Legal Updates for Non-Traditional Trademarks



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Course Description

This program was recorded on May 13, 2020

This webcast will review recent updates in U.S. trademark law, including registering non-traditional trademarks like scents, sounds and colors, as well as the protection of so-called scandalous marks. Part of the reason these kinds of trademark registrations are so rare is that they have been difficult to obtain from the USPTO. Trademark applicants seeking to protect non-traditional trademarks have a high hurdle to clear to show that the scent, taste, color, etc. has acquired distinctiveness and functions as a trademark. Similarly, for over 70 years, the Lanham Act has banned the federal registration of any trademark comprised of “immoral, deceptive, or scandalous matter” or matter which may “disparage. . . or bring [persons, institutions, beliefs or national symbols] into contempt or disrepute.” This webinar will discuss the recent changes to the protection available for scandalous and disparaging trademarks.

In addition, the discussion will cover the protection of color trademarks. Businesses increasingly use color as a means to distinguish their goods or services, whether by use on the product itself, on the packaging or in advertising material. Certain colors, however, may have superior utility for products or may have become generic (i.e., to designate particular flavors in the food industry), or inherently unregistrable for other goods (i.e. a red casing for a red ink pen). The webcast will address recent updates with respect to these non-traditional trademarks.

Attorney Jaime Rich ViningJaime Rich Vining
Jaime Rich Vining practices law at the intersection of IP, Internet, and entertainment. Her focus is on trademark and copyright law as it pertains to the corporate world, entertainment, and the digital marketplace. A Florida Bar-certified Intellectual Property attorney, Jaime counsels clients on the acquisition of new trademarks; conducts clearance investigations; files and prosecutes trademark applications in state, federal, and international jurisdictions; renders availability and infringement opinions; provides defense of related proceedings, such as oppositions and cancellations of registrations; files domain name enforcement actions under ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP); and provides legal advice regarding trademarks and related unfair competition issues. She has also acted as an expert witness in a variety of trademark disputes.

Contact Jaime Rich Vining

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  1. Registration and protection of non-traditional trademarks, including:
    1. Scandalous and disparaging trademarks i. Section 2(a) of the Lanham Act ii. The Washington Redskins iii. The Slants iv. FUCT v. The future
    2. Scents i. Requirements for registrability ii. Legal background – Celia Clarke iii. Hasbro and Play-Doh
    3. Colors i. Requirements for registrability ii. Legal background – Qualitex iii. Christian Louboutin v. YSL