‘Trump TV’ was refused as a trademark in The UK

pexels-photo-134469.jpegThe English High Court has dismissed an appeal from Trump International company (owned by German national Michael Gleissner) against the UKIPO decision to refuse registration as a trademark for ‘Trump TV’ in classes 38 and 41.

The US company DDTM Operations, which manages Donald Trump’s IP portfolio, filed an opposition against this mark based on alleged bad faith application. According to DDTM Operations, this trademark tries to take advantages from the reputation of the US President.

The UKIPO agreed with this claim and refused the application taking into account the Gleissner’s previous attempt to register similar signs.

The Court upheld this decision concluding that the applicant failed to give any reasonable arguments to support an eventual bona fide nature of its application.

Source: WIPR.

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GRAND CANYON was refused as a trademark in Japan

horseshoe-bend-page-arizona-colorado-river-86703.jpegThe Japanese Patent Office refused to register as a trademark the phrase  GRAND CANYON  for class 25 – clothes, shoes etc.

The reason behind this decision was the fact that according to the law in Japan and many other countries, signs that indicate a geographical origin in regard with the relevant goods and services are not allowed for registration as trademarks.

In the case at hand, GRAND CANYON  is a well-known US national park, recognized by UNESCO as a World Heritage Site.

What’s more, GRAND CANYON is famous with all sorts of merchandising products known and purchased by consumers around the world, including those in Japan.

From that perspective, it is highly likely consumers to perceive it in connection with the US national park than as a trademark sign.

Source: Masaki MIKAMI, Marks IP Law Firm.

Laura Peter is the new USPTO Director

uspto

The USPTO announced its new Director, Ms Laura Peter, who has a serious background in the field of intellectual property working for different companies the last of which is the Silicon Valley tech company A10 Networks where she was General Advisor. Ms Peter will take the helm of one of the busiest Patent Offices in the world with more than 13 000 employees.

For more information here.

IBM and Groupon reached a multi-million dollar deal

hammer-802298_960_720The online platform Groupon and IBM have reached a patent deal. The case concerns a lawsuit initiated by IBM against Groupon for infringing the US patents 5,796,967; 5,961,601; 7,072,849; и7,631,346 related to online advertising and ways of allowing web users to connect to an internet provider.

After long negotiations and an ask by IBM for doubling the damages to 165 million dollars, both companies have reached an agreement to cease the lawsuit for which Groupon will pay 57 million dollars.

This case is just another good example of the role and potential that intellectual property has for generating additional revenue for its owners.

In the case at hand IBM will monetarize its patents giving longstanding licenses to Groupon against which the company will allow its employees to use some of the services offered by Groupon with cross-licenses.

Although intellectual property disputes can be quite tough sometimes, if they are used and managed skillfully they can lead to a win-win situation for both parties at the end of the day.

Source: WIPR.

Instagram in a strategic trademark attack

instagram-3198093_960_720The US Kirusa initiated a lawsuit in the US against Instagram which aim is to find non-infringement and non-dilution of the Instagram trademark.

The case at hand concerns a registered trademark for Instavoice by Kirusa which was attacked with cancellation by Instagram based on its earlier well-known trademarks.

According to Kirusa, there are no similarities between the signs because the prefix Insta has weak distinctive character, it means something instant, fast.

The company claimed that its registration for Instavoice mark has been done in good faith at least because the company is not a direct competitor to Instagram and do not threaten its business model.

What’s more, Kirusa asked the Court to order Facebook, as an Instagram’s mother company, to stop blocking Kirusa’s profiles and applications in the social network.

This case is part of a more broader approach by Instagram to prevent using the Insta and Gram prefixes and suffixes as trademarks. In light of that, the company has been attacked more than 200 such trademarks trying to accomplish this strategy.

Source: WIPR.

 

Copyright problems for Vodafone in the US

protected-267353_960_720.jpgVodafone failed to register its well-known trademark logo as a copyrighted work in the US Copyright Office.

The company was ascertaining that its logo is subject to copyright protection because it represents either a quotation mark or a balloon droplet in combination with geometrical shapes and colours.

The Office, however, disagreed, stating that widespread symbols and geometrical shapes cannot be registered as a copyrighted work due to a lack of originality.

According to the  Section 313.4(J) of the Compendium:

Familiar symbols and designs are not copyrightable and cannot be registered with the U.S. Copyright Office, either in two-dimensional or three-dimensional form. 37 C.F.R. § 202.1(a). Likewise, the Office cannot register a work consisting of a simple combination of a few familiar symbols or designs with minor linear or spatial variations, either in two-dimensional or three-dimensional form. Examples of familiar symbols and designs include, without limitation:
• Punctuation.
• Symbols typically found on a keyboard, such as asterisks, ampersands, and
the like.

While familiar symbols and designs cannot be registered by themselves, a work of authorship that incorporates one or more of these elements into a larger design may be registered if the work as a whole contains a sufficient amount of creative expression.

However, the mere fact that the symbol is combined with colours is not enough to create the necessary distinctiveness.

Source: Nedim Malovic, IPKat.

UEFA failed to register its well-known logo as a copyrighted work in the US

pexels-photo-1093645The European Football Association UEFA failed in its attempt to register the following well-known logo as a copyrighted work in US Copyright Office:

Starball

Although this registration is not mandatory it is helpful in particular of copyright infringements and lawsuits.

The reason for this refusal was a lack of originality which is one of the main requirements for such registration. Despite the low level of originality which is necessary to protect a copyright work in the case at hand the Office considered that this is not accomplished because the mere combination of stars in a circle is insufficient in that regard.

UEFA tried its best to claim that this logo was original at least because it creates a three-dimensional illusion in the consumer mind, but all to no avail. The Office dismissed this leaning on Section 310 (3) of US Copyright Office Practice, according to which the Office would only need to consider the objective appearance of the work and not the “symbolic meaning or impression” that a work may evoke.

Source: IP KAT.