Trademark Bulletin March 2019

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SDNY District Court Rejects Laurel Road’s Trade Dress Suit Against CommonBond

On August 27, 2018, Laurel Road Bank sued competitor CommonBond, Inc. over the latter’s display of an advertisement for its student loan financing services, alleging that CommonBond’s advertisement infringed and diluted the trade dress of Laurel Road’s advertisements of its own student loan refinancing services. Read More

How to Import Alcohol into the U.S.

By | All, Corporate, Featured, International, Publications

Robert N. Swetnick, Partner
Carolina Pineda Martinez, Special Counsel

June 20, 2019

There are multiple considerations to take into account when importing alcohol into the U.S., many of which may become a major pitfall if not addressed in due time. In this article we will explain how to import alcohol into the U.S. so that the process can be seamless and you may start your business as soon as possible! Read More

Trademark Bulletin February 2019

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BIC Files ITC Complaint Against Importers of Allegedly Counterfeit Pocket Lighters

On December 6, 2018, BIC Corporation (“BIC”) petitioned the United States International Trade Commission (“ITC”) for an investigation into the illicit importation into the United States, sale for importation, or sale after importation of six respondents’ pocket lighters, alleging that respondents’ lighters infringe BIC’s intellectual property rights in the design of its disposable cigarette lighters, otherwise known as their “trade dress.” In its petition, BIC argues that similarities in the appearance of respondents’ lighters and its lighters will lead consumers to be confused as to the source and/or sponsorship of respondents’ lighters, or to affiliate respondents’ lighters with BIC.  BIC’s petition asks the ITC to issue a general exclusion order blocking the importation of infringing lighters from any source, not just the named respondents, and claims that such an order “is necessary and appropriate to prevent circumvention of limited exclusion orders directed to products of Respondents.”

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Trademark Bulletin January 2019

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Supreme Court Will Decide Whether USPTO Can Refuse to Register “Scandalous” TMs

On January 4, the U.S. Supreme Court granted certiorari to the USPTO to decide whether the Lanham Act’s prohibition on the federal registration of “immoral” or “scandalous” marks violates the First Amendment. The Supreme Court’s decision to hear the case comes less than two years after it unanimously ruled in Matal v. Tam that a similar part of the trademark law that banned the registration of “disparaging” trademarks violated the First Amendment. In Matal, an Asian-American rock band called The Slants attempted to register its name for trademark protection, but was denied because the USPTO decided that the mark would be likely to offend Asian-Americans. Read More

Trademark Bulletin November 2018

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U.S. Supreme Court to Rule on Rights of Trademark Licensees Upon Rejection of a Trademark License Under Section 365 of the Bankruptcy Code

On October 26, 2018, the U.S. Supreme Court granted a petition for certiorari in the case Mission Product Holdings Inc. v. Tempnology, LLC to decide whether a licensee may retain licensed trademark rights even after its license agreement has been rejected by the licensor pursuant to section 365 of the Bankruptcy Code, 35 U.S.C. 365(a). Read More

Trademark Bulletin October 2018

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Owner of The Wizard of Oz TMs Opposes Pagan Elder’s Application for Wicked Witch TM

Turner Entertainment Co. (subsidiary of Warner Bros.) filed a petition against Wicked Witch Studios’, application for WICKED WITCH MOJO used in connection with its magical line of “candles, aromatic essential oils, incense, and scented room sprays” which are available in in metaphysical shops nationwide. Read More

Trademark Bulletin September 2018

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Dunnington Litigation Team Wins Complete Dismissal in SDNY Against Notorious TM Troll

On September 10, Judge Laura Taylor Swain dismissed trademark infringement claims brought by Michael Gleissner, one of the world’s most infamous trademark trolls, against a Hong Kong-based satellite operator in the U.S. District Court for the Southern District of New York. Read More