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Julia Anne Matheson

Posts by Julia Anne Matheson

N.D. California Straightens Out Competitor’s Use of Infringing Hashtags: #newdevelopments in Using Trademarks as Hashtags

The Northern District of California recently released an order that sheds new light on how courts grapple with the constantly-increasing use of trademarks as hashtags. Align Technology, Inc., provider of the Invisalign teeth-straightening-system, also produces the iTero Element intraoral scanner that allows dentists to obtain three-dimensional scans of a patient’s mouth, teeth, and gums. To

Influencer promo guide: Best practices for drug and device firms

In our “Influencer promo guide: Best practices for drug and device firms”, we offered a list of best practices for medical device and pharmaceutical companies interested in taking advantage of the benefits of social media influencers for advertising their products, while adhering to FDA regulations. How can these companies be mindful of FDA rules while

The Curse of Shoeless Joe Continues: TTAB Finds White Sox Fan Lacked Bona Fide Intent-To-Use

For any baseball fans already preparing to capitalize when their favorite team wins their next World Series game, you may strike out before getting up to bat at the Trademark Trial and Appeal Board (“TTAB”) in the United States Patent and Trademark Office (“USPTO”). In a recent precedential decision, the TTAB found that “a mere

USPTO Proposes new rule requiring foreign trademark applicants to be represented by US licensed attorney

  The United States Patent and Trademark Office (“USPTO”) has recently issued a notice of proposed rulemaking that would require all foreign-domiciled trademark applicants, registrants, and parties to TTAB proceedings to be represented by a US licensed attorney.  The proposed rule is designed to protect the integrity of the US Trademark Register and address the uptick

To ‘Bland’ or Not To Bland? Trademark Implications

Companies are simplifying, or “blanding,” their brands dropping unique fonts, words, and design elements left and right in favor of a pared down, sans-serif font popular in Silicon Valley, but does this drop trademark protections in the process? You’ve seen it in the ads you encounter on your way to work, on television, and probably

Germany: Introduction of Certification Marks

On January 14, 2019 Germany’s Trademark Law Modernization Act (MaMoG) went into effect, amending the German Trademark Law (MarkenG) to implement European Union Trade Marks Directive 2015/2436 (MRL). This Act introduces specific regulations for the registration of certification marks, which are an entirely new type of trademark under the German Trademark Law. Certification marks have

Federal Circuit revives Converse’s Chuck Taylor trademark and infringement claims

In a recent decision that illustrates the relevance of timing in evaluating the question of secondary meaning, the Court of Appeals of the Federal Circuit breathed new life into Converse’s “Chuck Taylor” sneaker design trademark by vacating an earlier ruling by the International Trade Commission (ITC) invalidating protection for that same mark. Background Relying upon

Total Brand Care: How to legally obtain your desired brand

Brands can use trademarks to gain a competitive advantage in today’s crowded marketplace.  An iconic trademark can be one of your biggest assets; a core component of your identity; and a practical solution to prevent others profiting from your success.  But navigating the complexities of trademark law around the world is a challenge for many brands. 

District Court in California recognizes plausible trademark rights over fictional Star Wars board game

(Case analysis: Lucasfilm Ltd. LLC v. Ren Ventures Ltd., N.D. Cal., No. 17-7249, 4/24/18) To assert a successful infringement claim relative to a mark that has arguably never been used as a source identifier for “real world” products, and which has not been actively promoted for nearly 40 years, is a challenge most trademark lawyers