United States Federal Circuit, 02/21/2012
Coach Services, Inc. v. Triumph Learning LLC, No. 2011-1129
Trademark Archive
Coach Services, Inc. v. Triumph Learning LLC
By Dominic A. Frisina JD, MA | Filed in Board of Patent Appeals and Interferences (BPAI), CAFC, TrademarkLEGAL ALERT: .XXX Domain Names
By Robert H. Bejcek II | Filed in Cybersquatting, Internet Law, TrademarkAs more new top-level domain names (TLD) are being released, one which poses the greatest threat from cybersquatters is the new .XXX TLD. The new XXX TLD is intended to be used by the adult entertainment industry. However, registration will not be limited to those in that industry. Potentially, your trademark could appear with a .XXX TLD within the coming months. So, how do you protect yourself? Read the remainder of this entry »
“Trenched” Trademark
By Robert H. Bejcek II | Filed in Identification of Goods and Services, International IP, TrademarkA new Xbox 360 game titled Trenched was recently released through Microsoft’s online service, Xbox LIVE. However, on the day of release while U.S. members of Xbox LIVE were enjoying the new game, European members were left wondering where the promised release was. While no immediate answer was forthcoming, it has been revealed that a Portuguese board game designer owns a prior conflicting community trademark on the word “Trench” within the European Union.[1] Rui Alípio Monteiro registered the trademark in 2009 to be used in connection with “Computer games; programs for computer games.” and “Games; board games; game tables; TV console games.”
See the registration: Trenched Registration Certificate.
While trademarks in Europe can be obtained individually nation by nation, it is much more efficient to obtain a Read the remainder of this entry »
Update: The Hangover Part II – Tyson’s Tattoo
By Robert H. Bejcek II | Filed in Copyright, IP and Business, IP Litigation, Trademark
A trial date of February 21, 2012 has been set for the dispute between tattoo artist S. Victor Whitmill and Warner Bros concerning the use of a tattoo, created by Whitmill, in the movie The Hangover Part II. You’ll recall that the Courts refused to grant Whitmill a preliminary injunction to prevent the release of the movie. However, since then Warner Bros has gone on record in a brief to the Court stating that if the dispute is unable to be resolved before the DVD release date, which is scheduled for sometime in December 2011, the movie will be digitally altered to remove the allegedly infringing tattoo. If the use of the tattoo in the movie is found to infringe Whitmill’s copyright, this move will save Warner Bros from additional liability as well as deny Whitmill the chance for additional monies in the way of a larger award. Instead, Whitmill will have to rely solely on the use of the tattoo in theatric showings as well as on promotional marketing to determine damages. Since a private mediation session has already been scheduled for June 16, it’s likely that this case will be settled (confidentially) long before then.
Identifying Federal Trademark Goods and Services: A Cautionary Tale
By Robert H. Bejcek II | Filed in Identification of Goods and Services, IP and Business, IP Litigation, Trademark
Formulating an accurate identification of goods and services is a critical element of preparing a federal trademark application. Failure to do so, or failure to accurately restate the goods and services in Statements of Use, Declarations of Continued Use, and/or renewals can result in your registration being cancelled for fraud on the trademark Office. In 2003 the Trademark Trial and Appeals Board (TTAB) in Medinol v. Neuro Vasx, Inc. established a very low bar for finding fraud.[i] Later in 2009 the Federal Circuit in In re Bose Corp. raised the bar back to a more reasonable level, but the danger of cancellation remains.[ii] Read the remainder of this entry »
Cybersquatting Develops from Disgruntled Employee
By Robert H. Bejcek II | Filed in Cybersquatting, Internet Law, TrademarkWith the advent of the personal computer and the beginning of the Internet age, intellectual properties were exposed to new types of infringements that were not addressed by traditional IP laws. In response, new laws were enacted. The Anticybersquatting Consumer Protection Act (ACPA)[1] was one such law. The ACPA prevents registering trademarks as domain names and then attempting to sell that domain name back to the corporation. Read the remainder of this entry »
New Ruling in Famous Victoria’s Secret Trademark Dilution Case
By Robert H. Bejcek II | Filed in Dilution, IP Litigation, TrademarkOn May 19th, 2010, the Court of Appeals for the Sixth Circuit decided the next, and perhaps final, chapter in the hallmark Victoria’s Secret Catalogue v. Moseley trademark dilution case, which began back in 1998.[1] In the long history of this legal battle, both parties to the case have won during at least one of the trials leading up to the May 19th decision. This case was so monumental that during its litigation it even elicited Congressional attention after its Supreme Court holding. That attention led to a revision of U.S. trademark law. The importance of this decision rests in its ability to clarify and solidify the legal requirements and standard of proof for trademark dilution by tarnishment in cases where the new trademark is used in the sale of products of a sexual nature.
Practical Trademark Law and Your Business
By Dominic A. Frisina JD, MA | Filed in TrademarkI have counseled many businesses in trademark matters over the years, and one thing I have found is that most business people, indeed most people, do not understand their options regarding the protection of their trademarks. This article will clarify the options and put you in a better position to make an informed decision on your own behalf.
