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We have written previously about Scholz v. Goudreau, No. 13-CV-10951 (D. Mass.); the case recently went to trial on the parties’ surviving claims, and they are now immersed in post-trial briefing.

Tom Scholz and Barry Goudreau were once bandmates in BOSTON, and since Goudreau left the group in 1981, the two have occasionally litigated the trademark ramifications of his post-BOSTON career. The present dispute mostly arose from promotions tied to other musical acts and events that Goudreau was associated with.

Digital arrow and circuit board

The U.S. Commerce Department recently released a comprehensive report, entitled “Intellectual Property and the U.S. Economy: 2016 Update” (the “Report”). The Report, which was co-authored by the Economics & Statistics Administration and the United States Patent and Trademark Office, builds upon an earlier 2012 report, finding that “IP-intensive industries continue to be a major, integral and growing part of the U.S. economy.” The Report provides a wealth of quantitative information and analysis on the value of trademarks, copyrights, and patents to the U.S. economy. Key findings include:

The public comments have been considered and the Trademark Trial and Appeal Board rule changes proposed in April 2016 and summarized in this blog post have been confirmed with only minor exceptions. The new rules will be effective on January 14, 2017, and will apply to all opposition and cancellation proceedings active on that date or subsequently filed.

Car stereo

Cue, Inc. sells high-end home audio equipment (e.g., table radios and speakers). In 2007, it applied to register the trademark CUE ACOUSTICS, and in late 2009 the USPTO allowed its application. Cue’s CUE ACOUSTICS mark was registered in August 2012, and later that year, its application for a separate mark—CUE—was allowed. Cue filed a Statement of Use for the CUE mark in November 2015.

There is a September 23, 2016 deadline for clarifying product or service specification wording within European trademark registrations in certain situations where that is necessary.

Trademark registration products and services are categorized by almost all commercially relevant national trademark registries around the world, including the U.S. and the E.U., into 45 International Classes (Classes). These Classes are used for administrative (particularly fee-charging) purposes. Also, to varying degrees depending upon the jurisdiction, Classes play a role in defining the parameters of trademark rights. For years there had been an understanding under E.U. trademark law that where an E.U. trademark registration covers so-called “Class heading” language, i.e., brief language that roughly summarizes the subject matter of a given Class, the registration is deemed to cover all of the more specific subject matter of the Class.

Professional service firms at times seem to focus on protecting the names of their service offerings or platforms at the expense of their house marks. Pat Concannon, a partner in Nutter’s Intellectual Property and Business Departments, with over 20 years of experience devoted to helping businesses establish and protect their brands, analyzes why professional service firms need to safeguard their house marks in Nutter Insights.

In the summer of 2012, Jeremy Southgate applied with the United States Patent and Trademark Office to register a design mark for “Sound Spark Studios.” A little over a year-and-a-half later, Southgate formed Sound Spark Studios, LLC, and he registered it in Delaware. He characterized the entity as a “music and entertainment company.” The Sound Spark Studios design mark was registered on September 16, 2014.

On April 4, 2016 the United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking that details proposed changes to the USPTO’s rules of practice for trademark application opposition and registration cancellation proceedings. Public comments are due by June 3, 2016. While it is possible that the rules will be modified further before being finalized based upon public comment, it is likely that the rules ultimately will take effect substantially in the form published.

The European Union’s (EU) trademark regulations are undergoing a significant overhaul as of March 23, 2016. For starters, the terminology is changing: the title “Community Trade Mark” or “CTM,” will be replaced by “European Union Trade Mark,” or “EUTM.”

There are more changes than can be fully summarized within the scope of this blog post. Here are three changes in particular that brand owners should be mindful of:

Trademark

The Trademark Trial and Appeal Board of the United States Patent and Trademark Office has recently become a more dangerous place.

The Trademark Trial and Appeal Board—usually referred to by its acronym “TTAB,” which is spoken (most often) as four separate letters (tee, tee, ay, bee) rather than the obvious and more concise vocalization of “tee-tab”—is the tribunal where you can go on appeal if you do not like the examiner’s rejection of your trademark application. It is also the tribunal that hears and adjudicates “Oppositions” filed by third party “opposers” against “applicants” seeking registration and “Petitions for Cancellation” where third party “petitioners” proceed against “respondents” registrations they feel were improvidently granted.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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