America runs on just Dunkin’

By Pablo N. Garcia Rodriguez and Carla Vercellone It was 1950 in Quincy, Massachusetts, when Bill Rosenberg founded “Open Kettle”, a coffee and doughnut shop later renamed as “Dunkin’ Donuts” [1] . But that has changed in 2018, and after 68 years of using this name, one of the biggest food chains in the world is changing and dropping its last name, resulting in just Dunkin’. The brand has received mixed reactions from confused consumers and fans from across the world (see at the end of this post). Last year’s opening in Pasadena, Calif. of the first store with what is the brand’s new name today, meant a change was coming for its loyal consumers. Rumors had been swirling around about a new name, but it wasn’t until January 2018 that the coffee and food chain made a move and filed a new trademark application (87768615) with the United States Patent and Trademark Office (‘USPTO’) for goods such as hats,

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Lee v. Tam – Disparaging Mark or Free Speech? – Pending Decision

By Michael Small   Section 2(a) of the Lanham Trademark Act, 15 U.S.C. §1052(a) allows the United States Patent and Trademark Office (USPTO) to refuse registration of marks that contain immoral or scandalous matter.[1]  Known as the disparagement clause, the USPTO enforces the rule in the Trademark Manual of Examining Procedure (TMEP) Section 1203.01, specifying the types of rejected marks that fall under immoral or scandalous nature, such as obscene graphics or disparaging terms.[2]  Examples of rejected trademark applications include the following: Stop the Islamisation of America; Democrats Shouldn’t Breed; Naturally Intelligent God Gifted Africans; and most recently, the cancellation of the Washington Redskins NFL football team’s trademark name in 2014.  Rejected trademarks are void from government benefits, such as preventing registration from other confusingly similar marks during the application process, receiving sole ownership of the mark for advertising purposes, and prevent foreign companies with similar marks to import their trademarked goods.  In the pending U.S. Supreme Court case Lee

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Trader Joe’s Co. v. Hallatt, 981 Fed. Supp. 2d 972 (W.D. Wash. 2013).

This case is currently awaiting a decision from the Ninth Circuit.  Case No. 14-35035. Facts and Procedural History: Trader Joe’s, a specialty United States (“U.S.”) grocery store, filed a Lanham Act trademark infringement and dilution action against Canadian grocery store owner, Michael Hallatt.  To stand apart from its competition in the U.S., “Trader Joe’s developed a rustic South Pacific-inspired theme.”  Brief for Appellant at 6, Trader Joe’s Co. v. Hallatt, (No. 14-35035).  Although Trader Joe’s has a website that displays its products, Trader Joe’s only sells its products at its retail grocery stores in order “[t]o maintain the exclusivity of its branded products.”  Brief for Appellant at 7, Trader Joe’s Co. v. Hallatt, (No. 14-35035).  Trader Joe’s has received several U.S. trademark registrations for its marks, including “the word TRADER JOE’S for retail store services in the field of specialty foods and beverages (Trademark Reg. No. 2,171,157); for processed foods (Trademark Reg. No. 1,424,176); and for beverages (Trademark Reg. No.

read more Trader Joe’s Co. v. Hallatt, 981 Fed. Supp. 2d 972 (W.D. Wash. 2013).

US Trademark Office Ordered to Respond to Petition from the Federal Circuit Regarding Disparaging and Scandalous Marks

 Written By Chitakone Arounlangsy The Federal Circuit, on March 15, 2016, ordered the USPTO to respond to a petition which asserted that the USPTO was ignoring the Federal Circuit’s ruling in December 2015 involving disparaging or scandalous marks.  In In re Tam, an Asian-American rock band’s application for the trademark “The Slants” was denied under 15 U.S.C. § 1056 of Section 2(a) of the 1946 Lanham Act. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015). The TTAB found that the proposed mark was disparaging to the Asian-American community. Id. 15 U.S.C. § 1052, involves marks that consist of or comprise of immoral or scandalous matter, or matter which may disparage persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute. 15 U.S.C. § 1052 (1946). In 2014, the trademark for the Washington Redskins was canceled by the TTAB, for being disparaging to the Native American community. Pro-Football, Inc. v. Blackhorse, 62 F. Supp. 3d 498 (E.D. Va.

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The Wild West of gTLDs and Trademarks

By Evan Jensen Generic top-level domains (gTLDs) are a new and soon-to-be-huge feature of the internet. New websites using a wide variety of newly created domain names will soon be springing up like weeds. Owners of brands and trademarks need to be aware of the threats, and of their options and the tools that are available to protect their intellectual property on the web. This huge expansion of internet real estate also brings a new wave of speculators and cybersquatters. New gTLDs open up a world of possibilities for speculators and cybersquatters to claim popular words and marks for their own profit. Trademark holders need to be proactive in order to protect their marks from being exploited by vultures on the web by taking advantage of ICANN’s new trademark protections, including legal rights objections to gTLD’s and the newly-created Trademark Clearinghouse.

Fourth Circuit Remands Rosetta Stone Ltd. v. Google Inc. 2010 Ruling

By Virginia Dudley On April 9, 2012, the U.S. Court of Appeals for the Fourth Circuit revived the trademark infringement case Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531 (E.D. Va. 2010). The Fourth Circuit overturned the summary judgment granted in favor of Google by the U.S. District Court for the Eastern District of Virginia. The Rosetta Stone case stemmed from Google’s sale of marks as AdWords. Adwords are Google’s online advertizing tool that allows a sponsor to “purchase” keywords that prompt the appearance of the sponsor’s advertisement when the keyword is entered as a search item. Rosetta Stone, a language-learning software company, was established in 1992 and began advertizing in connection with Google’s website in 2002. Rosetta Stone initially accused Google of trademark infringement as a result of the website’s use of their mark in AdWords. In terms of this appeal, the Fourth Circuit re-addressed the possible elements of confusion, application of the functionality doctrine, dilution

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ICANN’s New gTLD: Dot.Protect.Your.Trademark

By Meera El-Farhan The Internet Corporation for Assigned Names and Numbers’ (ICANN) leap into the new generic Top-Level Domains (gTLDs) will introduce one of the largest unprecedented Internet developments. ICANN’s introduction of the New gTLDs is aimed to promote competition, add consumer choice, increase market differentiation and enhance the diversity pool of geographical and service providers.[1] The New gTLD program allows any private or public entity worldwide to apply for any custom-made gTLDs (example: .com or .yournewdomainname). Furthermore, gTLD strings will be capable of incorporating characters from other languages such as Mandarin Chinese. Although many corporations and other organizations publicly announced their application to certain gTLDs -Google announcing its application to .google, .docs, .youtube, and .lol- ICANN has postponed sharing applicants’ information until “Reveal Day” (June 13, 2012). On Reveal Day ICANN will publicly post all TLD character strings entities have applied for; thus, triggering the processes of trademark “protection” mechanisms. Background The new gTLD is designed to virtually introduce

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Introducing Stein IP LLC Fall 2012 IP Training Program October 1-19, 2012

 Stein McEwen LLP is pleased to announce that it will be hosting an intellectual property training program from October 1-12 with an add-on session from October 15-19, 2012 in Washington DC.  The purpose of the Stein McEwen LLP Fall 2012 IP Training Seminar is to provide an overview of U.S. Intellectual Property Law, including patents, trademarks, copyrights, and trade secrets. The lectures will cover fundamentals of patent procurement, with optional sessions extending to the scopes of trademarks and copyrights, IP licensing, and IP litigation. A series of lectures will be presented by Stein McEwen LLP attorneys regarding these subjects, including workshops for the participants to receive hands-on experience.  These workshops will include activities such as reviewing disclosures of an invention and drafting sample claims to cover the subject matter of the invention. Tours of the U.S. Patent and Trademark Office, the U.S. Court of Appeals for the Federal Circuit, and a U.S. District Court will allow the participants an opportunity

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Hermes LosesTrademark Battle on its Chinese Name for the Third Time in China

By Evelyn Li Beijing Municipality First Intermediate People’s Court ruled against Hermes International on its appeal for an earlier 2011 decision made by the Trademark Appeal Board of State Administration for Industry and Commerce of PRC (the “Board”) on an issue of a trademark cancellation dispute. A clothing manufacturing company in Guangdong province, China, applied for the trademark “ai ma shi (爱馬仕)” with the Chinese Trademark Office in 1995. After passing the Board’s preliminary review and being publicly announced through the official trademark Gazette in 2002, the manufacturing company, Dafeng Garment Factory (“Dafeng”), gained trademark rights to use the mark “ai ma shi (爱馬仕)” in China mainland. “Ai ma shi” is what the Chinese call Hermes in Mandarin. Although there are several different ways for spelling out “ai ma shi” in Chinese characters, all of them look extremely similar and all of them pronounce the same way. According to the record in the Chinese Trademark Office and the Board, Hermes

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