A Brexit Primer for Trademark Owners

Keep Calm 2On June 23, the citizens of the UK voted Yes to the question “Should the UK leave the European Union?” Here are some answers to questions that we are hearing from trademark owners.

Question 1. Is now a good time to panic?

Uncertainty creates stress but we have at least one certainty: from a strictly legal point of view, there will be no immediate impact. There is therefore absolutely no reason to panic.

This vote came as a surprise to many… More

Grapes, Girls and Goddesses: Federal Circuit Affirms MAYARI Trademark Registration For Wine

MayaIn our annual Trademark Year in Wine and Beer, we discussed Oakville Hills Cellar v. Georgallis Holdings LLC, in which the application of Georgallis (doing business as Kissos Wines) to register MAYARI for wine was opposed by Oakville (doing business as Dalla Valle Vineyards), holder of the MAYA mark for wine. To keep things simple, we’ll refer to the parties here as Mayari (the applicant) and Maya (the opposer).

The TTAB ultimately permitted the MAYARI, holding that confusion was unlikely because the parties’ marks were not identical, because… More

Brexit: Potential Consequences For European Union Trademarks

Brexit Direction Sign

Updated June 24, 2016

A few hours ago, citizens of the United Kingdom voted in favor of leaving the European Union. This is a monumental step which historians will analyze in order to understand why and how it became possible. In the meantime, lawyers will have to figure out the consequences, including how to untangle this 60 year-old relationship.

European patents should not be affected by Brexit because the Munich Convention is not a European Union instrument. It currently… More

Objective Reasonableness Can Be Central to Fee-Shifting Analysis in Copyright Cases

GyroIn Kirtsaeng v. John Wiley & Sons, Inc., the Supreme Court clarified the test for awarding attorney’s fees when applying the Copyright Act’s discretionary fee-shifting provision, 17 U.S.C. § 505. The Court held that the objective reasonableness of a losing party’s position should be given “substantial weight”—but not necessarily control—the outcome of a fee petition.  The lower courts had varied considerably in their approach to the discretionary fee-shifting analysis.  Although the regional circuits… More

Eat Your Art Out: Intellectual Property Protection for Food

Mondrian Cake 2Let’s face it, we live in a food-crazed world.  Our current preoccupation with food has less to do with eating it; we also are fascinated with looking at it.  Posting photos of food on Instagram is now a universal pastime.  Food reality shows like Top Chef, Cake Boss, and Chopped are extremely popular and chefs are now considered bona fide celebrities, known internationally for their signature recipes.

Many top chefs today are also known for their artistic food designs… More

Trademark and Copyright Law Blog Co-Editor David Kluft to Speak on Intellectual Property and Social Media Law

MeDavid Kluft, co-editor of the Trademark and Copyright Law Blog and Intellectual Property partner at Foley Hoag LLP, will be speaking at the 19th Annual New England Intellectual Property Law Conference.  The conference, sponsored by Massachusetts Continuing Legal Education, will take place beginning at 12:30pm on June 23, 2016 at the MCLE Conference Center, Ten Winter Place in Boston.  The conference will also be available by live and recorded webcast. Dave’s presentation, entitled “Trademarks, Copyrights and Speech in the Social… More

Eight is Not Enough: Second Circuit Adopts Eleven Factor Nominative Fair Use Test in Certification Mark Case

Security ISCInternational Information Systems Security Certification Consortium (known as ISC2) is a non-profit organization that owns a registered certification mark for the term CISSP® (meaning “Certified Information Systems Professional”).  In 2010, ISC2 sued Security University, a for-profit company that provides training in this field, because Security University described its lead instructor as a “Master CISSP®” or a “CISSP® Master.”  Although these advertisements had disclaimers stating that the Security University classes were “not endorsed, sponsored or delivered by ISC2” and acknowledging ISC2’s ownership of the registered mark, ISC2 complained that the use of… More

Trademark Red Tape: Incoming Fee Increases And Sweeping TTAB Rule Changes

ASDJune 2016

Welcome to Trademark Red Tape, our periodic round-up of trademark news and happenings at the United States Patent & Trademark Office.  Here are the highlights:

Disparaging Marks Still Held in Abeyance. As an update to our last Trademark Red Tape, the USPTO, which has now filed a petition for a writ of certiorari to the Supreme Court in In re Tam with respect to the constitutionality of… More

Jimi Hendrix Portrait Denied Copyright Protection For Lack of Originality

HendrixFrance is often presented as a country which is quite protective of IP owners, especially in the field of trademarks and copyright.‎ However, a recent decision rendered by the Paris District Court in relation to a portrait of Jimi Hendrix clearly goes in the opposite direction.

Gered Mankowitz is an English photographer who is the author of many portraits of pop and rock stars, such as Kate Bush, the Rolling Stones, and Jimi Hendrix. In 2013, Mankowitz saw that his 1967 photograph… More

When Is Internet Speech Protected Petitioning Activity? Federal Court Grants Anti-SLAPP Motion In FIRE CIDER Trademark Suit

Free Fire CiderOn May 12, 2016, the District of Massachusetts held that that an online campaign in support of the cancellation of a registered trademark (FIRE CIDER) was protected petitioning activity, even though the campaign was organized and supported by the trademark owner’s competitors. Because the campaign activity was protected, the Court granted the competitors’ anti-SLAPP special motion to dismiss certain claims.  The case, Shire City Herbals v. Blue, provides insight into the applicability of the Massachusetts anti-SLAPP statute to internet activity.

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Southern District Still Screams For Ice Cream – And Attorneys’ Fees – In Master Softee Trademark Dispute

Mister Softee

Memorial Day weekend is coming, marking the unofficial start of summer.  The Southern District of New York has marked the occasion by entering a judgment for attorneys’ fees and costs against Mister Softee copycat, Master Softee. As you may recall, we provided an update on the Master Softee matter in December 2015, when Judge Laura Taylor Swain issued a default judgment against Dimitrio Tsirkos, including a permanent injunction order, damages, pre-judgment interest and attorneys fees.  In this new order,… More

Brainstorm: FTC Continues Enforcement Trend Against Cognitive Function Claims

LearningRXContinuing its trend of scrutinizing claims touting improved cognitive function, the Federal Trade Commission recently announced a settlement with LearningRx Franchise Corp. (“LFC”), the developer and franchisor of a chain of “LearningRx centers” providing one-on-one cognitive training to consumers.  The FTC’s settlement with LFC comes in the wake of several other high-profile FTC actions involving cognition claims, including a $2 million settlement with Lumos Labs, Inc. (brain training app and video games), a $1.4 million settlement with Brain Research Labs, Inc. (dietary… More

First Circuit Affirms FTC Social Media Order: Jerk.com Users Jerked Around By Material Misrepresentations

JerkIn Fanning v. Federal Trade Commission, the First Circuit affirmed a summary decision of the Federal Trade Commission (FTC), which found that Jerk LLC, the operator of Jerk.com, materially misrepresented both the source of its content and the nature of its membership benefits, in violation of the Federal Trade Commission Act. However, the Court also curtailed certain monitoring provisions ordered by the FTC, finding that they were not reasonably related to the violations.

“Welcome to Jerk”

Jerk.com was started in 2009… More

The Internet Archive Wayback Machine: A Useful IP Litigation Tool, But Is It Admissible?

waybackThe Internet Archive’s Wayback Machine archives copies of websites every few weeks or months, going back to 1996. The Wayback Machine currently has almost 500 billion archived webpages.  By entering a website into the Wayback Machine, a user can see what archived copies of the website are available and then view those historical copies. For example, this link brings you to a copy of the Trademark & Copyright Law blog as it existed on April 28, 2010, shortly after its founding. … More

Trademarks and Gators: 10 Tips to Survive and Thrive at the INTA Annual Meeting in Orlando

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It’s that time of the year again, when thousands of trademark professionals from around the globe converge to share legal developments and best practices, develop professional relationships, and enjoy the sights and sounds of a new city.  This year’s International Trademark Association (INTA) Annual Meeting is in sunny Orlando, Florida, and it’s quickly approaching.

While there are many trademark-focused bar and industry organizations that offer periodic meetings around the globe, certainly nothing approaches the INTA Annual Meeting in terms… More