The Womp Womp Word

Apple Nears Settlement in Brazilian iPhone Dispute

Posted by on Mar 12, 2013 in The Womp Womp Word | 0 comments

Apple Nears Settlement in Brazilian iPhone Dispute

According to Brazil’s largest daily newspaper, Folha de São Paulo (via Forbes), Apple and Brazilian company IGB Electronica are close to reaching a settlement agreement over the iPhone trademark in Brazil.  Gradiente Electronica, an electronics brand owned by IGB, filed a trademark application for “iPhone” with the Brazilian Industrial Property Institute (INPI) in 2000, seven years before Apple launched its iPhone. In January 2008, the Brazilian company was granted exclusive trademark rights until 2018, as long as it produced a product...

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Greek Paddle Manufacturer Prevails on Laches Defense After Four Decades of Infringement in Abraham v. Alpha Chi Omega

Posted by on Mar 1, 2013 in The Womp Womp Word | 0 comments

What happens when a trademark owner waits over 30 years to enforce its trademark? The Fifth Circuit recently addressed this question in an opinion regarding a dispute between a maker of decorative sorority and fraternity paddles and several Greek organizations.   Thomas Kenneth Abraham has been designing, marketing and selling his products—long, wooden paddles decorated with Greek letters and insignia—since he founded his company, Paddle Tramps Manufacturing Co., in 1961. Abraham originally marketed his products directly to sororities...

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Fighting Back Against Foreign Counterfeiters

Posted by on Nov 13, 2012 in The Womp Womp Word | 0 comments

Fighting Back Against Foreign Counterfeiters

Big brands win big battles this week in the ongoing war against counterfeit goods as Coach Inc. and Tory Burch LLC steamroll websites selling fake products. The iconic fashion designers separately went head to head with hundreds of domain owners allegedly infringing their trademarks and facilitating the sale of counterfeit goods. In addition to the Court granting a permanent injunction, Coach received an order transferring ownership of 573 domain names to its company and was awarded over $257 million in statutory damages. Around the same time,...

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YSL Puts an End to Shoe Quarrel

Posted by on Oct 17, 2012 in The Womp Womp Word | 0 comments

Yves Saint Lauren SAS is throwing in the towel, or shoe technically speaking, and relinquishing its counterclaims against rival Christian Louboutin. After the Second Circuit held that YSL’s monochromatic red shoe did not infringe Louboutin’s trademark, only YSL’s counterclaims remained in the case. A total of six, the counterclaims sought cancellation of some Louboutin marks and damages stemming from YSL retailers being forced to return numerous red-soled shoes. As to YSL’s reasons for seeking dismissal of the case, it said it wants to...

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Cadbury protects the Color Purple

Posted by on Oct 3, 2012 in The Womp Womp Word | 0 comments

Cadbury protects the Color Purple

Only a month after a United States Court of Appeals issued the emphatic opinion in Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., No.11-3303-cv (2d Cir. September 5, 2012) preserving a place for single colors in the world of trademarks, Europe weighs in similarly on the issue. Dismissing an appeal for Nestle, the world’s biggest food company, a London judge found that the color purple is distinctive for Cadbury Dairy Milk bars and deserves to be registered as a trademark. The dispute between the chocolate giants dates...

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2nd Circuit – A Different Color on High Fashion Trademarks

Posted by on Sep 12, 2012 in The Womp Womp Word | 0 comments

2nd Circuit – A Different Color on High Fashion Trademarks

The highly anticipated ruling involving high-fashion shoe designer Christian Louboutin came yesterday from the Second Circuit. Reversing in part, the appeals court ruled that a single color could in fact serve as a trademark in the fashion industry- Louboutin’s contrasting red sole among them. This ruling is consistent with the Supreme Court’s decision in Qualitex v. Jacobson, eradicating the district court’s theory that when it came to clothing, color is functional and inappropriate for trademarks. However, the case was not an outright...

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Apple’s Big Win

Posted by on Aug 28, 2012 in The Womp Womp Word | 0 comments

Apple’s Big Win

On August 24, nine jurors awarded Apple Inc. more than $1 billion in damages against Samsung Electronics Co. in connection with the complex and high-stakes patent dispute. The jury found that Samsung infringed six of Apple’s patents at issue, including three covering the shape of the iPhone and on-screen icons. Moreover, the jury determined that all seven of Apple’s patents were valid and that Apple did not violate any of the patents asserted by Samsung. The only patent the jury found Samsung didn’t infringe relates to design of...

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Why “The Butt Face” should be enjoined from being a butthead

Posted by on Aug 22, 2012 in The Womp Womp Word | 0 comments

Why “The Butt Face” should be enjoined from being a butthead

  Great article on trademark protection and the fine line of parody…. I put forth the proposition that, as much as trademarks, copyright, and other intellectual property, reputation is what makes a brand—so companies and their counsel should think twice before recklessly suing over perceived trademark infringement and risking blowback that can have long-term reputational consequences. There is a “delicate balance” (as one observer put it) between enforcing intellectual property rights and being so aggressive...

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TTAB Reverses Refusal to Register Hershey Chocolate Bar Design

Posted by on Jul 10, 2012 in The Womp Womp Word | 0 comments

It was a sweet victory for Hershey when the Board reversed a finding that Hershey’s chocolate bar design, defined by Hershey as “twelve (12) equally-sized recessed panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle,” was merely functional. In re Hershey Chocolate, Serial No. 77/809,223 (June 28, 2012). After considering all of the elements of the design, the Board determined that although certain aspects of the product configuration are functional, the design as...

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Changes In Requirements For Declarations Of Continued Use And Pilot Program: “Hey fraudsters, we’re watching you!”

Posted by on Jun 18, 2012 in The Womp Womp Word | 0 comments

Changes In Requirements For Declarations Of Continued Use And Pilot Program: “Hey fraudsters, we’re watching you!”

To combat persistent concerns of fraud, the United States Patent and Trademark Office (“USPTO”) announced the launch of a pilot study to analyze possible fraud or other errors in the register.  In connection with the pilot study, the USPTO  amended the Trademark Rules of Practice (37 CFR part 2) §§ 2.34(a)(1)(iv), 2.56(a), 2.76(b)(2), 2.86(a)(3), 2.86(b), and 2.88(b)(2). The new rule allows the USPTO to  request additional specimens of use, including information, exhibits, and affidavits or declarations, that are deemed reasonably...

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