2021 Year in Review: Trademark Law

Here are some of the trademark law developments for 2021.

Trademark Modernization Act

One of the most significant changes was the roll-out of the Trademark Modernization Act (TMA):

This rule establishes ex parte expungement and reexamination proceedings for cancellation of a registration when the required use in commerce of the registered mark has not been made; provides for a new nonuse ground for cancellation before the Trademark Trial and Appeal Board (TTAB or Board); establishes flexible Office action response periods; and amends the existing letter-of-protest rule to indicate that letter-of-protest determinations are final and non-reviewable.

This change was inspired in large part by abuse of the US trademark system by foreign entities, as discussed below.

USPTO Cracks Down on Foreign Trademark Registration Fraud

As we discussed here, the United States Patent and Trademark Office (USPTO) has lost patience with fraudulent foreign IP filings, especially from entities based in China.

A study found that about two-thirds of use-based Chinese trademark applications included fraudulent specimens, suggesting that the marks weren’t actually used in commerce.

Countries Fight over Geographical Indications

As we discussed in this blog, people usually think about a trademark as something a company owns. But a similar kind of intellectual property right can also be “owned” (in a sense) by a country or geographical region.

Just as a trademark can identify the company that’s the source of goods, a Geographical Indication (GI) can indicate the country or region that’s the source of goods.

Although champagne (the bubbly alcoholic beverage) is associated with the Champagne (the region of France), as the Washington Post reports, as of July 2 a new law in Russia “will require French champagne makers to add a “sparkling wine” reference to the back of their bottles sold in Russia.”

Meanwhile, India and Pakistan have been fighting over the designation “Basmati” for rice sold in the EU.

Cake Frosting as Trade Dress

As we discussed here, a federal court in Denbra IP Holdings, LLC d/b/a Nothing Bundt Cakes v. Kerri Thornton d.b.a. All About Bundt Cakes granted a cake company’s motion for a preliminary injunction, finding that a rival cake company’s frosting patterns violated the first company’s trade dress rights.

Evel Knievel’s son loses Disney Duke Caboom trademark case

As AP reported,

A judge dismissed a trademark infringement lawsuit filed by Evel Knievel’s son a year ago against the Walt Disney Co. and movie company Pixar over a “Toy Story 4” daredevil character named Duke Caboom….

The judge wrote that while the Caboom character was “reminiscent” of Knievel, “Disney’s use of Evel Knievel’s likeness contains significant transformative elements” and is not a literal depiction.

TTAB proceedings don't preclude trademark infringement cases

As Reuters reported, the 3rd U.S. Circuit Court of Appeals ruled that a Trademark Trial and Appeal Board (TTAB) proceeding doesn't preclude related trademark infringement claims.

Jury Rules against Atari in Trademark Infringement Case

As Reuters reported, the jury in Atari Interactive Inc. v. Redbubble Inc. returned a verdict in Redbubble’s favor in a trademark infringement case brought by Atari.

Redbubble is a print-on-demand marketplace that allows artists to upload images that customers can have printed onto physical items.

Atari had alleged that Redbubble failed to adequately police its marketplace to remove images that infringed Atari’s trademarks.