By Ann Ford and Ashley Green

The United States Supreme Court ruled today that a Trademark Trial and Appeal Board (“TTAB”) ruling on likelihood of confusion can preclude later litigation on the same issue in federal courts.  This highly anticipated and long-awaited decision, penned by Justice Alito, ends nearly two decades of litigation on whether the TTAB’s refusal to register an applied-for mark on the basis that it is likely to be confused with a prior registered mark is enough to preclude a federal court from coming to a different conclusion in the infringement context.  The court said it is, so long as the ordinary elements of issue preclusion are met.


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By Stefania Baldazzi and Elena Varese

Coordinator of the Fashion Law Specialization Course at the University of Milan

1. Barbara, you are the coordinator of the postgraduate fashion law course at the Insubria University of Como and at the Statale University of Milan.  No similar course has ever been offered by an Italian academic institution before.  Can you tell us where the idea to set up such a course came from?


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By Carol Umhoefer

By now, everyone has heard of the draft EU Data Protection Regulation that is expected to replace the current Data Protection Directive, which dates from 1995.  The key innovative provisions in the Regulation will significantly affect online fashion retailers by widening the territorial scope of EU data protection laws.  Bricks-and-mortar fashion retailers in the EU, who are already subject to the Directive, will also feel the impact of the Regulation in many ways, including a new obligation to appoint a Data Protection Officer.


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By Edward Chatterton and Elizabeth Wong

Fashion brand owners entering China are generally well aware of the myriad of brand protection challenges awaiting them.  One such challenge is China’s rigid first-to-file trademark system which is blamed for the problem of brand piracy in China, where unrelated third parties register trademarks which are copies or imitations of well-known brands.  One of the most effective ways to combat this scourge is for the brand owner to register first in China. 


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By James Stewart and Ashley Green

President Obama recently announced that the United States and Cuba would begin talks to reestablish diplomatic relations and partially lift the economic and travel sanctions that have existed between the two nations for over fifty years. While the embargo in general remains in place at this time, it appears that the entrance of U.S. companies into the Cuban market is no longer a remote possibility, but merely a matter of time.  As Cuba slowly begins to open to the U.S., brand owners should take proactive measures to protect their valuable intellectual property in Cuba.  Like many jurisdictions outside of the U.S., trademark rights in Cuba are established and granted to the first party to file a trademark application for a particular mark.  Thus, brands should take advantage of the President’s announcement to consider expanding or obtaining trademark rights in Cuba to fully prepare for possible future expansion. 

Read more about this U.S. policy shift towards Cuba. 


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November 13, 2014 DLA Piper LLP is proud to announce that the International Trademark Association (INTA) honored Mark Feldman with the Volunteer Service Award (VSA) in the Advancement of Committee Objectives category. INTA is a global member-based organization dedicated to supporting trademarks and related intellectual property in order to protect consumers and to promote fair and effective commerce.


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By David Kramer & James Stewart

On Thursday, August 14, 2014, the Washington Redskins filed a much-anticipated appeal in the U.S. District Court for the Eastern District of Virginia of a June Trademark Trial and Appeal Board decision which resulted in cancellation of six of the team’s federal trademark registrations containing the word REDSKIN. As previously reported in Re:Marks, the TTAB issued a divided ruling which stated that the Redskin Registrations “must be cancelled because they were disparaging to Native Americans at the time of registration,” in violation of Section 2(a) of the Trademark Act, which prohibits the registration of trademarks that disparage persons or bring them into contempt or disrepute.

 


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By David Kramer and James Stewart

In a ruling that has quickly spread throughout social media, the Trademark Trial and Appeal Board (the “Board”) issued an order cancelling six trademark registrations which contain the word REDSKIN (the “Redskins Registrations”), owned by the Washington, D.C. professional football team, the Redskins (the “Team”).  In a divided ruling, the Board stated that the Redskin Registrations “must be cancelled because they were disparaging to Native Americans at the time of registration,” in violation of Section 2(a) of the Trademark Act, which prohibits the registration of trademarks that disparage persons or bring them into contempt or disrepute. 

While there is some confusion about the implications of this decision for the future of the Team’s name, the Board prominently noted the limited effect of its decision at the outset of its opinion.  Specifically, the Board stated that the decision only concerns the right to federal registration of REDSKIN-formative trademarks, noting that the Board lacks any authority to prohibit the Team from use of its REDSKIN-formative trademarks


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