Can TACO TUESDAY be a trademark in the US?

As it is well-known Taco is one of the most popular Mexican street food around the world including in the US. Taco consists of a tortilla topped with a filling such as meat, vegetables, sauce, etc.

A US company filed a trademark application for the phrase TACO TUESDAY for class 32 – beer, claiming that the sign is inherently distinctive for this product in particular.

The USPTO disagreed pointing out different pieces of evidence that show many restaurants in the US using this phrase for indicating a daily event where tacos and drinks, including beer, are offered to consumers.

What’s more, the website of the trademark’s applicant promotes beer as the ultimate pairing for tacos too.

Based on this the Office concluded that the phrase is descriptive of beers as well, and cannot serve as a source for a particular trade origin. Because of this, the mark was reduced entirely.

How such trademarks can receive protection?

Well if the word part is combined with graphics and colors it can be registered although in such cases it will be debatable to what extent the protection can be enforced in all cases because the word part will be still descriptive

Another option is if the applicant proves acquired distinctive character, that is to say, that consumers identify only one company as the owner of the sign.

Source: The TTABlog.

Is there copyright infringement of a work used for educational purposes?

Copyright law protects original creative works, a result of intellectual efforts, giving authors control over who and how can use the works.

Although this monopoly right provides authors with a tool to permit or prohibit the use of their works it is not unlimited. There are some exceptions or the so-called fair use which allows free use of works in case of teaching, criticism, commentary, news report, etc.

The lawsuit between Bell v. Eagle Mountain Saginaw Independent School District reminds us of the practical side of these exceptions.

A US school published on its Twitter account apart from one author’s work as a motivational act for its students. The author being not happy with the lack of request for such use filed a lawsuit for copyright infringement.

The court dismissed the claim stating that the use in the case at hand is fair. There is no evidence for any commercial purposes out of this use as well as no harm to the author’s business or reputation.

Source: Deirdre Kennedy for Kluwer Copyright Blog.

Sonos won a lawsuit against Google for key patented technologies

The US audio devices producer Sonos won a patent dispute against Google in the US.

The case concerns an accusation by Sonos that Google has used without authorization patented technologies for W-Lan connectivity and synchronization of audio playback. The concerned patents are:

• 9,195,258 (“System and method for synchronizing operations among a plurality of independently clocked digital data processing devices”)
• 10,209, 953 (“Playback device with synchronisation of a plurality of devices”)
• 9,219,959 (“Multi-channel pairing in a media system”)
• 8,588,949 (“Method and apparatus for adjusting volume levels in a multi-zone system”)
• 10,439,896 (“Connection to a playback device”).

The technologies described in these patents have been used for different Google’s devices such as Pixel smartphones, voice assistant devices etc.

As it is well-known both companies worked together in 2013 when Sonos integrated some of the Google services in its devices. According to the accusation after that, however, Google used some of the information to develop its own products.

Based on this decision the US International Trade Commission can prohibit the import of any goods into the US that violate the Sonos’ patents. This could be a problem for Google because most of its deceives are produced in Asia.

The Court’s decision is not final and can be appealed.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

A pizza war between US and UK based companies rose the issue of the international IP strategy

One interesting dispute between pizza restaurants from the US and the UK brings to us the importance of intellectual property strategy for business development on international level.

Imapizza LLC  is a US based company owner of &pizza restaurants which main differentiating character is the oval form of their pizzas. The company has plans to start business in the UK but without taking further steps.

Meanwhile, the UK based company @pizza opened restaurants in Glasgow and Birmingham offering oval pizzas too.

Imapizza LLC initiated a lawsuit in the US alleging copyright infringement, trademark infringement and trespass.

According to the company, employees of @pizza visited their restaurants taking photographs in order to copy their business model and intellectual property. What’s more @pizza downloaded and used photos from the Imapizza’s website.

The court dismissed all claims as groundless. In the appeal the Court of Appeals for the D.C. Circuit upheld this decision.

According to the court there was no copyright infringement. Uploading and downloading of content by itself cannot constitute copyright breach under the US law. Probably the use of these photos could be an infringement but this happened in the UK and local court can decided on this issue.

Regarding the photos that were been taken in the Imapizza’s restaurants, they cannot infringe copyrights of the company because its restaurants are public places and copyright protection doesn’t cover such cases.

When it comes to both trademarks, although they are similar their was no infringement too. The US trademark law can be invoked in case of unauthorized trademark use in another country only if this can effect upon US commerce.

The Court dismissed the Imapizza’s arguments that this effect is connected with the US students and tourists in the UK which can be mislead by the UK trademark.

With regard to the trespass allegation, the Court found it groundless too because all photos took by the employees of the UK company happened on public places. Every costumer is allowed to take photos when going to a restaurant. If this activities happened in restricted premises probably the conclusion would be different but in the case at hand there was no illegal acts.

This dispute shows clearly how important an intellectual property strategy could be for every company. Some steps have to be implemented in that regard in order the business development of every company to be safeguard in the future on all markets of interest.

Breaking news – The US Supreme Court has ruled in favor of Booking.com

The US Supreme Court has ruled in one of the most interesting cases recently regarding registration of generic names as trademarks.

The case at hand concerns the attempt of Booking.com to register the same domain name as a word trademark. The USPTO refused this application based on absolute grounds – the term booking is descriptive (more detail can be found here)

As an argument for its decision the USPTO relied on another Supreme Court’s decision in the case Goodyear’s India Rubber Glove Mfg. Co. v. Rubber Co., where the Court considered that the use of Company after low distinctive sign cannot create distinctiveness by itself in order the sign to be registered as a trademark.

In the present case, however, the Supreme Court disagreed. While the additional element Company is not enough to create distinctiveness because it is not so specific, the .com element speaks for a particular domain name address, which is unique.

This means that even generic names + .com or another domain address can serve as trademarks in case consumers perceive them as such. The reason is that when consumers distinguish the generic name with the particular web address, this name starts to serve as a trade indicator for the relevant products or services because it leads to a particular website.

This doesn’t mean that after receiving protection all other competitors will not be able to use BOOKING as a term. Quite the contrary, they will do this with exception of the specific web address booking.com taken in it entirety.

Source: IPKat.

Abercrombie & Fitch’s Store Front Sculpture can be protected by copyright

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The US Copyright Office Review Board has recently issued a decision according to which the following Abercrombie & Fitch’s Store Front Sculpture is copyright protectable:

Initially the Office refused to register this sculpture stating that it is not original enough due to the fact that it consists of ordinary elements such as letters and geometric shapes which are not protected by the US Copyright law.

The Board, however, revised this decision, punting out that although the single elements are not protectable, the whole combination of them can be protected in case that there is at least a minimum level of creativity.

At the case at hand, the Board considered that this is satisfied based on the particular combination between the letters A and F, the ampersand symbol, and the abbreviation “Co.”.

Recently the US Copyright Office ruled out the UEFA Champion League’s logo and Vodafone’s corporate logo is not sufficiently original and refused their registration in the US.

Source: IPKat.

Is it possible to use a photo from the internet for your fashion collection?

The Milan Court has ruled in the case 2539/2020, which concerns not authorized use of a photo for commercial purposes.

In the case at hand, the Italian fashion house Antonio Marras used the following photo, downloaded from the internet, for its Fall/Winter 2014-15 fashion collection:

A lawsuit followed in which the photographer claimed copyright infringement. In Italy, there are two main ways for the protection of photos. The first is the classic one based on the copyright law where, however, the work has to be original, created as a result of the author’s intellectual efforts. The second protection refers to ordinary, simple photos of the real-world without creative efforts in place.

According to the fashion house, there was no copyright infringement because the photo was quite simple and not original, produced without any creative efforts.

The court disagreed. Grounded its position on the European Court decision in the case Painer, C-145/10, the Italian court came to a conclusion the photo was original indeed. The arguments for this were the fact that the author chose carefully the time and the subject to take this photo. What’s more, he used technique and an angle which to invoke specific emotions in the viewers.

The court added that another backing argument for the originality of the picture was the fact that it had been registered in the US Copyright Office, which is possible only if the work is original.

Source: IPKat.