• IP BLAWG

    You Can’t Go Back

    Beverly A. Berneman
    12/7/21

    In Brief:  If you intend to get your trademarks back after a transfer, be sure that’s what your documents say.

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  • IP BLAWG

    Pizza Wars Part II: New York Style

    Beverly A. Berneman
    10/19/21

    In Brief: Trademarks that co-exist for a long time don’t always create a likelihood of confusion.

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  • IP BLAWG

    Pizza Wars Part I: Chicago Style

    Beverly A. Berneman
    10/12/21

    In Brief:  Use of a licensed trademark is limited by the scope of the license.

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  • IP BLAWG

    Naming Rights in the Gig Economy

    Beverly A. Berneman
    10/5/21

    In Brief:  Using someone else’s descriptive trademark can be fair use.

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  • IP BLAWG

    Copyrighting a Trademark

    Beverly A. Berneman
    9/28/21

    In Brief:  A trademark has to meet minimum standards of creativity for a copyright registration.

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  • IP BLAWG

    My Own Private Emoji

    Beverly A. Berneman
    9/22/21

    In Brief:   An emoji trademark wasn’t used in commerce.

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  • IP BLAWG

    Goodwill Clucking

    Beverly A. Berneman
    3/23/21

    For the Mother Cluckers trademark saga, we need a little background about goodwill. A trademark establishes a connection between the owner’s goods and services and the consumer. That connection is the goodwill in the trademark. In order to be effective, a trademark assignment requires the assignment of the goodwill attached to it. 

    Assigning goodwill along with the assignment of a trademark isn’t form over substance.

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  • IP BLAWG

    Bubble, Bubble, Toil and Seltzer

    Beverly A. Berneman
    3/9/21

    Molson Coors Beverage Company sells a hard seltzer called Vizzy. Future Proof Brands, LLC sells a hard seltzer called Brizzy. Future Proof sued Coors for trademark infringement alleging that Vizzy is likely to cause confusion with Brizzy.  

    Even when two product names sound similar, a likelihood of confusion isn’t automatic.

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  • IP BLAWG

    Sometimes, It’s What You Don’t Say

    Beverly A. Berneman
    3/2/21

    The US Supreme Court won’t be weighing in on some interesting cases in the world of IP. Here are just a few of them by topic:
    Copy

    • rights in Fictional Characters
    • Right to Challenge Patents
    • Trademarks
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  • IP BLAWG

    Fruit Bowl Battle

    Beverly A. Berneman
    2/16/21

    Most people are familiar with Apple Inc. and its apple logo. Apple Inc. and its products are ubiquitous and pervasive. At any time, a person can be wearing one of their watches, talking on one of their phones and watching a video on one of their tablets.

    PrePear is a new app that allows the user to save and organize recipes, create meal plans, shop efficiently for food and prepare healthy foods. PrePear adopted a pear logo, which makes sense considering the pun in the name. When PrePear sought to register its pear logo as a trademark, USPTO’s Examining Attorney didn’t see a likelihood of confusion between the pear logo and any other logo. The Examining Attorney cleared the application for publication.

    Then, Apple filed an opposition.

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  • IP BLAWG

    My Blue Ivy is Not the Same as Your Blue Ivy

    Beverly A. Berneman
    12/1/20

    In 2012, Veronica Morales registered the trademark, BLUE IVY, for her event planning company. Four years later, Beyoncé Knowles-Carter’s company, BGK Trademark Holdings, LLC filed a trademark application to protect, BLUE IVY CARTER, (named after Beyoncé’s daughter) for entertainment services.

    That’s when the fight began.

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  • IP BLAWG

    When a Friendly Beer Turns Unfriendly

    Beverly A. Berneman
    10/13/20

    Brooklyn Brewery (“Brewery”) has been around for more than 30 years. Brewery sells craft beers all over the country. Brooklyn Brew Shop (“Brew Shop”) was founded in 2009 and sells beer brewing kits.

    In 2010, Brewery started receiving calls from customers trying to reach Brew Shop. So Brewery emailed Brew Shop about it and suggested that Brew Shop “keep an eye on it”.

    Apparently, neither side was too worried about customer confusion at that time. Brewery and Brew Shop started collaborating on projects related to beer making, including co-branded beer-making kits, promotional events, books on beer making and educational beer making programs.

    It was a match made in beer heaven. Until May 2015.

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  • IP BLAWG

    Get Me the One with the Pretty Colors

    Beverly A. Berneman
    9/15/20

    This blog recently discussed the inability to protect movement during a sightseeing tour as trade dress (“Emotionally Yours”, 6/2/2020). Other types of trade dress can also have problems.

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  • IP BLAWG

    Hast Thou Forsaken Me Chiclets?

    Beverly A. Berneman
    8/26/20

    Mondelez International Inc. owns a lot of trademarks. One of them is “Chiclets” for gum. Mondelez almost lost it.

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  • IP BLAWG

    Bad Spaniel Has First Amendment Rights

    Beverly A. Berneman
    6/30/20

    VIP Products LLP sells a series of dog toys called “Silly Squeakers”. The toys are often fashioned to look like well-known beverage containers. One of the toys is called “Bad Spaniels”. It looks like a Jack Daniel’s whiskey bottle but with alterations. Of course, the name was changed from Jack Daniel’s to Bad Spaniels. But it didn’t stop there. Instead of “Old No. 7”, it said “Old No. 2 on your Tennessee Carpet” (which should resonate with dog owners). The alcohol description read 42% POO BY VOL” and “100% SMELLY” (again something instantly recognized by dog owners).

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  • IP BLAWG

    Your Joint or Mine?

    Beverly A. Berneman
    6/9/20

    The Hard Rock Café’s operating company, JC Hospitality LLC, tried to register the trademark “The Joint” for its casino based music venues. The USPTO refused registration. On appeal, the TTAB affirmed. Hard Rock then appealed to the Federal Circuit Court of Appeals who also affirmed the refusal.

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  • IP BLAWG

    Reply All

    Beverly A. Berneman
    4/28/20

    If the words “reply all” sound familiar to you, then you probably use email to communicate with others for various and sundry reasons. Despite their widespread use, these two words became the subject of trademark litigation.

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  • IP BLAWG

    Dropping in Bankruptcy

    Beverly A. Berneman
    4/21/20

    Thru Inc. sued Dropbox for trademark infringement claiming to own the “DropBox” trademark. After a lot of litigation and some really good discovery, Dropbox was able to show that Thru may have had some bare rights to the “DropBox” mark but it never actually used the mark. Thru then sat back and watched as DropBox branded itself and became a household name for shareable file storage. Then Thru continued to drag its heels in litigation to cash in on DropBox’s initial public offering in 2018. DropBox discovered emails from Thru’s CEO which unabashedly chronicled Thru’s strategy. In the end, DropBox obtained a $2.3 million judgment that included attorney’s fees and costs.

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  • IP BLAWG

    Punsters Delight

    Beverly A. Berneman
    10/15/19

    In two recent cases, trademark holders learned that it was a huge Missed-Steak to sue when puns were involved.

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  • IP BLAWG

    THE

    Beverly A. Berneman
    10/1/19

    That’s not a typo. The subject of today’s blog is THE. THE Ohio State University filed an application to register THE for wearing apparel. According to news sources, Ohio State demands to be called “THE Ohio State University”. Ohio State argues that THE is part of its name. Sports and journalists have often commented on Ohio State’s branding insistence calling it stupid, ridiculous, pompous and arrogant. Ohio State responds to these negative comments saying that it has every right to protect its brand.

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  • IP BLAWG

    Dental Supplier Gets a Judicial Root Canal

    Beverly A. Berneman
    8/13/19

    If you needed a crown or root canal lately, your dentist may have used a fancy wand to scan and send a picture of your mouth to the dental lab. Chances are that the scanner was the Itero Element scanner, a computer scanning system that is manufactured by Align Technologies. The Itero scanner requires a disposable sleeve for the wand. One of Align’s competitors, Strauss Diamond Technologies, began selling a competing sleeve, called “MagicSleeve”. In its advertisements, Strauss used Align’s trademarks in hashtags, product descriptions and product images.

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  • IP BLAWG

    Fraudulent Trademark Ripped Up By Terror Dog

    Beverly A. Berneman
    7/30/19

    When an applicant fills out a trademark application, the applicant has to state under oath that it is the bona fide owner of the trademark. If that isn’t true, the applicant has committed a fraud in the application process.

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  • IP BLAWG

    Where’s the Cart?

    Beverly A. Berneman
    5/21/19

    Siny Corp tried to register its trademark “Casalana” for a knit textile used in the manufacture of outerwear, gloves and the like. As its specimen of use in commerce, Siny submitted pages from its website. But the United States Patent and Trademark Office refused the specimen because it was mere advertising and not evidence of use in commerce. Siny appealed the decision all the way up to the Federal Court of Appeals and lost. Where did Siny go wrong?

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  • IP BLAWG

    The Schrödinger’s Cat of Trademarks

    Beverly A. Berneman
    5/14/19

    Stella McCartney, the fashion designer daughter of former Beatle, Paul McCartney and his late wife, Linda, tried to register the trademark “Fur Free Fur”. The United States Patent and Trademark Office (USPTO) rejected it as being merely descriptive of Stella’s use of fake fur in her fashion designs. The Trademark Trial and Appeal Board (TTAB) disagreed and overturned the decision.

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  • IP BLAWG

    Looks Fair to Me

    Beverly A. Berneman
    4/16/19

    Using someone’s trademarks when criticizing their products or services can be tricky. But if you do it the right way, it could be considered nominative fair use.

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