Finnegan – Incontestable® Blog

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  • Intellectual Property
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Jury Finds Allstate’s DRIVEWISE Mark Infringed By Kia

On November 9, 2017, a nine-person jury in the Central District of California found Kia Motor Corp.’s high-tech “Drive Wise” vehicle add-ons were likely to cause confusion with Allstate Insurance Co.’s trademarked “Drivewise”…more
 /  Civil Procedure, Intellectual Property, Science, Computers, & Technology

TTAB Finds BREATHLESS Mark Is Registrable

Boehringer Ingelheim Pharmaceuticals, Inc. sought to register the mark BREATHLESS for “promoting public awareness of idiopathic pulmonary fibrosis [‘IPF’], its symptoms, its prevention and its treatment.” The Examining Attorney…more
 /  International Law & Trade, Science, Computers, & Technology

Descriptive Use Of Applied-For Mark On Website Is Fatal To Registration

A recent non-precedential opinion from the TTAB emphasizes the need for brand owners to be conscious of how they use potentially descriptive brands. U-Haul International, Inc. applied for five TRAILERSHARE-formative…more
 /  Administrative Law, Intellectual Property

Lanham Act’s Bar On Immoral And Scandalous Matter Found Unconstitutional

On December 15, 2017, following hot on the heels of the Supreme Court’s recent ruling striking down the Lanham Act’s disparagement clause (Matal v. Tam, 137 S. Ct. 1744 (2017)), the Federal Circuit ruled that the Lanham Act’s…more
 /  Administrative Law, Intellectual Property, Science, Computers, & Technology

Deadline Approaching to Update Designated Agent Under the Digital Millennium Copyright Act

The Digital Millennium Copyright Act (DMCA) protects eligible internet platforms from secondary liability for copyright infringement under the “safe harbor” of 17 U.S.C. § 512. One condition of safe harbor protection is that any…more
 /  Intellectual Property, Science, Computers, & Technology

Reverse Domain Name Hijacking In UDRP Proceeding Leads To Award Of Attorney Fees In District Court

The Southern District of Florida recently awarded attorney fees in a reverse domain name hijacking case. Defendant PeopleNetwork ApS initially opposed Plaintiffs’ trademark registrations for various BEAUTIFUL PEOPLE marks,…more
 /  Intellectual Property, Science, Computers, & Technology

Extrinsic Evidence May Not Be Used To Distinguish the Commercial Impressions of Marks In An Ex Parte Likelihood-of-Confusion Analysis

In a non-precedential opinion, the Federal Circuit affirmed that in an ex parte proceeding, when analyzing the likelihood of confusion between a registered and an applied-for mark, evidence extrinsic to the application and cited…more
 /  Intellectual Property, Science, Computers, & Technology

Court Reiterates That Standard for Recovering Attorney Fees Under Lanham Act Is High

On October 31, 2017, the Western District of Missouri denied a request for attorney fees that was based only on a successful defense against false advertising claims. Plaintiff Healthmate International, LLC and Defendant…more
 /  Civil Procedure, Communications & Media Law

Win or Lose, Trademark Applicants Must Pay USPTO’s Attorney Fees in District Court Appeals, Says Eastern District of Virginia

On October 26, 2017, the Eastern District of Virginia became the latest court to weigh in on the USPTO’s position regarding whether trademark applicants who appeal adverse TTAB decisions directly to a district court for de novo…more
 /  Administrative Law, Intellectual Property, Science, Computers, & Technology

Threat of TTAB Cancellation Proceeding Insufficient To Establish Case or Controversy

The District of Maryland ruled that the mere threat of a TTAB cancellation proceeding is not sufficient to create a case or controversy to allow the trademark owner to bring a declaratory judgment action for trademark…more
 /  Administrative Law, Intellectual Property, Science, Computers, & Technology

Use of Green and Yellow for Agricultural Equipment Infringes and Dilutes Deere’s Trade Dress Rights

Deere & Company has for more than 100 years sold a wide variety of agricultural, forestry, lawn, and garden equipment. Nearly all its agricultural equipment is painted green and yellow, and Deere owns several registered marks…more
 /  Intellectual Property, Science, Computers, & Technology

Court Says Trademark Litigant Must Produce Documents Held By Foreign Subsidiary

Republic Technologies (NA), LLC owns the trademark OCB for roll-your-own cigarette paper. HBI International sells competing cigarette paper under the trademark RAW. In March 2016, Republic filed a declaratory judgment action…more
 /  Intellectual Property, Science, Computers, & Technology

Trademark Licensee Cannot Claim Priority Based on Brand-Owner’s Pre-License Common-Law Rights

On September 8, 2017, the TTAB held that, absent ownership rights, a trademark licensee cannot establish priority based on a licensor’s use of the mark prior to the date of the license. Pro Boxing Supplies, Inc. owns a…more
 /  Intellectual Property

Court Says Flawed Likelihood-of-Confusion Survey Which Followed Neither the Ever-Ready nor Squirt Standards Was Prejudicial Necessitating

On September 11, 2017, the Northern District of Illinois granted a motion for a new trial based on the improper admission of prejudicial likelihood-of-confusion survey evidence. The Black & Decker Corporation sued Positec USA…more
 /  Intellectual Property, Science, Computers, & Technology

Court Finds Trademarked Words Can Be Used To Describe Property’s History

On July 14, 2017, the Eastern District of Kentucky found that the use of trademarked words to describe a property’s history is not trademark use. In 2014, Peristyle, LLC purchased the abandoned Old Taylor Distillery in…more
 /  Intellectual Property
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