trademark Archives

Jun 18, 2020

What Happens to a Trademark License If a Licensor Files for Bankruptcy?

Retail stores and outlets feature trademark branded merchandise produced under license agreements. Millions of dollars in manufacturing costs, marketing expenses and distribution chain development are incurred in getting the branded goods from initial concept to the shelf for retail sale. The current and anticipated wave of fashion industry bankruptcies raises questions about the risk of loss by the licensee on that investment if the brand-owner/licensor files for bankruptcy. What happens when a trademark licensor files for bankruptcy? Does the licensor’s various license agreements continue as if nothing happened? Are the license agreements automatically terminated as part of the bankruptcy process?… Read more

Feb 22, 2018

Western Brand Owners Hit by Russian Constitutional Court Ruling in Parallel Import Case

On February 13, 2018, the Constitutional Court of the Russian Federation issued a decision in favor of a Russian parallel importer, holding that the destruction of original medical devices imported without the trademark owner’s consent was an excessive remedy under the facts of the case, and authorizing the lower courts to consider the bad faith of a trademark holder in refusing to supply branded products in Russia at a reasonable price when considering the availability and scope of relief in a parallel import case. The parallel importer, in this case, PAG LLC, had a government contract to supply heat-sensitive paper… Read more

Jan 25, 2018

U.S. District Court Orders USPTO to Register BOOKING.COM as a Protected Trademark

Person using laptop to visit Booking.com

In 2012, Booking.com B.V. (“Booking.com”) filed four trademark applications for the mark Booking.com for services in class 39 – travel agency services – and class 43 – making hotel reservations. The USPTO initially rejected all four applications on the ground that BOOKING.COM is generic as applied to the relevant services and, in the alternative, that the mark is merely descriptive and that Plaintiff had failed to establish acquired distinctiveness. The Trademark Trial and Appeal Board (TTAB) then affirmed the four refusals of registration for the same reasons. Booking.com filed this civil action challenging the denial by TTAB. In determining whether… Read more

Jan 4, 2018

TTAB Decision is Found to Have Preclusive Effect in the Southern District of New York

The United States District Court for the Southern District of New York held that Defendant Peju Province Winery L.P. (“Peju”) is precluded from litigating the likelihood of confusion issue that was decided by the Trademark Trial and Appeal Board (TTAB) in 2004. Plaintiff Cesari S.R.L. (“Cesari”) is an Italian winery that produces wine with the mark LIANO, which was registered on January 7, 2003, which an alleged first use of January 26, 1989. On February 10, 2003, Peju filed an intent-to-use application to register LIANA for wine. Cesari opposed the registration of Peju’s mark based on a likelihood of confusion…. Read more

Oct 9, 2017

Franchises & Brand Development

The most important, if not essential, element of the ultimate success of a business is the development of a brand. A brand is a promise and assurance to a customer that establishes the customer’s expectation of a company’s goods and services. To truly develop a brand, a business must consistently deliver on these promises and assurances. Every business event positively or negatively affects consumers’ perception of the brand. It’s a never-ending process, a continuum. A brand should be distinctive and unique from other companies’ goods and services, as well as emblematic of a company’s self-identity, self-vision, and market perception. A… Read more

Sep 14, 2017

Industry Training with USPTO Highlights Trademark Challenges for Fashion

SGR Partner Scott Woldow is a member of INTA’s Government Officials Training Committee’s USPTO Subcommittee. Each year, INTA’s GOT Committee collaborates with the U.S. Intellectual Property Office (USPTO) on an Industry Training presentation for the USPTO’s examining attorneys and staff. The industry trainings provide a forum whereby an industry sector and an IP office come together to share information on the latest trends within the industry that may affect the examination of trademark applications. The trainings allow examiners to hear about common trademark challenges facing in-house counsel and the outside bar. The trainings establish a direct line of communication between the examiners and… Read more

Apr 23, 2015

USPTO Patent Quality Assurance Practices – Quality Not Quantity

In a report issued on April 10, 2015, the United States Department of Congress, Office of Inspector General, provided its final report on the U.S. Patent and Trademark Office’s (USPTO’s) patent quality assurance practices. The audit was conducted to (1) determine the sufficiency of the USPTO’s quality assurance program’s processes to prevent the issuance of low-quality patents and (2) assess the additional quality reviews performed to measure examiner performance and ensure that examiners are fully qualified to issue patent determinations without supervisory review. It identified four areas of concern: 1. USPTO’s performance appraisal plan and related policies are ineffective at… Read more