Saunders & Silverstein LLP的动态

Your company might not be 155 years old, but it might someday have one thing in common with Campbell’s: changing its name. Company name changes are fairly common and are generally not overly complicated. Depending on the type of company, perhaps the board needs to pass a resolution. Submit the necessary paperwork to the state in which the company is organized, and soon afterward the change is complete. All done, right? If your company has registered and/or applied to register its trademarks with the USPTO, you’re not done yet. To ensure the records at the USPTO are correct, it’s necessary to record the change of name with the Assignment Recordation Branch. Your trademark counsel will gather the necessary information from you and will submit the name change to the USPTO. Soon after the USTPO accepts the change, it will be reflected in the records of the company’s applications and registrations. Recording the name change is not merely an administrative task; it ensures actions taken with respect to applications and registrations go smoothly. For example, if when making a maintenance filing there is a mismatch between the company name on record and the name in the filing, the USPTO will refuse the filing until the issue is resolved. Or if you file an application in the new name of the company, your own company’s existing registrations might be cited against that application. The lesson: don’t overlook talking with trademark counsel when your company is undergoing a change, whether to its name, address, entity type, or state of organization. (Note that in Campbell’s case, their trademark portfolio is in the name of what appears to be a holding company, CSC Brands LP. If that company name isn’t changing, they won't need to do any of the above. But the lesson still stands!)

As someone from Cyprus, the home of Halloumi cheese, I’ve been following the recent ruling closely. The High Court of England & Wales handed down its judgment in the Halloumi case (CH-2024-000011) on September 9, 2024, in Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v Fontana Food AB. What Happened? ?? The case involved trademark applications for “GRILLOUMI” and “GRILLOUMAKI.” Cyprus had already lost an appeal last year against a similar EU trademark for "GRILLOUMI." The Foundation for the Protection of Halloumi opposed the new applications, holding the UK collective mark for “HALLOUMI” since 2000. They argued the new names were too similar and might confuse consumers. Confusing Similarity ?? The Court had to decide if “GRILLOUMI” and “GRILLOUMAKI” were too similar to “HALLOUMI.” In the end, it found that there wasn’t enough similarity between restaurant services and cheese itself to cause confusion. They concluded that consumers wouldn’t likely think that cheese and restaurant services came from the same place. Also, “HALLOUMI” was seen as weakly distinctive, which made confusion even less likely. As for “GRILLOUMAKI,” the Court found it didn’t resemble “HALLOUMI” closely enough to cause confusion, despite some identical goods. Reputation ?? The Court agreed with earlier findings that “HALLOUMI” didn’t have a strong enough reputation to stop “GRILLOUMI” or “GRILLOUMAKI” from being used on the basis of unfair advantage. Wrap-Up ?? While the decision may not be what Halloumi producers hoped for, it highlights the evolving trademark landscape. It’s clear that simply having a longstanding name like “HALLOUMI” doesn’t guarantee success in every case, especially with products or services that aren’t directly related. This case reminds us how important it is to keep an eye on how trademarks are interpreted and enforced, particularly in a post-Brexit world. As for the Halloumi Foundation, they’ll likely be back with new strategies to strengthen their position in the UK market.

#McDonalds in the EU loses the right to use the term #BigMac with respect chicken sandwiches and other chicken products due to non-use of the term over a period of five years. Well done to Supermac who has fought McD since 2016 on this and other copyright issues. “This judgment is a reminder that even well-known brands may face cancellation or partial cancellation proceedings. In defending proceedings for revocation or cancellation the evidence adduced should clearly show the mark and that the mark is used in commerce in respect of the relevant goods and or services and during the relevant time. Token or once-off use may be insufficient. Brand owners should retain evidenc of use and maintain comprehensive records. Brand portfolios should be regularly reviewed and protection obtained for all forms of the mark, for all relevant goods and/or services and in all relevant territories.” #JaniceGalvad #CopyrightLaw #UseLaw #AdamsandAdams

?? KFC’s Secret Recipe: A Lesson in Trade Secrets and Trademarks ?? What would you do if a competitor claimed to have a version of your 80-year-old “secret recipe”? For KFC, the answer is clear: Protect what’s yours. Recently, KFC’s parent company, Yum! Brands, took legal action against Church’s Texas Chicken, alleging their marketing tactics infringe on KFC’s well-known “Original Recipe.” This case is a powerful reminder of the value of trade secrets and the importance of proactive trademark protection. Here are a few takeaways: 1. Unique Recipes and Secret Formulas – KFC’s famous 11 herbs and spices are protected by trade secret laws. This recipe is kept under lock and key, and it’s invaluable to the brand’s identity. 2. The Role of Trademarks – KFC’s “Original Recipe” is iconic, and the company’s claim centers on the consumer confusion that can arise when competitors use similar phrases. This case underscores the need for strong brand identifiers in any business. 3. Guard Your IP Like Your Brand Depends on It – Because it does. From slogans to recipes, protecting unique aspects of your brand can mean the difference between brand distinction and dilution. Whether you’re in law, marketing, or business, KFC’s move is a reminder: When it comes to IP, taking proactive steps today can save you from challenges tomorrow. ??? #TrademarkLaw #TradeSecrets #BrandProtection #KFC #IntellectualProperty #MarketingLaw

One hundred. Not bottles of beer on the wall, though. One hundred brands named. That calls for a bottle of beer or two. Nah, cheepo. To celebrate this orange occasion, I’m going share a thing or two about naming brands. Share, what? 1. The five qualities that make up a great name. (As presented on the JWWS) 2. The seven deal breakers that make up a gauche name. (Never presented before) And excuse the word gauche I needed to alliterate. This class is free. Free, free. As in:?No pitches at the end, no upsells, no down sells, no side sells, no carousels. Just me, being out-of-breath at the notion of naming 100 brands. (Btw, a bigger milestone to naming 100 brands, is selling the names.?But that’s a story for another time.) One thing, though. This class is available only to the members of my list. So if you know anyone who would want to kill time watching me ramble about brand names, you can pass on the link to sign up to my list. Link in the comments. The exact date and time of the class will follow. (You were holding your calendar, I know.?You can put it down now.)

PITZA – Protection as trademark? The Swiss Federal Institute of Intellectual Property (IPI) has registered the word PITZA as a trademark for "pizzas" in class 30, "pizza delivery" in class 39 and "serving of food and drink in restaurants and bars; take-away restaurant services" in class 43, among others. We can only speculate about the reasons for this decision, as registrations are not substantiated. Is this a case of mutilation? The condition for this would be that it is recognized by the relevant public and that it significantly influences the overall impression. Is it sufficient for a Z to be replaced by a T? However, if the decisions of the Federal Administrative Court B-6748/2008 XPERTSELECT and the Federal Administrative Court B-1015/2021 SHAVETTE are considered, this can hardly be the justification, as mutilation was only affirmed in the first case. Is it because there is no connection between the trademark on the one hand and the goods or services on the other? This could perhaps be the case with PIAZZA, but hardly with PITZA. It seems that the mystery will remain unsolved for the time being. ? Pixabay

Food and beverage companies need to safeguard their intellectual property to stay ahead. How? They can do this by securing trademarks for their brand names and logos and patenting unique recipes or packaging designs. Also, Regular monitoring of the market and online platforms helps spot potential infringements early on. By taking these steps, companies can protect their innovations and maintain their competitive edge. #FoodIndustry #IP#BrandSecurity

Anyone for a Ruby Murray? Well, it seems like you need to be careful about what you say... Hospitality operator Dishoom is challenging the option to use the term on its menus and is trying to get an IPO trademark revoked. A Dishoom spokeswoman said: “A third party has a trademark registration for Ruby Murray, and we don’t believe that they have ever used it. There is a principle of ‘use or lose it’ in trademark law, and we have therefore asked the UK IPO to remove the Ruby Murray mark from the register. Dishoom is not seeking to apply to register Ruby Murray in its own name. It wishes to remove the ‘monopoly’ on the use of Ruby Murray so it can be used freely by anyone when referring to curry.” In 2019, Aziz successfully registered Ruby Murray as a food and drinks trademark. The following year, the company director set up Murray Ruby, described by Companies House as “takeaway food shops and mobile food stands”.? Who even knew it was a protected phrase? We help our clients protect their brands and choose brand names for new products/ranges, but when we do so, we always enlist the "Legal Michelle" to hold their hands. Michelle Ward from Indelible IP has been supporting our clients for many years now and is always a sensible, realistic person to have on your side. Simply put, you need a Marketing Michelle AND a Legal Michelle. So, anyone for a Ruby Murray? Now wondering if I will be in trouble for posting this... #trademark #foodservice #foodmarketing #foodindustry

In the food and drink business, how a product looks is a huge part of its brand identity and appeal to customers. The distinctive packaging, bottle design, logos and other visuals are what make your drink or snack instantly recognizable on the store shelf. That's why trademarks are so important for companies in this industry. A trademark protects the unique branding and appearance that you've carefully crafted for your product. It prevents other companies from simply copying your look and tricking customers into buying their version instead of yours. Take whiskey bottles for example. The shape of the glass, the label design, even the cap - these identify your brand and communicate the premium quality consumers expect. If another company could just slap their label on an identical bottle, it would confuse shoppers and undermine your brand's reputation and sales. Trademarks give you exclusive rights over these recognizable product features. Without trademark protection, companies would have no incentive to invest in creating appealing, differentiated branding for their foods and beverages. Trademarks foster innovation and competition by allowing brands to visually stand out on the crowded market shelves. They're essential for established brands and new products alike.

It's Friday, so let's talk about fried chicken. KFC has sued Church's Texas Chicken for trademark infringement, unfair competition and dilution based on Church's use of the phrase "Original Recipe" in an advertisement for its fried chicken. KFC has long used the ORIGINAL RECIPE mark to refer to its fried chicken (made with its secret blend of herbs and spices) and restaurants, and has federal trademark registrations for the ORIGINAL RECIPE mark. Both of KFC's registrations were obtained based on acquired distinctiveness, meaning that ORIGINAL RECIPE was initially considered descriptive and came to be associated with KFC. Interestingly, the examples of KFC's use of ORIGINAL RECIPE in the complaint do not use the TM or (R) symbols. Around September 30, 2024, Church's began promoting its fried chicken on TV, on its website and on social media using the phrase "Our Original Recipe Is Back". The promotional materials featured the Church's name and logo. KFC sent Church's a notice letter on October 24, asserting that Church's conduct created a likelihood of confusion and demanding that Church's stop using "Original Recipe". Church's did not respond (even if they thought the claim lacked merit, Church's should have responded, if for no other reason than to preclude KFC from being able to say that Church's didn't respond). According to the complaint, "Defendant’s use of the ORIGINAL RECIPE? Mark is therefore likely to deceive, confuse and mislead purchasers and prospective purchasers into believing that the goods and services offered under the mark are affiliated with, authorized by, or come from KFC, none of which is the case. Purchasers and prospective purchasers who are disappointed with Defendant’s products and services are likely to attribute their dissatisfaction to KFC. The likelihood of confusion, mistake, and deception resulting from Defendant’s actions is causing irreparable harm to KFC’s reputation and goodwill." But is that really the case? Is Church's using "Original Recipe" as a trademark? Or is this a fair use, with Church's using "Original Recipe" to describe its menu item? The Supreme Court noted (in the KP Permanent Make-Up, Inc. case) that the Lanham Act permits a certain amount of consumer confusion when a term is used fairly--this is the price a mark owner pays for identifying its product with a mark that uses a well-known descriptive phrase. At this point it seems like the parties are playing a game of chicken, waiting to see who will blink first. It may be that the court has to weigh in before anyone blinks. It will be interesting to see how this plays out. What do you think? Is this an infringement or a fair use? #IntellectualProperty #IP #trademarks #trademarkinfringement #fastfood #restaurants #BusinessLaw #LegalInsights #OffitKurman