MLS and David Beckham attacked Inter Milan in The US

football-1406106_960_720.jpgThe US Major League Soccer (MLS) filed an opposition against a US trademark application for INTER owned by the Italian football club Inter Milan for classes 9, 18, 21, 24, 25, 28, 41.

The main ground for this opposition was lack of distinctiveness and descriptiveness of the word INTER in relation to the football goods and services.

MLS started this proceeding because of its plans for the new Inter Miami football club, which will start playing in the league in 2020. The president and one of the shareholders in this club is David Beckham.

According to the trademark law in The US and around the world, the trademark owner has the right to use the mark, dispose of it and to prohibit third parties of using it.

In light of this, MLS considers the word INTER as not distinctive for the reason of which it has not to be monopolized by any sport club bearing in mind how many clubs use it such as Inter Turku, Inter Leipzig, Inter Baku, Inter de Grand-Goave, NK Inter Zapresic, Inter Moengotapoe, Inter de Luanda. Inter Club d’Escaldes, Inter Atlanta FC.

It is highly likely that this opposition will be successful but for goods and services which regard football as a sport. For those of the goods and services, however, where INTER has inherited distinctiveness, the trademark can be registered which at least will give some merchandising advantages to Inter Milan.

Most likely there will be negotiations between the clubs.

Source: SI.com.

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USPTO’s position on Alice/Mayo implementation

flag-1291945_960_720The USPTO published its new guidelines on the eligibility of subject matter in patent applications.

With these guidelines, the USPTO gives some important clarifications on the implementation of the first step of the US Supreme Court’s Alice/Mayo test. There are two main changed in that regard:

  • First, in accordance with judicial precedent and in an effort to improve certainty and reliability, the revised guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes certain groupings of subject matter: mathematical concepts, certain methods of organizing human activity, and mental processes.
     
  • Second, the revised guidance includes a two-prong inquiry for whether a claim is “directed to” a judicial exception. In the first prong, examiners will evaluate whether the claim recites a judicial exception and if so, proceed to the second prong. In the second prong, examiners evaluate whether the claim recites additional elements that integrate the identified judicial exception into a practical application. If a claim both recites a judicial exception and fails to integrate that exception into a practical application, then the claim is “directed to” a judicial exception. In such a case, further analysis pursuant to the second step of the Alice/Mayo test is required.

For more information here.

Laura Peter is the new USPTO Director

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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.

Google is not a generic term in the US

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ARS Technica UK reports an interesting story from the US where the Supreme Court refused to review a petition which asserts that the term “google” is too generic and therefore cannot be a trademark anymore.

According to that petition, the word Google has been widely used as a term for searching on internet. Due to that fact, this trademark is no more eligible to serve as a trade source.

The Federal court ruled in that case last year considering that although Google is used as e term describing the process of searching on internet, it is still a valid trademark because Google offers other products too and the word is connected with different goods and services. What’s more, we have a generic term when the name has become an “exclusive descriptor” that makes it difficult for competitors to compete unless they use that name, which is not the case with Google.

More information here.

Booking.com is eligible for trademark protection in US

The U.S. District Court for the Eastern District of Virginia has ruled that the following US trademark applied for Class 43 – hotel reservations is eligible for registration as a trademark for that class:

booking dot com logo 2

Initially, the USPTO refused to register this sign because of its descriptiveness and low distinctive character for the services from Classes 39 and 43.

According to the Court, however, the applicant was given enough pieces of evidence which show that the sign had acquired a secondary distinctiveness for the services from Class 43.

Because of that, the Court ordered the USPTO to register that mark for that class and to analyze whether it is suitable for registration in class 39  taking into account the color and font combination.

As it is well-known even low distinctive signs can receive trademark protection but only if they show acquired secondary meaning through intensive and prolong market use which to suggest that consumers perceive them as a trade source.

Source: The TTABlog.

‘First Tuesday’ can’t be a trademark in the US

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The US Court of Appeals for the Federal Circuit has ruled in a lawsuit concerning a refusal by the USPTO to register as a trademark the following expression – ‘First Tuesday’ for “lottery cards; scratch cards for playing lottery games” and for “lottery services”.

The reason behind this refusal was that according to the Office this mark was descriptive for the respected goods and services – the mark tells consumers when the lottery game will take place – every first Tuesday of the month.

The Applicant argued that this conclusion was incorrect because the mark requires some imagination in order to be connected with its goods and services.

The Patent Office and the Court disagreed, accepting that this phrase is completely descriptive due to the fact that consumers will understand it as a direct message for the time when such lottery games take place.

Source: WIPR. 

Will.i.am lost a lawsuit regarding a trademark in US

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The US Court of Appeals for the Federal Circuit dismissed the appeal by the well-known singer Will.i.am against a USPTO decision for refusal of a trademark “I AM” applied for Classes 3, 9 and 14.

The background of this case is that the Will.i.am’s company Symbolic is the owner of “Will.i.am” trademarks for classes 9 and 41 as well as trademarks “I am” for class 25.

In the case at hand, Symbolic tried to register a word trademark “I AM”for classes 3, 9 and 14.

The USPTO refused the application on the ground of earlier identical marks for similar goods in classes 3, 9 and 14.

Due to this refusal, Symbolic made some specifications in the trademark application stating that all included goods “associated with William Adams, professionally known as ‘will.i.am’”.

The USPTO considered this as insufficient because there was no evidence which to suggest that the singer is well-known under the name “I am” with regard to the relevant goods.

The court upheld this decision as correct not finding stable evidence that William Adams is known as “I am” among the consumers. What’s more, the court considers such specification as insufficient, which cannot overcome the possibility for confusion between the respected trademarks.