David Cinque, Special Counsel – Kalus Kenny Intelex, Melbourne, Australia

Jessica Bell, Associate – Kalus Kenny Intelex, Melbourne, Australia

When it comes to trade mark protection and registrability, being a reputable market-leading brand is not enough to guarantee either the registration of a mark, or a successful opposition to the registration of a competing mark.  Two recent decisions of the Australian Trade Marks Office (ATMO) highlight that the long-standing reputation of an established brand (and indeed a conceptually similar mark) is not enough for an opposition to succeed. (more…)

For many lawyers practicing outside the United States, intellectual property protection and risk are most often associated with patents, trademarks and copyrights. Trade secrets are frequently treated as the forgotten stepchild—associated with employment law and contracts rather than as an independent body of law. But since the passage of the Federal Defend Trade Secrets Act (DTSA) in 2016, trade secret issues and disputes have steadily increased, and are now increasingly impacting both foreign companies doing business in the U.S. and domestic companies doing business abroad.

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After more than a hundred years of settled U.S. trademark policy, an interesting problem has developed for the United States Patent and Trademark Office (USPTO). How to square the U.S. Supreme Court’s recent decisions striking down parts of the federal Lanham Act with the USPTO’s historical rejection of immoral, scandalous, or disparaging trademarks?  Whether by coincidence or not, the timing is also interesting.  “The coming rush to register such trademarks—and the Government’s immediate powerlessness to say no”[1] is coming at a time when civility in our public discourse is at a low ebb. (more…)

By Dan H. Bliss

Suppose you want to register a trademark that identifies a source of goods/services for your business. What if the trademark on the specimen of use has punctuation that is different from the drawing of the trademark in the trademark application? Does the punctuation in the trademark specimen of use have to match the trademark drawing exactly? The answer is NO! if the trademark drawing is a “substantially exact representation” of the trademark specimen.

Section 1 of the Trademark Act, 15 U.S.C. § 1051(a)(1), (2), requires that every use-based trademark application must include a drawing of the applied-for mark and a specimen, showing actual use of the mark in commerce. see Trademark Rule 2.51, 37 C.F.R. § 2.51 (drawing requirement); Trademark Rule 2.56(a), 37 C.F.R. § 2.56(a) (“An application under section 1(a) of the Act … must include one specimen per class showing the mark as actually used in commerce on or in connection with the goods or services identified.”). “[T]he drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services.” Trademark Rule 2.51(a), 37 C.F.R. § 2.51(a). The “drawing depicts the mark sought to be registered.” Trademark Rule 2.52, 37 C.F.R. § 2.52. Failure to comply with these requirements warrants refusal of the application. See, e.g., In re Guitar Straps Online, LLC, Serial No. 85047191, 2012 TTAB LEXIS 287, at *21-22 (TTAB 2012) (affirming refusal where drawing was not a substantially exact representation of the mark as used in commerce); In re Thomas White Int’l, Ltd., Serial No. 77080379, 2013 TTAB LEXIS 8, at *17 (TTAB 2013) (affirming refusal where specimen was unacceptable to support registration of the mark for the identified goods).

Can a difference in the punctuation of your trademark use be different from the trademark drawing in the application to be refused registration? In the recent trademark application of In re C-Sharpe Co., LLC, Serial No. 98269432 (Decided: May 29, 2025, T.T.A.B), C-Sharpe Co., LLC (“C-Sharpe”) filed a use-based trademark application for registration of the mark C SHARPE, in standard characters. In the trademark application, the trademark drawing shows the mark as C SHARPE, in standard characters, with a space between the letter “C” and the word “SHARPE”. C-Sharpe submitted a specimen of use bearing the trademark with punctuation of a forward slash “/” such that the trademark was “C/SHARPE”. The Examining Attorney refused registration under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1127, finding the trademark on the specimen does not match the trademark shown in the drawing of the trademark application. After a final refusal, C-Sharpe appealed.

The Board found that the drawing must be a “substantially exact representation” of the mark in the specimen. “[M]inor alterations” that do not create a new and different mark with a different commercial impression are acceptable. In re MN Apparel LLC, Serial No. 87876633, 2021 TTAB LEXIS 162, at *10 (TTAB 2021) (quoting In re Schecter Bros. Modular Corp., 1974 TTAB LEXIS 84, at *2-3 (TTAB 1974)). The Board determined that the only difference between the marks in the trademark drawing and specimen was a forward slash “/” in place of a blank space “ “. The Board acknowledged that, in some situations, adding punctuation can alter the meaning of a mark. For example, the Board cited to in the above Guitar Straps Online case, in which adding a question mark changed the meaning of the words “Got Straps” from a positive statement to a question and therefore altered the meaning of the mark.

In the In re C-Sharpe Co., LLC appeal, the Board determined that the forward slash was punctuation that did not alter the meaning or commercial impression of the mark as a whole. The Board held that the trademark application drawing and the trademark in the specimen created substantially the same commercial impression. The Board determined that “‘Punctuation, such as quotation marks, hyphens, periods, commas, and exclamation marks, generally does not significantly alter the commercial impression of the mark.’ TRADEMARK MANUAL OF EXAMINING PROCEDURE (T.M.E.P.) § 807.14(c) (Oct. 2018).” Peterson v. Awshucks SC, LLC, 2020 TTAB LEXIS 520, at *51 (T.T.A.B. 2020). The Board held that the addition of a forward slash in the trademark specimen does not add distinctive, source-identifying content to the mark and the mark creates substantially the same commercial impression with either a blank space or a forward slash between the two

literal elements of the mark. Thus, the Board reversed the refusal of the Examining Attorney to register the mark.

Trademark use-based trademark applications must include a drawing of the applied-for mark and a specimen, showing actual use of the mark in commerce. The trademark in the specimen and the application drawing should be a substantially exact match. If there is a difference in punctuation between the application drawing and specimen of use, the U.S. Patent and Trademark Office may accept your specimen of use if the punctuation does not alter the meaning of the trademark or materially alter the commercial impression created by the trademark. As a practice tip, you should avoid the use of punctuation in a trademark such that the application drawing and specimen of use will be an exact match and be accepted by the U.S. Patent and Trademark Office.

Fanatics, LLC v FanFirm Pty Ltd [2025] FCAFC 87

Jessica Bell, Associate – Kalus Kenny Intelex, Melbourne, Australia.

The Full Federal Court of Australia has passed judgment on a clash between local sports merchandiser, FanFirm Pty Limited, and a global opponent, Fanatics, LLC in a case about when the line between trade mark co-existence and infringement should be drawn.

The Players

Home Team: FanFirm Pty Ltd (FanFirm) – an Australian company operating since 1997 that specialises in arranges sports tours and selling related merchandise.

Away Team: Fanatics, LLC (Fanatics) – a major U.S based online retailer of officially licensed sports merchandise and apparel, selling through multiple via e-commerce platforms. Fanatics’ long list of officially licensed partnerships includes the NBA, F1, NFL and NASCAR.

The Trade Marks

This case concerns two of FanFirm’s registered trade marks. One is the word mark FANATICS and the other is the below device mark (the FanFirm Marks).

The FanFirm Marks were originally registered in April 2008 under various trad mark classes, which included class 25 for clothing and other apparel. In 2018, FanFirm extended the registration of these marks to include class 35, which broadly relates to the use of marks in the provision of retail services.

Fanatics, in the meantime, registered several marks in Australia between 2008 and 2017, such as the device mark below and the word mark FANATICS, also in classes 25 and 35.

The Dispute

Despite both holding marks containing the word FANATICS, FanFirm and Fanatics have largely coexisted without much conflict, save for some trade mark oppositions over the years which were ultimately withdrawn.

During this time, Fanatics had focused primarily on selling merchandise related to US and European-based sporting leagues and teams. FanFirm, in contrast, maintained a narrow focus on Australian leagues and teams.

However, in 2020, Fanatics began developing a stronger profile in the Australian market and expanded its partnerships to include local Australian brands and leagues, such as Rebel Sport and the AFL, which led FanFirm to commence proceedings for the infringement of the FanFirm Marks.

In response to FanFirm’s claims, Fanatics argued that the FanFirm marks should be removed from the register on the basis that they were likely to deceive or cause confusion. In particular, that consumers would be caused to wonder that FanFirm’s products are made by or somehow affiliated with Fanatics.

Half Time: The Primary Judgment

In July 2024 the primary judge of the Federal Court found that the two companies were indeed trade rivals and both, at their heart, focused on the sale and supply of sports merchandise to sports fans.

The Court held that FanFirm had priority with respect to FANATICS, due to its earlier use of the word mark in Australia in both the apparel (class 25) and retail services (class 35) and as such, Fanatics had infringed the FanFirm Marks.

The primary judge also rejected Fanatics’ arguments and dismissed its cross claim that the FanFirm marks should be removed from the Australian register.

In addition, it was held that Fanatics’ use of FANATICS did not support its class 35 registration for retail services. Merely placing FANATICS on its products was insufficient to demonstrate use of the mark with respect to retail services and so the court ordered that class 25 be removed from Fanatics’ trade mark registrations.

Fanatics appealed this decision to the Full Court of the Federal Court of Australia.

Full Time: The Appeal

In July 2025, the Full Court of the Federal Court dismissed Fanatics’ appeal. The Federal Court agreed with the primary judgment that merely applying a mark to products does not constitute use under class 35. Rather, the mark must operate as an identifying factor as to the provider or source of the retail service.

The Full Federal Court also agreed with the prior decision that FanFirm was the earlier user of FANATICS in Australia and therefore, FanFirm could not be infringing Fanatics’ trade mark. Notably, Fanatics was unable to demonstrate honest concurrent use of the mark, nor a good faith defence on the basis that the company was using its own name. This is because Fanatics did not, in fact, act in good faith – it was aware of FanFirm’s longstanding use in Australia at the time of registering its marks and was unable to provide sufficient evidence of honest use.

Extra Time?

A further appeal is unlikely, as from a decision of the Full Federal Court requires special leave from the High Court to do appeal.

Final Scoreboard: Key Takeaways

This decision is a stark reminder that even global brands are not given a sure bet with respect to a particular mark or component of their branding in Australia. Where there is use of a mark predating the arrival of an international company in Australia, that earlier use is the ticket to ownership and will be granted priority where there are competing registrations.

Fanatics’ loss of its class 35 registration demonstrates the importance of the actual use of a mark in Australia – where the use in question does not sufficiently encapsulate the category under which the mark is registered, this could be an avenue through which registration can be lost or opposed. This also demonstrates the importance of accurate and detailed record-keeping with respect to the use of your marks, so as to be able to prove that your use predates that of any potential opponents if the question was to arise.

Missed Anthropic Perspectives & Mixed AI Meta-Phors Cloud Copyright Law

By James Flynn & Ariana Tagavi,* Epstein Becker Green

The evolution of generative artificial intelligence has prompted courts in two highly-publicized recent federal district court decisions to apply copyright law’s doctrine of fair use to the “training” and output of generative AI systems. We will discuss those two cases—Kadrey v. Meta Platforms, Inc. and Bartz v. Anthropic PBC—in further detail below to illustrate the evolving legal issues surrounding this emerging technology.  In addition to addressing AI-focused issues, these rulings revisit, and seem to reinterpret, copyright’s fair use doctrine in a manner displaying two shortcomings to our way of thinking: (more…)

By Marie Lussier of Fogler, Rubinoff LLP and Celia Ohayon

Since the start of the year, Canadian consumers and businesses have rallied behind the “Elbows Up!” movement and are looking to “buy Canadian”. Homegrown goods are in high demand, and origin claims like “Made in Canada” and “Product of Canada” are getting more attention than ever. These claims, however, are not just feel-good slogans. They are legal statements and their misuse can lead to penalties, regulatory action, and a loss of consumer trust. (more…)

By Dan Bliss of Howard & Howard

Suppose that you want to register your trademark that is in a non-English language on goods or services for your business in the United States. Will your non-English language trademark need to be translated to English to determine its registrability? If so, can your English translation trademark be refused registration with the U.S. Patent and Trademark Office? The answer is YES! if the non-English language trademark is translated into English under the doctrine of foreign equivalents and found, for example, generic or merely descriptive when applied to the goods or services. (more…)

Authors: James Johnston, Samantha G. Rothaus, Jordan M. Thompson and Howard R. Weingrad.

SAG-AFTRA and the Joint Policy Committee (JPC) have reached agreement on a new Commercials Contract, which is now officially in effect. Notably, the deal was reached without a strike — a rare outcome in recent entertainment-related collective bargaining where disputes, particularly over artificial intelligence (AI), have often led to stalled negotiations and significant production disruptions. A summary of the most notable updates is outlined below. (more…)

By Gaurav Bhalla of Ahlawat & Associates

The Bombay High Court recently affirmed the order of the Registrar of Trade Marks whereby TikTok’s application for declaration of its mark as well-known in India was disallowed. Interestingly, this decision (by the Bombay High Court) was not on merits but rather had a heavy influence of sovereignty and integrity of India, its defence and public order. This judgment might serve a message to trademark owners of global digital products to be cautious of the manner of operating their products in India.

TikTok was launched in India in 2017 and became an instant hit with its unique algorithm which offered tailored and engaging short-form content to users. TikTok also obtained a trademark registration further strengthening its trademark rights in India. Subsequently, it filed an application for declaration of its mark as well-known as per the procedure laid down under the Trade Marks Rules, 2017. Interestingly, while the application (for declaration of the mark as well-known) was being examined, TikTok was banned in India (in 2020) citing national security concerns (owing to allegations of data privacy owing to its servers located outside India, circulation of inappropriate content, etc.).

The Registrar of Trade Marks, while adjudicating the application (for declaration of the mark as well-known) declined to grant ‘well-known’ status to the mark TikTok with the rationale that a brand (the product under which is currently prohibited in India) did not align with the criteria for such recognition.

TikTok subsequently knocked the doors of the Bombay High Court by filing an appeal against the order of the Trade Marks registry. TikTok argued that the Registrar’s decision overlooked extensive evidence of its global recognition and popularity. They submitted that the matter be reconsidered with a fresh perspective, and that the ban in India should not negatively affect the brand’s strengthening of its trademark rights.

The primarily question before the Court was whether a trademark of a banned product (mobile application) could qualify as ‘well-known’? The Court referred to Section 11(6) of the Indian Trade Marks Act and mentioned that while the provision lists out some aspects which could be considered while analyzing whether or not a mark is well-known or not, the list under the provision is illustrative and non-exhaustive. The Court also expressly observed that Section 11(6) gives power to the Registrar to take into consideration any fact that he considers relevant for determining a trade mark as a well-known trade mark.

The Court finally observed that “The reasons why the application of the petitioner bearing the trade mark TikTok has been banned pertain to the sovereignty and integrity of India, its Defence and Public Order. These are serious matters, which cannot be ignored and therefore, it is found that the respondent did take into consideration relevant factors while passing the impugned order.” Accordingly, the Court upheld the order of the Trade Marks registry and concluded that TikTok couldn’t be recognized as a well-known mark in India.

It remains to be seen whether TikTok will file an appeal against this judgment. This is one of the rare scenarios where the Court instead of considering the evidence of use of the mark, it ventured into the expansive scope of Section 11(6) and relied upon a prevailing factual scenario to arrive at its conclusion. This judgment has opened a pandora’s box which might lead to many such approaches in the future (where the Trade Marks registry might not keep itself confined to the indicative factors laid down in the statutory provision).