Another update on my long-running series of posts following the NHL’s newest hockey team, the Las Vegas Golden Knights, and their embattled trademark applications for VEGAS GOLDEN KNIGHTS that were filed nearly two years ago.
My first post on this blog, nearly two years ago, was about a trademark dispute between the State of Michigan, and a Michigan company, M22, LLC. M22 sells a variety of merchandise bearing an “M22” mark that appears similar to the route marker signs on Michigan Highway M-22, see photos below.
M22 was granted several…
Most recently, I posted about the USPTO’s decision to maintain a refusal to register the team’s marks in connection with clothing, LAS VEGAS GOLDEN KNIGHTS and VEGAS GOLDEN KNIGHTS (Applicant Nos. 87147236, 87147265),…
The energy drink businesses is big, big business. From Red Bull and Monster to that strange 35 ounce purple can that you saw in a gas station once, consumers love energy drinks. Along with Red Bull and Monster, 5-Hour Energy is one of the most successful and recognizable brands. Innovation Ventures, LLC, the owner of…
– John Reinan, Senior Director at Fast Horse, a Minneapolis marketing agency
I love “orphan” cars — the marques that have gone out of business. Most of them are barely remembered by Baby Boomers, much less anyone younger. Packard, Hudson, Nash, Studebaker, Willys – these and other automakers often were stylistically and technically more…
—Karen Brennan, attorney
I found Fig. 1 (from what I am sure was a very valuable patent, although I could not locate it) to be very fitting for this post. After three and half years, four Office Actions, a Petition to the Director and finally an appeal, our client’s product configuration mark for the PPK…
–Sharon Armstrong, Attorney
If there is any trademark case this year that has the media clamoring to create cute headlines, it may just be this one – In re Chippendales USA, Inc., decided by the Federal Circuit just six days ago. “Federal Circuit Leaves Chippendales Nearly Naked,” said The American Lawyer,…
As I prepare to provide attendees at the Midwest IP Institute tomorrow with a trademark fraud update — today, I thought I’d provide a preview — and even go out on a small limb — making a couple of predictions of my own, relating to the far more scintillating topic of trademark fraud before the United States Patent and Trademark Office (USPTO).
As you may recall last year, I wrote about the Court of Appeals for the Federal Circuit’s (CAFC) groundbreaking decision In re Bose, here, here, here, and here, in which the CAFC rejected the Trademark Trial and Appeal Board’s (TTAB) less stringent "knew or should have known" negligence standard of fraud, instead coming down in favor of a much more stringent — and difficult to prove standard — subjective intent to deceive the USPTO.
Over the last year, much attention has been given to the fact that the CAFC left open and chose not to decide, in In re Bose, the question of whether a "reckless disregard for the truth" may suffice in proving the necessary subjective intent to deceive. Many argue that "reckless disregard" should suffice in proving fraud for the sake of the integrity of the U.S. trademark system, to ensure that trademark owners and their counsel are kept honest and/or don’t become lazy or complacent about the solemnity of the oath in their trademark filings.
Reading the tea leaves, I’m predicting that the TTAB will not wait for the CAFC to decide the issue and the TTAB will rule that "reckless disregard" constitutes a sufficient level of culpability to infer a specific intent to deceive. If so, what does that mean? What kind of trademark conduct might satisfy a "reckless disregard" standard?
Now that kids are back to school and summer is coming to a close, this billboard advertisement has disappeared from I-94 just outside of downtown Minneapolis. Before it vanished from the roadside, however, I thought to capture it to tell a little trademark tale here, one from years past, but one that remains relevant, important, and applicable to trademark claims involving the color…
–Dan Kelly, Attorney
Quiz time. Here’s the setup:
Company A owns the following registered trademarks for use in connection with the listed goods:
- MAXSTAR for “electric lanterns”
- MAGNUM MAX for “hand-held electric spotlights”
- MAXFIRE for “portable, battery-operated lighting products, namely flashlights”
Company B owns these registered trademarks:
- MAG-LITE and MAGLITE for “flashlights”
- MAG for “flashlights”
- MAG-NUM STAR for “flashlight bulbs”
Assume that the above registered trademarks for both companies have coexisted on the trademark register and in the marketplace for a substantial period of time–fifteen years or more.
Now, here are the questions:
- Can Company A register MAGNUM MAXFIRE for use on “hand-held portable lamps, namely flashlights and spotlights” in view of Company B’s registered trademarks?
- Can Company B register MAG STAR for use on “flashlights” and related goods in view of Company A’s registered trademarks?
Answers after the jump…