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Charlie Meyer quoted in The Indiana Lawyer, “Say what?: Trademark case tests ‘scandalous,’ ‘immoral’ standards”

April 25, 2019

Charlie Meyer was quoted in The Indiana Lawyer article, “Say What?: Trademark Case Tests ‘Scandalous,’ ‘Immoral’ Standards.”

What’s more, the scandalous and immoral clause seemingly gives the government permission to treat some businesses differently than others based on the trademark they choose to use, said Charlie Meyer, a partner at Indianapolis IP firm Woodard, Emhardt, Henry, Reeves & Wagner, LLP. But such unequal treatment would seem to be unconstitutional, Meyer said.

“Is it the government’s job to treat people differently on this basis?” Meyer said, pointing to a question he thinks is an important issue for the justices to resolve. Further, if Tam stands for the proposition that the government cannot determine what is “disparaging,” then Meyer questioned why the government would still be allowed to decide what is scandalous or immoral.

Click here to read the full article.


Using a Webpage as a Specimen for Products Associated with a Trademark

April 18, 2019

When registering a trademark, the Patent and Trademark Office requires the submission of a specimen to show that a trademark is being used in interstate commerce.  It is often tempting to simply submit a screenshot of a webpage showing the trademark and the products associated with that trademark as a specimen.  However, as shown in a recent Federal Circuit decision made precedential, care must be taken when using a webpage as a specimen for goods associated with a trademark to ensure that the webpage is likely to be acceptable.

In the case, In re Siny Corp., 2019 U.S. App. LEXIS 10499 (Fed. Cir. Apr. 10, 2019), the Applicant filed an application for the mark CASALANA for a knit fabric used to make outerwear, gloves, and apparel.  The specimen submitted for this trademark was a screenshot of a webpage that included the trademark along with a picture and a description of the fabric, as well as a phone number and an email address to contact for sales information.  The Federal Circuit affirmed the Examining Attorney and the TTAB’s decision to refuse registration, stating that the webpage was just advertising material and failed to show use of the mark in commerce for the listed products.  It is important to note that this decision specifically pertains to a specimen for goods and that webpages are more readily accepted as specimens for services.

A trademark is used in commerce when it is placed directly on goods or placed on the containers, displays, tags or labels associated with the goods.  A trademark included on a webpage may qualify as a “display” associated with goods shown on the webpage.  However, a webpage simply advertising the goods used in connection with the trademark is not sufficient to qualify as a display, and is therefore not an acceptable specimen.  In order to be an acceptable specimen, the webpage must act as a point of sale location for the products.

As shown by the decision in Siny, showing only a phone number or an email address as contact information for ordering products associated with the trademark may not be enough to make the webpage a point of sale location.  Instead, a webpage submitted as a specimen should either make the goods available for purchase directly through the webpage or display additional information other than just contact information that would be considered essential to a purchasing decision.  Examples of this additional information include prices or a range of prices for the goods, sizing information, the quantity of the goods that may be ordered, how to pay for the product, and how the product will be shipped.

This decision by the Federal Circuit doesn’t mean that webpages cannot be used as a specimen for a trademark application covering goods.  Instead, an Applicant should make sure that when using a webpage as a specimen for a trademark application, the webpage includes as much information as possible about the nature of the goods and includes specific information on how to purchase the goods associated with the trademark.  Following these guidelines should lead to an acceptable specimen.


Ambush Marketing and Clean Zone Ordinances for the Super Bowl

February 1, 2012

 With Super Bowl week already in full swing in Indianapolis, we wanted to remind you of some of the legal issues surrounding ambush marketing in view of the clean zone ordinance put in place by the City of Indianapolis.  Ambush Marketing is when one brand pays to become the official sponsor of an event (e.g., the Olympics, the NFL, the World Cup) and another competing brand connects itself with the event without paying sponsorship fees.

Below is a presentation which discusses ambush marketing and ways to combat it.  The presentation also covers similar laws used to prevent ambush marketing, such as the Olympics Symbol Act in relation to the 2012 Olympics in London, and the clean zone ordinances, adopted by Dallas for the 2011 Super Bowl.

Click here to download a copy of the presentation.

 

January 2012 Trademark Group Luncheon

January 30, 2012

Topics covered in this month’s trademark group presentation include the opening of the registration period for new gTLDs, landrush availability of .xxx domains, and other TTAB case law updates.  To download a copy of this presentation click here.


November 2011 Trademark Group Luncheon

November 15, 2011

Topics covered in this month’s trademark group presentation include enhancements to the trademark electronic application filing service (TEAS), discussion of a case involving trademark unenforceability due to fraud and a case relating to deceptive misdescriptiveness of a mark.  To download a copy of this presentation click here.


October 2011 Trademark Group Luncheon

October 24, 2011

Topics covered in this month’s trademark group presentation include a recent decision involving the sufficiency of a service mark specimen, a recent decision rejecting a descriptive mark on two grounds, and a recent decision finding trade name rights in an admittedly weak mark.

To download a copy of this presentation please click here.


August 2011 Trademark Group Lunch

August 22, 2011

Topics covered in this month’s trademark presentation included:

– Trademark applicants’ websites being used for rejections

– Involuntary waiver of sovereign immunity to trademark infringement

– New test for likelihood of confusion and dilution by blurring

– Update on Google AdWords litigation in the European Union

To download a copy of the presentation click here.

 

 


July 2011 Trademark Group Lunch

July 21, 2011

Topics covered in this month’s Trademark Group presentation include:

– US Patent and Trademark Office (USPTO) is now emailing acceptance of 8 & 15 declarations,

– a proposed rule to permit the USPTO to require more than one specimen for declarations of use,

– .XXX domain names,

– a review of the case concerning John Dillinger’s right of publicity,

– a case concerning the MUSCLE MAIZE trademark is descriptive, and

– a case concerning word reversal in trademarks. 

Click here to download a copy of the presentation.


June 2011 Trademark Group Lunch

June 22, 2011

Topics covered in this month’s trademark group presentation include USPTO’s Report to Congress on Trademark Litigation Tactics, USPTO seeks comments on fee-processing methods, case law updates concerning topics including privacy of e-mails, the “Red Cross Statute,” and contributory dilution.  Click here to download a copy of the presentation.


May 2011 Trademark Prosecution Group Lunch

May 31, 2011

Topics covered in this month’s trademark group presentation include updates from the U.S. Trademark Office and case law updates concerning trademark licensing and likelihood of confusion issues. Click here to download a copy of the presentation.




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