A Tale Of Two Hats: Trademark “Use In Commerce” Expanded In A Potentially Game-Changing Decision

hatsOur readers no doubt understand that trademark use is the basis for trademark protection in the U.S.  But all use is not created equal, and sometimes it’s not so easy to tell whether a trademark is actually used in a manner sufficient to qualify for federal trademark registration.  A recent Federal Circuit decision promises to make this determination a little bit easier.

The U.S.… More

Watch: Social Media for the Generalist In-House Counsel

Joshua Jarvis and David Kluft recently presented a webinar offering guidance on social media issue spotting for in-house legal practitioners and executives, with a focus on intellectual property, publicity rights and advertising.

Social media platforms present countless and varied opportunities for companies looking to connect to consumers and clients in real time. But, like so much else in our connected age, these opportunities come with a host of risks ranging from minor public relations blips to unpleasant regulatory run-ins with government agencies,… More

A Difference With A Distinction: The Second Circuit Upholds Preliminary Injunction In Parallel Imports Case

twIn Abbott Laboratories, et al. v. H&H Wholesale Services, Inc., et al., the United States Court of Appeals for the Second Circuit affirmed a preliminary injunction issued in a trademark case focused on the parallel importation of diabetes test strips.  One defendant had hoped to overturn the injunction order by arguing that its place in the supply chain shielded it from direct liability for consumer confusion. … More

Opportunism Knocks: The (Likely) Futility Of “ZIKA” Trademark Applications

zikaAs an intellectual property attorney, I find the phenomenon of trademark opportunism to be a curious, and sometimes amusing, thing. (I don’t get out much.)  As soon as a distinct word, phrase, sound bite, or concept emerges in popular culture, some folks run straight to their computers and file a trademark application, presumably hoping to capitalize by owning some exclusive right in connection with a hot topic.… More

Hurray For HOLLYWOOD (Florida)! -The Motion Picture Capital’s Distant Cousin

hollywood signI am headed to Hollywood.  As much fun as it would be to report that I am leaving the work-a-day world behind to try and make it in moving pictures, the silver screen will have to wait.  I am actually going to the International Trademark Association (INTA) Leadership Meeting in sunny Hollywood, Florida, which begins on November 15th.  Nestled between Fort Lauderdale and Miami on the Atlantic coast,… More

“I’m With the Band”: Boston Guitarist Can Call Himself “Former Original Member” Without Infringing Trademark

bostonLast week, a federal jury in Boston found that Barry Goudreau, a guitarist who played in an early incarnation of the rock band Boston, did not infringe trademark rights in the band’s name by allowing himself to be identified as a “former original member” of Boston.  The verdict in Scholz v. Goudreau, Case No. 1:13-cv-10951-DJC (D. Mass.), which rejected the trademark claims brought by group founder Tom Scholz,… More

Copyright Office Ditches Paper And Announces Electronic Renewal Requirement For DMCA Designated Agents

copyrightSince the enactment of the Digital Millennium Copyright Act (“DMCA”) in 1998, online service providers wishing to avail themselves of the DMCA’s safe harbors (from liability for copyright infringement) have been required to register the identity and contact information of a designated agent. Designated agents serve as the point of contact for copyright holders who spot infringement online and need to serve a DMCA takedown notice to get the offending content removed.… More

Ninth Circuit Extends Octane Fitness Attorneys’ Fee Analysis To Lanham Act Cases

lawyersIn the 2014 case of Octane Fitness, LLC v. Icon Health & Fitness, Inc. (and a companion case), the Supreme Court articulated a standard for courts to use when deciding whether to award attorneys’ fees in patent cases. As we reported here, Section 285 of the Patent Act authorizes an award of attorneys’ fees to the prevailing party in “exceptional” cases.… More

Defamation Takes A Holiday: Slander And The Salem Witch Trials

witch-hillHypothetical: You go out for a nice stroll one Halloween only to have a neighbor emerge from his house with a pitchfork and accuse you of being a witch in front of the whole village. For the sake of argument, let’s say you are not actually a witch. Can you sue for slander?

For centuries, a civil defamation lawsuit has been available as a remedy —… More

10 Copyright Cases Every Fan Fiction Writer Should Know About

fan-fictionIf you are a Star Trek fan, the name Axanar has almost certainly crossed your lips or your computer screen recently. Axanar is a film (well, at least a very good trailer aspiring to be a film) set in the Star Trek universe, which tells the back story of Garth of Izar, a character who appeared in one episode of the original Star Trek series.… More

Beth Hella Receives National Docketing Association’s First-Ever Lifetime Achievement Award

bethCongratulations to Beth Hella, Senior Trademark Administration Manager at Foley Hoag LLP, who recently received the first ever Lifetime Achievement award presented by the National Docketing Association (NDA).  Beth was honored for her dedication and commitment to the NDA and for her perseverance in the advancement and education of docketing professionals.

Beth served as Treasurer of the NDA for four years before resigning from the Board at the end of 2015 to join the NDA’s Education Committee and initiate the creation the NDA Resource Library,… More

Happy Birthday To Me: An Iconic Song Enters The Public Domain After Copyright Settlement

Birthday chocolate cake with burning candles as a number fifty on brown background

As I turn 50 years old this week, I can’t help but think of the famous Happy Birthday song and the class action that resulted in its entering the public domain earlier this year.  The class action plaintiffs in that case filed a declaratory judgment action in the Central District of California against two music companies that had been enforcing the copyright in Happy Birthday and requiring the payment of royalties in some circumstances where it had been used commercially,… More

Hot News, Shredded Wheat and Wool Underwear: Brandeis On Copyright And Trademark

brandeisOctober 9 marks the 100th anniversary of Louis Brandeis’ first session as a justice of the Supreme Court of the United States (October 9, 1916 was the second Monday in October – in 1917, the Court began meeting on the first Monday).  This occasion is worthy of remembrance not only because of the historical importance of the man himself, but also because Brandeis was the first Jewish jurist (or non-Christian of any creed) to ascend to the high court,… More

District Court Denies Motion To Dismiss In Popcorn App Copyright Fight

imunchiesThis summer, the competition for popcorn popping mobile apps heated up as the creators of “Perfect Popcorn” and “iMunchies” battled over copyright infringement claims. On July 18, 2016, a judge in the Northern District of California denied a motion to dismiss the claims, allowing the question of whether or not these apps offer substantially similar virtual depictions of popcorn to go forward.

Diamond Foods,… More

Of Slants, Skins And Signs: The Supreme Court Grants Certiorari

SlantsWe have been following the course of In re Tam as it has progressed through the PTO and the courts. See our prior posts here, here, here, here and here. To recap, at issue is whether Section 2(a) of the Lanham Act, which prohibits the registration of marks that may disparage persons,… More