1. Never Too Rich or Too Thin: The Strong Trademark Standard

    Posted on 27.11.18 Shin Hee Lee, on Articles, Recent News & Articles, Trademarks

    “You can never be too rich or too thin” has been attributed to Wallace Simpson, the colorful Duchess of Windsor who charmed King George to abdicate the throne of England in 1936.[1] However, when it comes to trademarks, a mark that is lacking a bit of heft is not likely to stand.

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  2. Don’t Say It Like That: Beyonce’s Punny Trademark Battle

    Posted on 20.11.18 Frederick Spaeth, on News and Events, Trademarks

    In her album Destiny’s Child, Beyoncé sang “Say My Name,” but she might be hearing “No, No, No” from a company that markets merchandise to the newly betrothed, which styled itself “Feyonce Inc.” In a suit filed in the Federal district court for the Southern District of New York, Beyoncé asserted trademark infringement and dilution, unfair competition, and unjust enrichment, and sought partial summary judgment and entry of a permanent injunction against continued use of the name.

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  3. Royal Trademark Battles over Beverages

    Posted on 18.09.18 Frederick Spaeth, on Articles, Recent News & Articles, Trademarks

    The story is about diet drinks named “zero”: SPRITE ZERO, the various flavors of COCA-COLA ZERO, FANTA ZERO, POWERADE ZERO, and VAULT ZERO. What these particular names share in common is that they are all products of The Coca-Cola Company (TCCC). Moreover, TCCC applied to register these ZERO-inclusive names, and others, in the U.S. Patent and Trademark Office (USPTO) as trademarks, so that they could claim the right to exclusive use of these names and similar names for such products.

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  4. Local Company Brings National Distributor to Court On Trademark Infringement Claim

    Posted on 11.04.18 Frederick Spaeth, on Articles, Trademarks

    The U.S. District Court of Connecticut has ruled that a small Connecticut manufacturing company can sue an Indiana- based national manufacturer and wholesaler for trademark infringement in Connecticut, based on the defendant’s modest sales to distributors in Connecticut.  This illustrates how Connecticut courts provide an important forum for Connecticut business to protect their brands against out-of-state competitors that sell into Connecticut.

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  5. High Court’s SLANT Play Hands REDSKINS and Other Offensive Marks a Victory

    Posted on 26.06.17 Frederick Spaeth, on Articles, News and Events, Trademarks

    Washington Redskins fans have been doing touchdown dances for Tam, because while Tam was pursuing his cause, the Redskins team was trying to move the ball forward on their own appeal from the cancellation of a number of the teams REDSKINS registrations based on the same disparagement clause, on the basis that the mark is disparaging toward Native Americans.

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  6. Upcoming Free Webinar: Mark Thy Words: Advanced Trademark and Branding Strategies for Corporate Counsel

    Posted on 05.04.17 Thomas Pia, on Announcements, Trademarks, Webinar

    Frederick Spaeth of Dilworth IP will present a free webinar on Wednesday, May 3rd at 1:00 PM EDT. This installment in the Dilworth IP Webinar Series is entitled, “Mark Thy Words: Advanced Trademark and Branding Strategies for Corporate Counsel” and will focus on providing in-house counsel with sophisticated strategies for their company’s brand protection. Global companies face a long list of challenges when it comes to protecting their brands from confusion and counterfeiting in an environment where globalization and international trade still dominate. Trademark protection, including valuable non-traditional marks such as product design and packaging, is more important than ever. Employing a sophisticated US trademark strategy to protect your brand is a crucial component of any global enterprise’s overall business strategy. This webinar will give the corporate trademark counsel insight into some of the dynamic issues they face today and explore some of the avenues that may be pursued such as seeking monetary and injunctive relief in the US when protecting brands overseas. A brief overview of recent key US case law will also be discussed.

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  7. Frederick Spaeth Presents Talk at IP Law for the Non-IP Lawyer

    Posted on 05.04.17 Thomas Pia, on Announcements, News and Events, Trademarks

    Frederick Spaeth, Partner at Dilworth IP will be presenting a talk at the IP Law for the Non-IP Lawyer conference hosted by the Westchester/Southern Connecticut Chapter of the Association of Corporate Counsel (ACC) on Wednesday, April 5th at Withers Bergman in Greenwich, CT. The event will provide in-house counsel attorneys with a basic outline of intellectual property law to help them better understand their company’s IP needs. Fred’s talk will be on Trademarks and Copyrights, and will focus on emerging issues, brand defense and Fair Use.

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  8. New USPTO Policy To Clear Dead Wood from the U.S. Trademark Register

    Posted on 14.02.17 Frederick Spaeth, on Articles, News and Events, Trademarks

    The USPTO has expanded its practice of testing the veracity of post-registration Declarations of Use under a program intended to improve accuracy and integrity of the trademark register, under a new rule which goes into effect Feb. 17, 2017. The rule formalizes a small-scale trial program in effect since 2012.

    Under the new rule, the USPTO may respond to the filing of a Declaration of Use by requiring additional proof of use of the mark in connection with the goods/services identified in the registration. The additional proof may be provided in the form of information, exhibits, affidavits or declarations, and specimens of use. A registrant who cannot produce the additional proof of use for particular goods/services, or an acceptable claim of excusable nonuse, will be advised to cancel those goods/services from the registration as well as any others no longer being offered under the mark.

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  9. Brew-HaHa Over Craft Beer Trademarks

    Posted on 28.04.15 Cambria Alpha-Cobb, on Articles, Trademarks

    As of June 2014, the American brewing industry hit a big milestone with more than 3,000 operating US breweries. This recent expansion not only signifies an increase in locally brewed delicacies, but it also means that brewers will find it increasingly difficult to differentiate their brew from that of their fellow brewmasters. In order to stand out in this sea of bottles, brewers often use clever names for their brews. However, be it a “hopcentric” pun or a “barley-legal” nickname, it is increasingly difficult to find a clever name for a new brew while avoiding a legal trademark battle.

    Hartford’s own City Steam Brewery recently settled a trademark battle over the branding on its bottled beer. Anchor Brewing Co., based in California, filed suit against City Steam, in a case that ultimately led to a seemingly minute settlement agreement. City Steam will now market its beer under the one-word “CitySteam” name instead of the original “City Steam.” Another local, New England Brewing Company recently received a petition from an attorney in India over their highly popular brew, “Gandhi Bot”, claiming that this vegetarian, aromatic India Pale Ale, is “nothing but an insult to the Indian constitution!”

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