KMK Law Intellectual Property Blog

Under the Lanham Act, a trademark is considered abandoned “when its use has been discontinued with intent not to resume such use.” Three consecutive years of nonuse constitutes a prima facie showing of abandonment. As a result, if an owner abandons its trademark, the owner cannot prevent newcomers from coming along and bringing the trademark back to life. Trademark owners must actively use their marks in commerce to ensure a third-party will not revive the mark in the future and benefit from the original owner’s use. The developing case The Real USFL, LLC v. Fox Sports, Inc., demonstrates this concept in full force.

The U.S. Supreme Court ruled today that a generic word like “booking” combined with “.com” can achieve trademark registration even if the generic word alone cannot. The opinion, authored by Justice Ruth Bader Ginsberg, rejected the U.S. Patent and Trademark Office’s nearly per se argument that “generic.com” terms are ineligible for trademark registration regardless of consumer perception evidence.  “Whether any given ‘generic.com’ term is generic, we hold, depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term ...

On 31 January 2020, the United Kingdom officially left the European Union. However, the withdrawal agreement concluded between the EU and the UK provides for a transition period until 31 December 2020, during which time EU law remains in force in the UK. This transition period applies to, among other things, the EU Trademark Regulation as well as its implementing regulations.

As a result, until the end of 2020, existing EU trademark registrations will not be adversely affected. In particular, as of 1 January 2021, holders of valid EU trademark registrations will automatically

You may be tempted this time of year to create advertising featuring The Elf on the Shelf^® (“TEOTS”) interacting in humorous ways with your product or service.  DON’T!  While your audience may engage and enjoy such a campaign, TEOTS products should not be used to promote or endorse your products or brands.  TEOTS’s 2015 Specialty Retailer Asset Guidelines state that doing so without express written consent from TEOTS may constitute intellectual property infringement.  There’s likely a more updated version of these Guidelines; nevertheless, the twenty-page .PDF makes it ...

Whether you’re an active influencer on social media or just occasionally endorse a friend/family member’s product or service, check out the easy-to-read (and apply!) Disclosures 101 for Social Media Influencers brochure and video the FTC published last week.  One way to stay out of trouble is to sufficiently disclose your relationship.  Find the document and three videos here.

Once a company owns a trademark, it must police the mark for unauthorized use, or risk losing its rights. As a result, companies will send “cease and desist” letters to enforce and protect their marks. At times, however, legal rights are only one consideration. Public opinion and consumer perception are also part of the equation, as the Aloha Poke Co. (“Aloha Poke”), a Chicago based restaurant, recently learned firsthand.

The MLB team in Cleveland has finally decided to stop wearing "Chief Wahoo," a caricature of a Native American, on their uniforms. The change will happen in 2019. Interestingly, however, the team told ESPN that it "will still sell merchandise featuring the mascot in Northeast Ohio" because "[t]he team must maintain a retail presence so that MLB and the Indians can keep ownership of the trademark."

In perhaps the least surprising trademark decision of the past 12 months, and one that could have been rendered in under 5 pages (rather than the 50 it actually took), the Court of Appeals for the Federal Circuit last Friday held that the Lanham Act’s Section 2(a) bar on registration of marks which “consist of or comprises immoral…or scandalous matter” is an unconstitutional, content-based restriction on speech. In re Brunetti, Appeal No. 2015-1109 (Fed. Cir. December 15, 2017). In that case, Erik Brunetti had toiled for more than 6 years attempting to register his mark, FUCT, for clothing. Those efforts were uniformly unsuccessful despite some weakly-creative arguments that the word, “fuct,” was not actually vulgar, and even if it was, Section 2(a) did not bar registration of “vulgar” marks.

In a non-precedential decision, the Trademark Trial and Appeal Board (“Board”) recently reversed a refusal to register Heritage Distilling Company’s application for the mark, BSB, for “distilled spirits” based on the following mark owned by Black Shirt Brewing Co. for “brewpub services; taproom services; taproom services featuring beer brewed on the premises”:

If you sell private label products on Amazon, please listen up! Amazon recently released its Brand Registry 2.0. The new and improved Brand Registry is Amazon’s most recent attempt to combat brand violations on its online marketplace.