Last month, the Supreme Court denied certiorari in Authors Guild v. Google, Inc., the long-running copyright case involving Google’s Google Books project. The high court’s refusal to hear the case leaves in place the Second Circuit’s October 2015 decision in favor of Google and brings to a close this highly publicized and closely watched litigation, more than a decade after it began. The Second Circuit’s opinion, which the Supreme Court has left undisturbed, held that Google Books is protected as fair use, a conclusion considered by many to… More
As the U.S. and Cuba progress towards normalizing trade relations, many U.S. companies are contemplating whether it makes sense to do business in Cuba. While some companies already plan to enter the Cuban market, others have no plans to do so. Regardless of where your company falls on that spectrum, failing to protect your brand in Cuba could create major obstacles down the road, even if you have no immediate plans to… More
Last week, in a departure from the partisan gridlock that has gripped Washington, the House of Representatives joined the Senate in passing a sweeping new statute to protect trade secrets. The legislation, which President Obama strongly supported and is expected to sign within days, creates a new federal civil cause of action for trade secret theft.
The speed with which Congress passed this legislation – entitled the Defend Trade Secrets Act of… More
This week saw developments in the two cases challenging the application of Section 2(a) of the Lanham Act to their registration: In re Tam and Blackhorse v. Pro Football, Inc.
In re Tam
We have discussed In re Tam in prior posts. In December 2015, the en banc Federal Circuit struck down Section 2(a) of the Lanham Act, which prohibits the registration of marks that may disparage persons, institutions, beliefs, or national symbols. The Court held that the provision was facially unconstitutional under the First Amendment… More
Last week we presented a webinar on what the EU trademark reform means for U.S. companies. Watch the recording here:
To download a copy of the slides, click here.
Beyoncé Giselle Knowles-Carter, known to most as simply Beyoncé, and as “Bey” to those who like to pretend they know her, is about as famous as one can be. She transitioned from the acclaimed group “Destiny’s Child” to become one of the biggest pop stars in the world. Number one hits, Grammy Awards, sold-out tours, and even a reasonably successful film career are firmly under her fashionable belt.
As a testament to… More
William Shakespeare breathed his last on April 23rd, 1616, so this April 23rd marks 400 years since his death. It is also, supposedly, his 452nd birthday. Putting aside the oft-silly conspiracy theories and multitudinous alternate spellings of his name, many details of Shakesper’s life are clearly documented in contemporary sources. No one is sure, however, exactly what he was up to in the 1580s. One compelling theory suggests that he spent some part of that decade as a lawyer – or at least working for one. It’s hardly… More
The Food and Drug Administration (FDA) has finalized guidance for industry describing the agency’s evaluation process for proposed proprietary names for drug and biological products. The guidance applies to all prescription and nonprescription drug products, innovator and generic drug products, and biological products. Drug products that may be legally marketed without an approved… More
Last year, I made a terrible mistake. When I published Harry Potter Lawsuits and Where to Find Them on this blog, I pronounced that “Ms. Rowling and her works pop up in court more than any author since Charles Dickens.” I missed someone big. Of course, it was William Shakespeare, who beats them all even when it comes to legal citations.
In Doe v. Backpage.com, the First Circuit affirmed the District of Massachusetts in holding that Section 230 of the Communications Decency Act (CDA) shields from civil liability a website used by third parties to facilitate the sex trafficking of underage girls. If you haven’t had a chance to follow the case, there are three basic takeaways: (1) the immunity provided by Section 230 of the CDA is very broad; (2) the judges are no happier about it than… More
As part of our continuing monitoring of this issue (see articles here, here and here), we bring you the latest chapter in the saga over the registration of THE SLANTS trademark. After the en banc Federal Circuit struck down Section 2(a) as facially unconstitutional, the United States Patent and Trademark Office, rather than withdrawing the objection to the registration, chose to suspend the application pending appeal to the U.S. Supreme Court. This did not sit well with Mr. Tam, who petitioned the Federal Circuit… More
The German carmaker, Porsche AG, which designed the iconic 911 Carrera sports car, owns the European Union and German “CARRERA” word mark, registered for “automobiles” in class 12. How far beyond automobiles does the protection afforded by that registration extend? Pretty far, according to recent outcome of a long running European trademark dispute, which affirmed that Porsche’s trademark protection extends to “complementary” products, and also to dissimilar products if the applicant is seeking to take unfair advantage of Porsche’s… More
Two years ago in March, in honor of National Peanut Month, we recounted the truly epic struggle for the SKIPPY mark between the once-iconic cartoon character and the still-iconic peanut butter brand. The story began nearly 90 years ago and involves a multi-generational dispute between one indefatigable family and a succession of large food companies. The very first decision in this dispute was issued by the US Trademark Office in 1933. The most recent was issued… More
Last month, a U.S. district court in Oregon granted Adidas’ motion for a preliminary injunction against U.S. footwear company Sketchers USA Inc., blocking Sketchers from selling, among other sneakers, a 3-stripe sneaker design that allegedly infringes Adidas’ 3-stripe registered trademark and one of its sneaker designs.
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:
A Time-Out for Offensive Trademarks. According to IP Watchdog, Mary Denison, the Commissioner for Trademarks, has issued an “informal” directive to trademark examiners that they should suspend trademark applications that would potentially violate Section 2(a) of the Lanham Act, on the… More