Archive | Trademarks

Yesterday, I wrote about Contraband Sports LLC’s lawsuit for declaratory judgement that its four finger weight lifting glove does not infringe Fit Four LLC’s design patent D652,607. If this case goes to trial, could there be any difficulty arising out of Contraband’s name?

On one hand, a party’s name should have no bearing, merits-wise, on whether or not it infringes a patent. On the other hand, does Contraband’s name have a negative connotation that could impact the jury?

The Oxford English dictionary provides one definition of “contraband” as “goods that have been imported or exported illegally.” Merriam-Webster’s dictionary provides an other definition of the term as “illegal or prohibited traffic in goods.” Dictionary.com provides a definition of the term as “anything prohibited by law from being imported or exported.”

Say …

Mainstream Property Group, LLC applied to register the mark NEXT HOMES  for providing assisted living facilities as well as for providing long-term care facilities and short term rehab facilities for seniors. NextHome, Inc. opposed the application based on its NEXTHOME mark, which was registered for real estate brokerage services.

The Board found that the only differences between the marks were (1) the space between “Next” and “Homes” and (2) the HOMES in the applicant’s mark is plural while the opposer’s mark has HOME singular. The Board concluded that “these minute changes do not distinguish the marks.”

The Board went on to find that there was a likelihood of confusion between the marks because the opposer provided its real estate brokerage services to seniors.

Minor differences, such as word spacing or …

Simon Tam a member of the rock group “The Slants.” Tam applied to register the mark The Slants. But the USPTO refused registration under section 2(a) of the Lanham Act asserting that the mark was disparaging. In June of 2017, the Supreme Court found the section 2(a) prohibition on disparaging marks violated the First Amendment in Matal v. Tam, No. 15-1293 (2017). It is an important ruling in the Federal Circuit’s decision striking down the bar on registration of immoral and scandalous marks, so I’m going back to review it now.

Tam’s Aim to Reclaim Ethnic Slur

Tam chose the name “The Slants” to reclaim and take ownership of stereotypes about people of Asian ethnicity. The band draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes. It has …

Erik Brunetti acquired ownership of a trademark application to register the mark FUCT for apparel. The USPTO refused to register the mark under section 2(a) of the Lanham Act asserting that it was immoral or scandalous. But the Federal Circuit found that the provision banning registration of marks comprising immoral or scandalous matter violated the First Amendment. In re Brunetti, no. 2015-1109 (Fed. Cir. 2017). This clears the way for FUCT to register, unless the government appeals this ruling.

The Brunetti case follows the Matal v. Tam, No. 15-1293 (2017) case where the Supreme Court struct down as violating the First Amendment another provision of section 2(a), which barred the registration of marks consisting of material that is disparaging. The outcome in Brunetti is not surprising in light of …

Your trademark is registered in the United States. But you sell goods/services under that trademark both in the US and in foreign countries. Should you use the registered trademark symbol, R enclosed in a circle, i.e. ®, next to the mark on or in connection with the goods/services sold in foreign countries?

Maybe not, unless you registered the mark in the foreign countries where it is used and those foreign countries allow for the use of R in a circle.

When a trademark is registered in the US and the mark is used in the US on or in connection with goods/services described in the registration, US law provides that the owner of the registration can and should indicate that the mark is registered. See 15 U.S.C. 1111. That indication …