all people of Mexican descent; and THE LESBIAN MAFIA (Reg. No. 3361741) does not disparage all lesbians."