Law.com Subscribers SAVE 30%
Call 855-808-4530 or email GroupSales@alm.com to receive your discount on a new subscription.
New Test Determines Primarily Geographically Misdescriptive Marks
In a decision interpreting Section 2(e)(3) of the Lanham Act (15 U.S.C. '1052(e)(3)), the Federal Circuit Court of Appeals has adopted a new three-part test to be used by the U.S. Patent and Trademark Office (PTO) in determining whether a trademark is “primarily geographically deceptively misdescriptive” (“misdescriptive”). In re California Innovations, Inc., 329 F.3d 1334 (Fed. Cir. 2003). The Federal Circuit held that the amendments to the Lanham Act resulting from the North American Free Trade Agreement (NAFTA) changed the rules under which the PTO may deny registration to misdescriptive marks.
California Innovations, Inc. (“CI”) applied to register the mark CALIFORNIA INNOVATIONS & Design for a variety of goods that did not originate in California. After the PTO refused registration based on likelihood of confusion with prior registrations, CI disclaimed “California” and amended its identification and classification of the goods. The mark was published without opposition, but the PTO later refused registration on the misdescriptiveness ground. This refusal was upheld by the Trademark Trial and Appeal Board on appeal. California Innovations, 329 F.3d at 1336. However, the Federal Circuit reversed and remanded the case to the PTO for reconsideration under a new test made necessary by the NAFTA amendments.
Prior to NAFTA there were three categories of geographical marks:
This premium content is locked for Entertainment Law & Finance subscribers only
ENJOY UNLIMITED ACCESS TO THE SINGLE SOURCE OF OBJECTIVE LEGAL ANALYSIS, PRACTICAL INSIGHTS, AND NEWS IN ENTERTAINMENT LAW.
- Stay current on the latest information, rulings, regulations, and trends
- Includes practical, must-have information on copyrights, royalties, AI, and more
- Tap into expert guidance from top entertainment lawyers and experts
Already a have an account? Sign In Now Log In Now
For enterprise-wide or corporate acess, please contact Customer Service at customercare@alm.com or 877-256-2473
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Removing Restrictive Covenants In New York
In Rockwell v. Despart, the New York Supreme Court, Third Department, recently revisited a recurring question: When may a landowner seek judicial removal of a covenant restricting use of her land?