Why Trademark Registration

KashishIPR - We help you create, safeguard, and grow.

With quality expertise and knowledge in the IP industry, KashishIPR assists the clients in registering and enforcing their trademark via its strong network alliances. ✅   For more visit: https://www.kashishipr.com/

Don’t forget to follow us on social media:

Facebook – https://www.facebook.com/kashishipr/

Twitter – https://twitter.com/kashishipr

Linkedin – https://www.linkedin.com/company/kashishipr/

Pinterest – https://www.pinterest.com/kashishipr/

Tumblr – https://kashishipr.tumblr.com/

Contact - US

Email Id: kashishipr@kashishipr.com

Website: www.kashishipr.com

Inter Miami Suffers Setback in Trademark Infringement Fight with Inter Milan

Inter Miami and Major League Soccer (MLS) have recently suffered a setback in the Trademark Infringement dispute with Serie A giants Inter Milan, as the U.S. Patent and Trademark Office (USPTO) dismissed one of the two arguments made by Miami that it should not be compelled to change its name.

On September 5, 2018, it was announced that the new Major League soccer franchise in Miami would be named Inter Miami CF – the official name Club Internacional de Fútbol Miami. As the team continued with a tradition of MLS teams copying European club titles like Real, Sporting, United, and City, the announcement raised some cries.

It also raised voices at Inter Milan, which filed a Trademark Application for its official name F.C. Internazionale Milano S.p.A in 2014 with the USPTO to get exclusive rights to use the term ‘Inter’ in the US, a move to prevent Inter Miami from marketing itself as ‘Inter.’ Inter Milan, in its application, contended that the team has become identical with the word Inter.

Despite the announcement made on September 5, MLS didn’t apply for the Trademark Registration for the name Inter Miami CF until September 25, 2018, and it wasn’t until March 2019 that MLS filed a notice of opposition to Inter Milan’s claim. The league, in the filed opposition, alleged that due to the widespread use of the word ‘Inter’ in soccer, the relevant customers don’t associate this word with one soccer team. Moreover, ‘Inter’ isn’t a source indicator for goods and services related to soccer.

The notice further claimed that the registration sought by the Applicant would damage MLS as such registration will prevent registration of ‘Inter’ with other wording even upon a showing of acquired distinctiveness in association with a soccer team.

According to many reports, Inter Milan successfully applied for a motion with the USPTO to dismiss the ‘likelihood of confusion’ claim by MLS. As the USPTO ruled, MLS claimed that several clubs worldwide use the term Inter in their name; for instance, SC Internacional of Porto Alegre, Inter Atlanta FC, FC Inter Turku (Finland), Brazil, Inter Nashville FC, NK Inter Zapresic (Croatia), Inter de Grand-Goave (Haiti), and Inter Leipzig (Germany). Nevertheless, the claim failed in showing that MLS possesses valid proprietary or ownership of the name ‘Inter.’

The USPTO ruling undermines one of the two key legal arguments of Miami. Although Inter Miami has used its right to replead the ‘likelihood of confusion’ claim and Inter Milan has filed a motion to dismiss it, the legal battle is expected to continue later this year. For more visit: https://www.kashishipr.com/ 

Don’t forget to follow us on social media:

Facebook – https://www.facebook.com/kashishipr/

Twitter – https://twitter.com/kashishipr

Linkedin – https://www.linkedin.com/company/kashishipr/

Pinterest – https://www.pinterest.com/kashishipr/

Tumblr – https://kashishipr.tumblr.com/

Contact - US

Email Id: kashishipr@kashishipr.com

Website: www.kashishipr.com

Calcutta HC Grants Relief to Republic TV in Trademark Infringement Suit

The Calcutta High Court (HC) has recently granted relief to Arnab Goswami’s AGR Outlier Media Asianet News Pvt. Ltd. (plaintiff) in passing off lawsuit citing infringement of Republic TV’s trademark.

The Trademark Infringement suit had been filed against Shailputri Media Pvt. Ltd. (defendant) running an internet portal under the domain name ‘www.republichindi.com,’ obtained on May 6, 2017, the same day on which Goswami’s Republic TV was launched.

The plaintiff told the HC that even before May 2017 launch, Republic TV was advertised on a nation-wide basis for many preceding months. Moreover, the trademark for ‘Republic’ was received on November 20, 2016.

According to these facts, it was contended that the defendant had copied the trademark of the plaintiff. The plaintiff claimed that the defendant had used a domain name similar to Republic TV’s, and also ignored the legal notice sent to the defendant in this regard.

On the other hand, the defendant argued that the name of ‘Republic Hindi’ was conceptualized and implemented by itself. It was also argued that the plaintiff was looking for monopolizing the use of the term ‘Republic,’ even though it was a generic term with nothing distinctive in it. To strengthen this argument, the defendant also made reference to other media outlets using the word ‘Republic’ in their brand names, like the News Republic, online Republic Malayalam, online Republic – Tamil, and news republic India. The defendant continued by saying that the plaintiff doesn’t possess any right over the term ‘Republic’ and thus could not restrain anyone from using the same. Further, it was claimed that the defendant’s Republic Hindi portal had also been launched on May 6, 2017. Hence, the company could not have had any prior information regarding the plaintiff’s channel, which was also launched on the same day. The defendant then said that the domain name ‘www.republichindi.com’ was a reliable, concurrent, and bonafide adoption.

The Court observed the similarities between the logo of the Republic TV and the Republic Hindi, even though the two operated on different modes of media. It said that while the defendant’s claim regarding bonafide adoption of its domain name needs consideration, there’s nothing on record to clarify that it had conceptualized ‘Republic Hindi.’

The Court also observed the advertisements of March and April 2017, which show that the plaintiff had started using the mark many months before the defendant. It means the public at large was already made aware that the plaintiff would launch a TV channel under the name and logo of the ‘Republic TV,’ much before the defendant purchased the domain name ‘www.republichindi.com.’

Given all these facts and observations, the HC disposed on the plea by saying it found that the manner in which the term ‘Republic Hindi’ is being used by the defendant, the mark appears deceptively similar to that used by the plaintiff. Hence, in such circumstances, there would be an order in terms to provide relief to the plaintiff.

The plaintiff ARG in this matter was led before the HC by Senior Counsel Ranjan Bachawat and Advocate Rajarshi Dutta. While, the respondent was represented by Advocates Sayan Roy Chowdhury, Rudraman Bhattacharyya, Shuvasish Sengupta, etc.For more visit: https://www.kashishipr.com/ 

Don’t forget to follow us on social media:

Facebook – https://www.facebook.com/kashishipr/

Twitter – https://twitter.com/kashishipr

Linkedin – https://www.linkedin.com/company/kashishipr/

Pinterest – https://www.pinterest.com/kashishipr/

Tumblr – https://kashishipr.tumblr.com/

Contact - US

Email Id: kashishipr@kashishipr.com

Website: www.kashishipr.com

FNHI Subsidiary Worksport Secures U.S. Trademark

FNHI (Franchise Holdings International Inc.), the parent company of Worksport Ltd., has now reached a significant Intellectual Property (IP) milestone with the recent granting of the sole trademark rights to the Worksport name for light truck tonneau covers in the United States.

Worksport and FNHI CEO Steve Rossi said that the granting of this trademark to Worksport would protect their valuable IP like no other development. Worksport is their tonneau cover brand, and therefore, no one else except them can use the brand name. He continued by saying that it’s a great achievement, which paves the path for the company to grow without facing concerns related to its brand name. Furthermore, it is a critical aspect of growing their company’s value.

As per the U.S. Patent and Trademark Office (USPTO), Trademark Protection is given to the first entity to use the specific mark in the geographic region where it operates, regardless of whether or not the mark is registered.

IP portfolio of Worksport and FNHI has been rapidly expanding for the last many years. And, the subsidiary now possesses four trademarks, with two each in the U.S. and Canada, in addition to one pending in China. Although pending, it reflects Worksport’s presence in the Chinese market. One, which has recently been granted in the U.S., is the company’s second but most critical trademark as both the Worksport logo and mark are now completely within their IP portfolio.

Steve Rossi said that Worksport has the word and logo mark, along with the name Worksport, a noticeable arsenal of IP. In the year 2019, they were awarded the first comprehensive trademark rights to ‘the Worksport name in Canada’ for the stylized Worksport logo. Apart from their trade name protection in Canada, they are truly a secured North American operator, with complete and absolute rights for their brand identity, and intend to enforce their rights in almost every locality.

Worksport, in November 2019, received an official USPTO notice that its recently filed ‘Alpha’ Patent Application has reached a pivotal milestone with the approval of all claims made in the application. Most of the claims were related to new technologies that would be utilized in a fresh line of advanced products to be offered by Worksport. Earlier in the same year, the company received the U.S. patent grant for its full-bed access light truck cover, the only thing in the industry that doesn’t extend into the truck bed. For more visit: https://www.kashishipr.com/ 

Don’t forget to follow us on social media:

Facebook – https://www.facebook.com/kashishipr/

Twitter – https://twitter.com/kashishipr

Linkedin – https://www.linkedin.com/company/kashishipr/

Pinterest – https://www.pinterest.com/kashishipr/

Tumblr – https://kashishipr.tumblr.com/

Contact - US

Email Id: kashishipr@kashishipr.com

Website: www.kashishipr.com

USPTO Rules In Favor of Disney over Trademark Dispute

The United States Patent and Trademark Office (USPTO) has recently dismissed three Trademark Applications filed in association with the Tron blockchain project. The decision has been made after the American media giant – Disney submitted the notices of opposition and claimed that the acceptance of these applications would result in brand confusion.

What’s the Case?

Raybo Technology, a Chinese partner of the Tron Foundation, applied for the trademarks – TRON, TRON NETWORK, and TRONIX in February 2018. Disney tried pushing back the Chinese partner with formal filings in August, but Raybo Technology failed to respond, and thus, the USPTO ruled in favor of the American media giant.

Disney claimed that the trademarks would infringe upon the long history of the giant’s use and licensing of the film series with the same name. Actually, Disney had created an entire franchise around its 1982’s film TRON, including an animated TV series, a sequel film, music recordings, video games, and a line of merchandise.

Disney, in its notices of opposition, explained that the Tron Foundation has decided to present its brand name in all capital letters, and it is quite similar to Disney’s TRON trademark. The notices also said that this move uncovers bad faith on the part of the Tron Foundation and is likely to create confusion, which would possibly shake Disney’s long-standing customer base. Since the Foundation hasn’t responded to Disney’s notices of opposition in the following nine months, the patent office rejected its Trademark Registration Applications by default – as a consequence, according to November filings.

Jake Chervinsky, General Counsel for Compound, announced that Tron had neither taken the Trademark Registration Process seriously nor retained US counsel to represent them even when the USPTO has expressly required them to do so. Moreover, they failed to respond to the USPTO default notice. It means that they gave up their trademark attempt completely.

Justin Sun, CEO and Founder of the Tron Foundation, declared that TRON is a globally established brand and applications in connection with it were filed for products that didn’t violate Disney’s trademark. He then announced that the foundation would continue pursuing its trademark in the US.

Some reports showed that Raybo Technology now possesses nine trademarks in China, including “Tron,” “TRX,” and “Tronix,” for further approval.

At last, Chervinsky affirmed that there is nothing wrong with planning to file the trademark application even when faced with vigorous defenses like in the case of Disney, but the precise way to deal with such situations is to withdraw the request, not ignore the USPTO. For more visit: https://www.kashishipr.com/ 

Don’t forget to follow us on social media:

Facebook – https://www.facebook.com/kashishipr/

Twitter – https://twitter.com/kashishipr

Linkedin – https://www.linkedin.com/company/kashishipr/

Pinterest – https://www.pinterest.com/kashishipr/

Tumblr – https://kashishipr.tumblr.com/

Contact - US

Email Id: kashishipr@kashishipr.com

Website: www.kashishipr.com