Charles Dickens And Copyright Law: Five Things You Should Know

One hundred and seventy five years ago, on January 22, 1842, Charles Dickens first set foot in America, specifically in Boston, after a twenty day steamship voyage from Liverpool. Dickens, only a few days shy of his thirtieth birthday, was already an acclaimed author, and was greeted with great adulation. However, the trip was soon ruined by, and was to become best-remembered for, Dickens’ ugly spat with the American press over the issue of international copyright.… More

Trademark Red Tape: Comeuppance For Trademark Con-Artists

January 2017

Happy holidays and welcome to the 2017 New Year edition of Trademark Red Tape, our periodic round-up of trademark news and happenings at the United States Patent & Trademark Office.  Here are the highlights:

  • Fraudulent Trademark Solicitations. Trademark attorneys and their clients alike have been plagued by an increasing number of fraudulent trademark solicitations over the past few years. …
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Trademark Year In Review And What Lies Ahead: The Lanham Act’s New Year’s Resolutions For 2017

2016 is now in the rear view mirror. At the beginning of a new year, we often take a moment to reflect on the past year, while setting goals for the present.  It’s a time to say, “Last year had its ups and downs, but this year I’m going to . . .”  There are so many choices; what will 2017 hold? Between this article’s two authors,… More

The Avant-Garde Nun Who Created The World’s Largest Copyrighted Work Of Visual Art

We are approaching the end of holiday travel season and you have likely been a visitor or had visitors over the past several weeks.  If in your travels you’ve had cause to drive along interstate Route 93 just south of Boston, perhaps you noticed a large gas tank out across Dorchester Bay adorned with what seem like enormous paintbrush strokes in purple,… More

Can “Merry Christmas” Be A Trademark For Christmas Wrapping?

In 1905, the owners of Smith & Kaufman, Inc., a ribbon & silk company in New York, hit upon an idea. Wouldn’t it be great, they thought, if we made a red holiday ribbon for wrapping Christmas presents, with the words “Merrie Christmas” woven into the ribbon at intervals of about two inches in Old English script type?  And wouldn’t it be even better, they thought, if we could stop our competitors from doing the same thing,… More

French Justice In A California Court: Copyright, Picasso And The “Astreinte”

boatThe peoples of France and the United States tend to view things very differently — Jerry Lewis, berets and processed cheese food, to name just a few.  Law sometimes transcends this divide – for example, French and American intellectual property lawyers can communicate based on shared fundamental understandings about copyright, trademarks and patents, even as our cultural differences persist. In other instances, however, a shared understanding of legal concepts by lawyers of different jurisdictions is much more difficult. … More

A Trademark Year In Wine And Beer 2016: Our Holiday Buyer’s Guide To Disputed Beverages

trademark-year-in-wine-and-beerJust in time for the holiday season, we present our third annual Trademark Year in Wine and Beer, a wrap-up  of alcohol-related trademark and trademark-ish disputes dating back to December 2015, when we published our last edition. Our scope includes lawsuits brought in U.S. Courts, actions before the Trademark Trial and Appeal Board (“TTAB”), arbitrations pursuant to the  Uniform Domain Name Dispute Resolution Policy (“UDRP”),… More

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