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Waller TIPS

Perspectives on Intellectual Property Issues

Category Archives: Trademark

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Effects of Government Shutdown on USPTO and Copyright Office

Posted in Copyright, Trademark
Last week the United States federal government entered a shutdown, suspending services not exempted by the Antideficiency Act, 31 U.S.C. § 1341. Although the U.S. Patent and Trademark Office currently remains open, the Copyright Office is among the many closed government offices. U.S. Patent and Trademark Office The USPTO remains open, operating on reserve fees collected in the … Continue Reading

The Danger of Outsourcing DMCA Take-Down Notices

Posted in Copyright, Internet, Trademark
A couple of famous, publicly-traded companies have been a bit embarrassed recently when third parties they have engaged to make sure no one is improperly using their trademarks or copyrights online have instead demanded shut downs of legitimate uses. Companies faced with rampant theft of their intellectual property frequently outsource the DMCA Take-Down Notice process … Continue Reading

WIPO Announces New Certification and Legalization Services

Posted in International, Trademark
As of August 1, 2013, the World Intellectual Property Organization (“WIPO”) now offers new certification and legalization services to users of the Madrid trademark system.  Specifically, for the payment of a fee, trademark registrants may now acquire: Certified copies of international trademark registrations and certificates of renewal, reflecting the goods and services at the time … Continue Reading

Common Myths: Registering Stylized Trademarks

Posted in Trademark
There are a number of intellectual property myths that attorneys hear over and over again. Periodically, we’ll feature some of these myths and examine the reality. Myth: I should register my trademark precisely as I use it today — with the same color, font and designs — so my registration is accurate. Reality:  It is … Continue Reading

TTAB Holds Significance of Registration on Supplemental Register Differs by Context

Posted in Trademark
The Trademark Trial and Appeal Board’s (“TTAB”) recent ruling in Otter Products LLC v. BaseOneLabs LLC held that in determining a likelihood of confusion between trademarks, the significance of a registration on the Supplemental Register differs depending on whether the registered mark is being cited by a trademark examiner (during trademark prosecution) or by the … Continue Reading

Mexico to Join International Trademark System February 19, 2013

Posted in International, Trademark
On February 19, 2013, Mexico will become the 89th member of the Madrid Protocol, streamlining the trademark registration process for U.S. trademark owners and others seeking trademark protection in Mexico. To date, trademark protection in Mexico (as with other non-Madrid Protocol countries, such as Canada) requires the use of local counsel to prosecute trademark applications. … Continue Reading

Common Myths: Domestic Companies Don’t Need to Worry about Protecting Trademarks Internationally

Posted in International, Trademark
There are a number of intellectual property myths that attorneys hear over and over again. Periodically, we’ll feature some of these myths and examine the reality. Myth: Because my company sells only in the United States, we don’t need to worry about protecting our trademarks internationally. Reality: Although trademark rights are territorial in nature, in … Continue Reading

USPTO Makes Minor Changes to Classifications, but Be Aware if You Are in an Affected Industry

Posted in Trademark
Although they may go largely unnoticed by many trademark applicants, new and updated identifications and classifications published by the USPTO on January 1, 2013 will affect how applicants in particular industries identify and classify their goods and services.  The changes in the USPTO’s Identification Manual reflect those found in the Tenth Edition of the Nice Classification … Continue Reading

Common Myths: Use It or Lose It

Posted in Trademark
There are a number of intellectual property myths that attorneys hear over and over again.  Periodically, we’ll feature some of these myths and expose the reality.  Myth: Once I have a trademark registration, my brand is protected. Reality: A trademark registration is a tool to enforce trademark rights.  It does not self-execute to prevent others … Continue Reading

Call of Duty Modern Warfare 3 Subject of Trademark Infringement Suit

Posted in Trademark
Activision Blizzard, Inc., maker of the successful “Call of Duty” gaming franchise, recently found itself the subject of a trademark infringement lawsuit alleging infringement of NovaLogic Inc.’s “Delta Force” marks.  The complaint, filed in California federal court, alleges that Activision’s “Call of Duty Modern Warfare 3” incorporates NovaLogic Inc.’s registered trademarks for “Delta Force” and … Continue Reading

Defendants Prevail in Soul Men Lawsuit

Posted in Entertainment, First Amendment, News and Announcements, Trademark
Waller is pleased to report a win in the case Moore v. The Weinstein Company, LLC, et al.  Yesterday, a federal judge granted summary judgment to The Weinstein Company, LLC, Metro-Goldwyn-Mayer Studios, Inc., Genius Products, LLC, and Concord Music Group, Inc. in a trademark, publicity and false light lawsuit filed by soul singer Sam Moore … Continue Reading

Common Myths: False Sense of Security After Obtaining a Trademark Registration

Posted in Trademark
There are a number of intellectual property myths that attorneys hear over and over again.  Periodically, we’ll feature some of these myths and expose the reality. Myth: My company has a trademark registration so our brand name doesn’t infringe on anyone else’s rights. Reality:  When the U.S. Patent and Trademark Office examines a trademark application, … Continue Reading

Is Your Trademark “License” an Unintended Franchise Agreement?

Posted in Franchise, Trademark
All too often, trademark licensors offer the use of their mark along with other intangibles without considering if the trademark license is actually an “unintended” offer of a sale of a franchise.  Such action can be highly problematic because the offer and sale of franchises in the United States is highly regulated under both federal … Continue Reading

Common Myths: Choosing a Brand Name

Posted in Trademark
There are a number of intellectual property myths that attorneys hear over and over again.  Periodically, we’ll feature some of these myths and expose the reality.  Myth: My company can use a certain name for our business or product because we searched the internet and no one else has the same name.  Reality:  Trademark infringement can … Continue Reading

Trademark Protection in the Advent of .XXX

Posted in Internet, Trademark
As may readers may be aware, the new .XXX top level domain (TLD) is set to launch this December. It is intended that this top level domain will be used exclusively by responsible members of the adult entertainment industry. Many trademark owners are rightfully concerned regarding the prospects of typo-squatting and trademark infringement in this … Continue Reading

Bob Felber Contributes to INTA Bulletin

Posted in Trademark
Robert P. Felber, Jr. recently reported on a decision by the Trademark Trial and Appeal Board (“TTAB”), which was included in the August 1, 2011 edition of the INTA Bulletin, published by the International Trademark Association.  The article, entitled ”Bother!  Disney’s Rights in WINNIE THE POOH Marks Challenged,” can be found here. … Continue Reading

Bob Felber Contributes to INTA Bulletin

Posted in Trademark
Robert P. Felber, Jr. recently reported on a decision by the Court of Appeals for the Federal Circuit, which was included in the July 15, 2011 edition of the INTA Bulletin, published by the International Trademark Association.  The article, entitled ”Bank Couldn’t Bank on Reversal at Federal Circuit,” can be found here. … Continue Reading

Wasting Money on Descriptive/Generic Trademarks

Posted in Trademark
Recently, I have been watching the storm (read as incredible waste of resources) being poured into the various battles over the term “APP STORE” or “APPSTORE.” Over the last few months, Amazon.com and Apple have been embroiled in litigation with Apple claiming that it has the exclusive right to use the term “APP STORE” in … Continue Reading

Bob Felber Contributes to INTA Bulletin

Posted in Trademark
Robert P. Felber, Jr. recently reported on a Trademark Trial and Appeal Board (“TTAB”) decision, which was included in the May 1, 2011 edition of the INTA Bulletin, published by the International Trademark Association.  The article, entitled “Cancellation Claims Precluded as Res Judicata,” can be found here… Continue Reading