The findings from a recent UK Patents Court judgment have clarified the extent of litigation sanctions imposed when there is a failure to record a patent transaction at the Patent Office. The UK patents system may deprive a successful plaintiff of its entitlement to recover its full legal costs in these circumstances. This case will
It’s not uncommon for internet-based services to utilize names referencing their online presence, much like it is not uncommon for the monikers of app-based services to refer to their mobile format. But at what point does a suggestive term become merely descriptive to the point that it can be denied trademark registration? The United States Court of Appeals for the Federal Circuit weighed in on that question in a January 4 opinion that overturned the U.S. Patent and Trademark Office’s refusal to register the mark “Dotblog.” According to the Federal Circuit, the earlier refusal was in error because it “incorrectly concluded that the proposed mark is descriptive rather than suggestive,” and offered insight into how courts might determine the category into which a proposed mark should be placed.
At issue in the appeal was Driven Innovations’ application to register “Dotblog” as a trademark. The company described the mark as referring to “a service…us[ing] proprietary search techniques to find relevant and current blog posts relating to any given search query and provide….a summary report of what those posts are saying about” that query. The USPTO refused registration, finding it merely descriptive, and confirmed the decision on appeal, concluding that (in the words of the Federal Circuit):…
Continue Reading Federal Circuit Clarifies Descriptiveness Standard in Overturning ‘Dotblog’ Trademark Refusal
A DJ asserting trademark infringement and dilution claims against a similarly named rapper failed partly due to a lack of apparent popularity on social media, the U.S. Court of Appeals for the Sixth Circuit ruled on December 13. In Kibler v. Hall, et al., No. 15-2516 (6th Cir. Dec. 13, 2016), the appellate court affirmed summary judgment granted below for Hall, a rapper performing as “Logic” in a suit brought by Kibler, who performs as “DJ Logic.” While the Sixth Circuit agreed with the district court’s rejection of DJ Logic’s claims, it called the district court’s analysis “incomplete and at times flawed,” and pointed out the importance of social media engagements in determining trademark strength.
In 2012, an attorney for DJ Logic, who has been using the moniker since 1999, sent an email to the management company and booking agent of Hall, who has been performing as Logic since 2009, ordering them to stop using the name Logic. The email did not prove persuasive and DJ Logic sued in 2014, asserting claims of trademark infringement and trademark dilution under the Lanham Act, as well as two claims under Michigan law. The district court granted summary judgment in November 2015, dismissing all of DJ Logic’s claims.
Continue Reading Weak Social Media Presence Sinks Trademark Claims, Says Sixth Circuit