Search Results for: Trademark


10

Dec 2019

Trademark Infringement Findings in ITC Investigations Without Actual Confusion or Consumer Survey Evidence

By Tammy Dunn 繁體中文 Over the past few years, Segway, Inc., the maker of two-wheeled motorized personal vehicles (as seen in U.S. Patent No. 8,830,048) has successfully litigated against competitors that were infringing its patents. In March 2016, Segway won the rare remedy of a General Exclusion Order (GEO), issued by the International Trade Commission after an investigation concluded in findings that several companies were…

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05

Aug 2019

U.S. Supreme Court Decision in Mission Product Resolves Issues Surrounding Trademark Agreements Rejected in Bankruptcy

By Califf Cooper and Keelin Hargadon 繁體中文 In Mission Product Holdings, Inc. v. Tempnology, LLC, No. 17-1657 (S.Ct. May 20, 2019), the U.S. Supreme Court issued a ruling that will have broad implications for licenses and other agreements in bankruptcy.  The Court held that agreements rejected by a debtor in bankruptcy are not terminated.  Instead, the non-debtor party retains whatever rights it would have under…

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05

Aug 2019

Major Amendments to China’s Trademark Law regarding Malicious Registration and Trademark Misuse

By Han-Mei Tso 繁體中文 Malicious trademark squatting and trademark misuse have been significant problems for foreign companies doing business in China. Likewise, even local Chinese companies are being forced into unnecessary litigation or licensing negotiation due to the threats from trademark squatters. However, the recent amendments to the Trademark Law of the People’s Republic of China (“the Amendments”) made by the Standing Committee of the…

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05

Aug 2019

Iancu v. Brunetti: U.S. Supreme Court Holds the Lanham Act’s Ban on Registration of “Immoral or Scandalous” Trademarks Violates the First Amendment

By Tammy Dunn and Keelin Hargadon 繁體中文 In Iancu v. Brunetti, 588 U.S. __ (2019), the Supreme Court affirmed the Federal Circuit’s decision invalidating the statutory bar on registration for marks considered “immoral or scandalous.”  The Supreme Court’s reasoning was similar to its analysis in Matal v. Tam, 582 U.S. ___ (2017), in which the Supreme Court declared unconstitutional the Lanham Act’s ban on registering…

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26

Jun 2019

Major Updates to Canadian Trademark Law: Canada Joins the Madrid Protocol and More

By Keelin Hargadon 繁體中文 The Canadian trademark system underwent major changes on June 17, 2019.  The revisions to established trademark law bring the Canadian system closer to most other jurisdictions internationally by eliminating the use requirement for registration. Furthermore, Canada joined three key WIPO treaties: the Madrid System for the International Registration of Marks, the Nice Agreement, and the Singapore Treaty on the Law of…

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01

Oct 2018

A Trademark within a Copyright: 9th Circuit Clarifies Trademark Rights in Expressive Works

By: John Montgomery and James Carlson Courts typically use a test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (“Rogers”), to determine whether artistic expression under the First Amendment of the U.S. Constitution overrides application of traditional trademark rights. If use of the trademark in the work does not add expressive value to the work that is protectable by the First amendment,…

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15

Mar 2018

UNIQLO Wins Trademark Infringement Litigation in China

By:  Han-Mei Tso, Ken Yu Recently, the Guangzhou Intellectual Property Court issued the second-instance decision on Guangzhou Compass Exhibition Service Co., Ltd. and Guangzhou Zhongwei Enterprise Management Consulting Service Co., Ltd. (collectively “Compass/Zhongwei Company”) v. Fast Retailing (China) Trading Co., Ltd. (The famous brand UNIQLO’s retailer in China) and Fast Retailing (China) Trading Co., Ltd. Guangzhou Baixin Plaza Store (collectively “Fast Retailing Company”) regarding a…

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10

Oct 2017

JPO Entrusted AI Business For Trademark Applications to FRONTEO

By: Mutsumi Fukuoka Since 2016, the Japanese Patent Office (JPO) has been considering using Artificial Intelligence (AI) in the examination of patent, design, and trademark applications.  In April of 2017, the JPO announced “Action Plan for Utilization of AI Technology” (available in Japanese here) in April 2017. As part of this Plan, the JPO will perform the following tasks: (1) make a list of the…

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29

Sep 2017

Under Armour Won Trademark Battle Against Uncle Martian in China

By: Han-Mei Tso and Ken Yu In August 2017, the People’s Higher Court of Fujian Province (the “Fujian Higher Court”) issued the first instance judgment on UNDER ARMOUR Inc. (“UNDER ARMOUR”) v. Fujian Tingfeilong, Inc. (“Tingfeilong”). The Fujian Higher Court held that the defendant’s act has infringed the plaintiff’s trademark rights and also constituted unfair competition. The Fujian Higher Court awarded 2 million RMB for…

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23

Jun 2017

The SLANTS Win Epic Trademark Battle – Supreme Court Rules the “Disparagement Clause” of Trademark Act is Unconstitutional

By: John Montgomery The Supreme Court of the United States has affirmed the judgment of the Court of Appeals for the Federal Circuit, finding the longstanding “disparagement clause” of the Trademark Act of 1946 (the Lanham Act, 15 U.S.C. § 1052(a)) unconstitutional, in violation of the Free Speech Clause of the First Amendment to the Constitution. In an earlier Osha Liang Newsletter article (click here…

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20

Jan 2017

Strategies Used By Chinese Trademark Squatters and How to Prevent Them

By: Keelin Hargadon International companies have long encountered problems navigating China’s trademark system due to lack of knowledge about China’s first to file system, trademark squatting, and lax enforcement in cases of trademark infringement.  Wresting a trademark from a bad actor is expensive, difficult and sometimes ultimately unsuccessful. Chinese administrative bodies and courts have historically been unwilling to consider bad faith as a factor in clear…

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28

Dec 2016

China’s Supreme Court Ruled On “乔丹” (Jordan) Trademark Dispute

By: Han-Mei Tso and Ken J. Yu On December 8, 2016, China’s Supreme Court (“the Supreme Court” hereinafter) ruled on the dispute between the retrial petitioner (the plaintiff in the first instance, the appellant in the second instance), Michael Jeffery Jordan (“Jordan” hereinafter), and the respondent (the defendant in the first instance, the appellee in the second instance), China Trademark Review and Adjudication Board (“the Board”…

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31

Oct 2016

Trademarks: Madrid Update

By: Jonathan P. Osha Algeria, the last country that was a member of only the Madrid Agreement, acceded to the Madrid Protocol in October of 2015.  Thus, during the 50th session of the Madrid Union Assembly earlier this month, the decision was taken to bar any country in the future from acceding to the Agreement only.  Accordingly, from this time forward, a single set of…

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26

Jul 2016

Impact of Brexit on Pan European Design and Trademark Rights

By: Jeffery P. Langer, Aly Dossa, Christophe Besnard In last month’s newsletter, we discussed the effect of Brexit on patent rights (read article here).  As discussed there, other than increased uncertainty as to when and how the Unified Patent Court (UPC) will be implemented, Brexit will not generally disturb the application process for European patent protection.  Applicants will continue to be able to seek central examination…

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08

Mar 2016

Focus on Trademarks: Registration of Derogatory Terms

By: Keelin Hargadon In 2015, The Court of Appeals for the Federal Circuit ordered an en banc review of its own previous decision that the term “The Slants” is derogatory to persons of Asian descent, and therefore was properly denied registration in view of Section 2(a) of the Lanham Act. The resulting opinion, issued December 22, 2015, found the Lanham Act’s provision barring the registration…

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01

Oct 2013

Updates and Changes in Chinese Trademark and Copyright Law

The PRC recently passed legislation affecting intellectual property rights which will take effect on May 1, 2014.  The following is a synopsis of some of the most salient points. Multi-Class Applications Applicants may now file for trademark registration in several classes in a single application.  Previously, only one class was permitted per application.  This change is expected to streamline the trademark process and cut down…

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15

Apr 2013

Trademark Winner 2013

Osha Liang is please to announce we have won ‘Trademarks Law Firm of the Year in Texas’ for the 2013 Corporate Intl Magazine Legal Award.


06

Feb 2020

Women in IP: A Look Into Diversity & Inventorship

  On February 6th, Osha Liang Partner Carlyn Burton joined fellow panelists, Katherine Franco (partner at Blank Rome), Lydia Evans (owner of SW&G Essentials),  and moderator, Hope Shimabuku (Regional Director of Texas Regional USPTO) for a presentation on, “Women in IP Law: A Look into Diversity & Inventorship.” This was just one session of a 3-day event (33rd Annual Course: Advanced Intellectual Property Law) hosted…

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27

Jan 2020

From Petroleum to Patents

By David Madio, Ph.D. 繁體中文 One unanticipated thing I’ve learned is that careers often go in directions one would have never imagined.  I’m glad to report, however, that the unexpected path has been filled with more enjoyment than I ever could have dreamed.  And none of the steps have ultimately been wasted, each one making a subsequent one possible. Briefly, my career path began with…

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15

Sep 2019

Tammy Dunn Ranked “Top 50 Women in PTAB Trials List”

Congratulations to Osha Liang Attorney Tammy Dunn who was ranked among the “Top 50 Women in PTAB Trials List” according to the PTAB Bar Association. “This special publication, released by the Association’s Women’s Committee as part of a two-year long focus on women practicing before the U.S. Patent & Trademark Office’s Patent Trial & Appeal Board, recognizes female practitioners currently in private practice or at…

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06

Sep 2019

USPTO Updates: Proposed New Fees and Fee Increases

By James Carlson  繁體中文 On July 31, 2019, the USPTO published a federal register notice[1] regarding changes to various USPTO fees.   In particular, the USPTO proposes three new fees: (1) a surcharge fee of $400 for filing a nonprovisional application in a non-DOCX format; (2) pro hac vice admission fees of $250; and (3) an annual patent practitioner fee ranging from $70 to $340. For…

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06

Sep 2019

AIA Inter Partes Review Is Not Unconstitutional to Pre-AIA Patents under the Fifth Amendment’s Takings Clause

By Peter Schechter 繁體中文 Since the Supreme Court’s decision in Oil States Energy Servs., LLC, v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365 (2018), various constitutional challenges have continued to be raised by patent owners whose pre-AIA patents have been cancelled in AIA Inter Partes Review (IPR) proceedings.  The U.S. Court of Appeals for the Federal Circuit (CAFC) has finally addressed one such challenge. …

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01

Jul 2019

Copyright before Contract: The Role of Copyright Preemption in Software Licensing

By James Carlson 繁體中文 In Universal Instruments Corp. v. Micro Systems Engineering, Inc., No. 17-2748 (2d Cir. May 8, 2019), an opinion from the U.S. Court of Appeals for the Second Circuit illustrates the fine line where contract terms may conflict with the U.S. Copyright Act.  Unlike with patents and trademarks, the Copyright Act provides an explicit preemption clause governing when a legal claim under…

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26

Jun 2019

New Graphical User Interface (GUI) Protection in Japan

By Mutsumi Fukuoka 繁體中文 Under Japanese law, graphical user interfaces (GUIs) are traditionally protected by the Patent Act in the same manner as other technologies.  For example, published Japanese Patent Application No. 2019-050004, assigned to Apple, Inc., discloses an electronic device that displays a special user interface.  In thisapplication, the special user interface displays different interface layers depending on different touch inputs to a touchscreen….

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04

Jun 2019

Senior Officers of AIPPI Visit China to Further International Cooperation of Intellectual Property Protection

By Han-Mei Tso 繁體中文 Senior officers of the International Association for the Protection of Intellectual Property (AIPPI) visited China to further communication and cooperation between China and AIPPI in the field of intellectual property protection. Visiting delegates included Ms. Renata Righetti, AIPPI President, and Osha Liang’s Managing Partner, Mr. Jonathan Osha, Reporter General of AIPPI. On May 29, 2019, senior officers of AIPPI visited the…

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04

Jun 2019

Introduction to Prioritized and Expedited Patent Examination Procedures (Part Three) – Chapter of the United States –

By Ran Wang and Han-Mei Tso 繁體中文 Previously, Osha Liang Insights provided an overview of the prioritized patent examination procedures in China and Japan.  For the third part of this series, we will focus on the expedited patent examination procedures in the United States. The United States Patent and Trademark Office (USPTO) currently offers three programs that allow a patent applicant to petition for expedited…

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05

Mar 2019

Patent Reexamination Board Eliminated Amid CNIPA Reorganization

By Han-Mei Tso  简体中文 繁體中文 According to a notice issued by the China National Intellectual Property Administration (CNIPA) on February 14, 2019, the Patent Reexamination Board will be merged into the Patent Office of the CNIPA.  The Patent Reexamination Board was formerly a subordinate organization under the CNIPA.  However, after the merger, the Patent Office will be responsible for all duties formerly handled by the…

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01

Feb 2019

Obviousness-Type Double Patenting Does Not Invalidate Patent Term Extensions

By Payal Majumdar 日本語 简体中文 繁體中文 In Novartis AG v. EZRA Ventures LLC, No. 2017-2284 (Fed. Cir. Dec. 7, 2018), the U.S. Court of Appeals for the Federal Circuit affirms the Delaware district court’s final judgment concerning patent term extensions and the interplay with the obviousness-type double patenting doctrine.  In this court decision, the Federal Circuit found that in accordance with statutory construction principles and…

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