Trademark Office Issues Tequila Certification Mark Just In Time For National Tequila Day

National Tequila Day is celebrated on Monday, July 24. Tequila is made with the distilled extract of the blue agave plant, which grows in and around the city of Tequila and other parts of the state of Jalisco, Mexico. Although agave has been used for the manufacture of fermented beverages since pre-Columbian times, the ancestor of what we now know as “tequila” was reportedly first made in the 16th century by Spanish conquistadors who had run out of imported brandy (which is why they originally called it “Mezcal Brandy”).… More

America’s First Ice Cream Trademark Infringement Case … Was “FRENCH”

This weekend marks Bastille Day in France and also National Ice Cream Day in the United States, so it’s the perfect time to recount the very first ice cream-related trademark lawsuit in the U.S. (or at least the earliest one available to us): French Brothers Dairy v. Giacin.

The story began in 1842, when Thomas Joseph French of Sussex,… More

Are False Accusations Of Copyright Infringement Defamatory?

Is it defamatory to falsely accuse someone of infringing intellectual property? Last month, the California Court of Appeal, in FilmOn.com v. DoubleVerify, Inc., affirmed the dismissal of a defamation action in which the defendant was accused of falsely labeling the plaintiff as a copyright infringer.

Does that mean you can just go ahead and call anyone you don’t like a copyright infringer,… More

Of Slants, Skins, And Signs: Section 2(a) Prohibition of Disparaging Trademark Registrations Struck Down!

Well, that happened! According to the Supreme Court’s opinion in Matal v. Tam, Section 2(a) of the Lanham Act, which purports to prohibit the registration of marks that “disparage . . . persons,” is unconstitutional.  When we first started blogging on this topic, here, we noted that certain stars were aligning for a constitutional showdown. … More

Celebrity Trademark Watch: Gene Simmons Claims Exclusive Right In Hand Gesture

Earlier this month, KISS guitarist Gene Simmons filed an application with the United States Patent and Trademark Office (“USPTO”) to register the “devil’s horns” hand gesture, which he routinely flashes at rock shows, as a trademark for “entertainment, namely, live performances by a musical artist; personal appearances by a musical artist.”  This bold move brings up a number of interesting questions, ranging from “Does the gesture really function as an indicator of source that points to Simmons?” to “How will he ever enforce it?” to “Can you really claim trademark rights in a hand gesture?”  For a number of reasons,… More

Watch: False Advertising Law for the Generalist In-House Counsel

Advertising can take many forms, including statements about a company’s products on websites and social media platforms. A wrong step can result in serious consequences, including legal challenges from competitors, consumers, the Federal Trade Commission, and other regulatory agencies.

Watch this webinar to learn how you can protect your company against legal challenges based on its advertising practices. You will also learn what options are available if your competitors are making false or misleading statements in their advertisements.… More

Supreme Judicial Court Punts On Executive Defamation Privilege

Last week, everyone in Washington, D.C. was talking about the invocation of “executive privilege,” the ability of a President to withhold information from, for example, an investigation into Russian influence on the U.S. election. Meanwhile, the Massachusetts Supreme Judicial Court (“SJC”) considered, and then punted on, a different kind of executive privilege: the absolute privilege of an executive to defame others without liability.… More

Registration v. Application: A Copyright Circuit Split

Registration is not required for valid copyright ownership, but it is required before you can bring a copyright infringement lawsuit. Section 411(a) of the Copyright Act provides that:

No civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title. In any case,… More

Cava v. Champagne: A Trademark Lawyer’s Guide

Those of you attending the annual International Trademark Association conference in Barcelona may be drinking a glass of Cava right now and wondering: what makes sparkling wine different from regular wine, and what is the real the difference between Cava and Champagne (or, as the great Zapp Brannigan pronounces it, “champagen”)? Those of us stuck at home and not allowed to go to Barcelona – and no,… More

Watch: Protecting Product Configurations, Packaging, and Designs

What In-House Counsel Needs to Know

Product configuration and packaging play an integral part in consumer choice and can often set a particular product apart from its competition on the store shelf. Because companies heavily invest in creating unique product designs and packaging that encourage brand association, business owners should also consider protecting those investments as intellectual property.

Peter SullivanNatasha Reed and Jenevieve Maerker presented a webinar offering guidance for in-house counsel regarding the different types of intellectual property that may protect product configurations and packaging in the United States,… More

A Gem On The Mediterranean – 10 Things To See And Do While Attending The INTA Annual Meeting In Barcelona

Barcelona may be my favorite city in the world.  It is certainly a top contender.  Because one of my dearest friends is a native Barcelonian, I’ve been fortunate enough to have visited multiple times, and I have also had one of the best tour guides you could hope for.  So when I found out that the 2017 International Trademark Association (INTA) Annual Meeting (May 20 -24) was being held in BCN (a common abbreviation for the city and its airport),… More

10 Trademark Cases About Yo Mama

Anna Jarvis led the efforts to establish the first official celebration of Mother’s Day in 1908, during which she honored her own mother, Ann Maria Reeves Jarvis, a Civil War-era social activist. But about a dozen years after that first celebration, Anna Jarvis had become the holiday’s most vocal opponent. Why? Commercialization. The floral and greeting card industries had already taken over her idea,… More

French Court Finds Jeff Koons Appropriated Copyrighted Photograph That “Saved Him Creative Work”

Jeff Koons is a well-known U.S. sculptor. In 2013, one of his “Balloon Dog” sculptures was purchased for $58.4 million dollars, the highest price ever paid at auction for a work by a living artist. Koons is also famous for having faced several copyright infringement lawsuits in the U.S. and other countries.

On March 9, 2017, the Paris District Court determined that Koon’s one meter-tall porcelain sculpture,… More

Foley Hoag Intellectual Property Department Welcomes Marion Cavalier

We are delighted to announce that Marion Cavalier has joined the firm as an associate in our Paris office.  Marion’s practice encompasses patent, trademark, copyright and commercial litigation.  Marion also advises clients on data protection, defamation, privacy and contract. Her experience spans a broad range of industries with particular emphasis on the technology, media and telecommunications sectors.

We sat down with Marion to ask her about her practice and her views on some of the IP issues of the day.… More

Duke Ellington And Copyright: Five Things You Should Know

On April 29, sometimes called “Duke Ellington Day,” we celebrate the life and artistic accomplishments of the great musician and bandleader, Edward Kennedy (“Duke”) Ellington, who was born in 1899 and passed away in 1974. On his 70th birthday, Ellington got a jam session at the Nixon White House and the Presidential Medal of Freedom.  Now, for his 118th birthday,… More