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USPTO May Not Deny Trademark Registration Even if Mark is “Scandalous” or “Immoral”

In Iancu v. Brunetti, June 24, 2019, the U.S. Supreme Court dealt with a clothing manufacturer, who under the guise of seeking to thwart counterfeiters of its product, sought registration before the U.S. Patent & Trademark Office (USPTO) of its logo FUCT on its tee shirts. The Court affirmed a lower federal court’s ruling that the USPTO may not refuse registration of a mark containing the “F” word or similar four-letter “cuss” words on a “viewpoint basis;” i.e., that such mar

Domain Name Cornucopia of Riches: A $30 Million Voice

MicroStrategy, an analytics and software services company headquartered in Fairfax County, Virginia, recently announced the sale of one of its domain names, “Voice.com,” for use as a blockchain-based social media app. The sales price was $30,000,000.00 in an all-cash transaction. (That’s correct – Thirty Million Dollars!) Block.one purchased this domain name and has commenced using it to drive views and potential customers to its website and social media application. MicroStr

Who’s Tom Terrific? Trademark Controversy Pitches Football a Strike against Baseball

The latest high profile trademark controversy involves two iconic sports figures – Hall of Fame baseball pitcher Tom Seaver and New England Patriots football quarterback Tom Brady. Tom Brady’s sports management company recently filed two trademark applications to register with the U.S. Patent & Trademark Office (USPTO) “Tom Terrific.” While the applications are filed in two separate International Classes – one for trading cards and the like, and the other for tee shirts and w

Icing on the Cake: Use of Iconic/”Famous” Boy Scouts Eagle Rank Design Mark

Iconic/”Famous” brands and trademarks/trade names are valuable Intellectual Property. Organizations holding such as marks registered with the U.S. Patent and Trademark Office (USPTO) rightfully guard their marks’ use by third parties. Should a third party desire to use a registered mark, advance written permission is required if that third party is to avoid potential claims of infringement, litigation, and potentially large expenses and damages. The latest example of this req

Big Mac Attack(ed): McDonald’s Loses on “Bullying” Claim

Even iconic brands and trademarks/trade names are subject to continuous scrutiny as well as litigation. Slathering a mark with “special sauce” and constant promotion does not always carry the day. The most recent example of long-promoted brands/marks not prevailing is McDonald’s (“McD”) and its “Big Mac” mark. McD recently lost before the European Union Intellectual Property Office (“EUIPO”) over a mark that was generally thought to be unassailable. McD may now have to consid

What's the Beef with Wendy's in Europe?

Some fast food for thought: there are virtually no “Wendy’s” fast food retail restaurants in Europe. Why? Well, it's the result of many years’ experience of Wendy’s with international franchising, as well as losing out to a local independent Dutch fast food entrepreneur back in the 1990s. Wendy’s abandoned its trademark in Holland after the independent registered the trademark “Wendy’s” in Holland and the Benelux region. The mainstream Wendy’s tried to oust the Dutch Wendy’s

Girl Scouts Sue Boy Scouts: Mark Your Turf

Girl Scouts of America Sue Boy Scouts of America Over Alleged Trademark Infringement Seven Deadly Sins aka Seven Infringement Charges Chapter #3 This post follows up on previous coverage of the Girl Scouts of America’s (“GSA”) trademark infringement suit filed against the Boy Scouts of America (“BSA”) in November 2018 in a New York federal court. As covered in Volume II, Issues #4 and #5 of this author’s blog, today’s post (Chapter #3) will delve a bit more into the positioni

Girl Scouts Sue Boy Scouts: Market Confusion?

Girl Scouts of America Sue Boy Scouts of America Over Alleged Trademark Infringement Seven Deadly Sins & Background Chapter #2 Following up on the Girl Scouts of America’s (“GSA”) comprehensive trademark infringement lawsuit filed against the Boy Scouts of America (“BSA”) last month in a New York federal court, as noted in previous Issue #4 of this author’s blog post, today’s blog will set out a brief history of each organization and the background leading up to this recently

Girl Scouts Sue Boy Scouts: 7 Deadly Sins?

Girl Scouts of America Sue Boy Scouts of America Over Alleged Trademark Infringement: Seven Deadly Sins a.k.a. Seven Infringement Charges Chapter #1 By John Pellegrin, December 2018 Most organizations covet and vigorously protect their Intellectual Property (IP) rights, particularly if they perceive unauthorized use of service and trademarks by any other organizations, be they nonprofit or for-profit. They are also concerned with competition and name/mission/branding confusio