October 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
Category Archives: Trademark
I am excited to be traveling to Norway next week to attend my first conference of the Pharmaceutical Trade Marks Group in Oslo. Not having been to PTMG before, I can’t offer much insight on the conference, but since I lived in Oslo for a year many years ago, I do have a bit to say about the host city. In the spirit of a smorgasbord,… More
This post first appeared in Law360 as “10 Considerations When Advertising On Social Media,” published on September 21, 2016.
Most modern advertising campaigns include social media components. In fact, it is not uncommon today to see products advertised exclusively on social media. For the most part, the same rules that govern traditional advertising also govern commercial speech on social media.… More
The Washington Redskins Ask The Supreme Court To Block Fourth Circuit From Participation In Important Trademark Cases
Another Labor Day is behind us, kids are back to school, and fall has unofficially arrived (it will become official on the September 22nd equinox). The autumn leaves bring with them two major opening days. One is already behind us, as the NFL literally kicked off its season on September 8 with a matchup between the Carolina Panthers (20) and the Denver Broncos (21).… More
Just in time for the Season 3 premiere, let’s take a look back at Empire’s year in IP litigation.
Like the fictional Lyon family, which is constantly beset by threats from Feds, old criminal connections, and music business competitors, their show Empire finds itself a regular target for infringement claims. As with any successful show (or family), many people want to claim credit and their own slice of a quite lucrative pie. … More
I am in New York City for the Intellectual Property Owners Association’s (“IPO”) Annual Meeting. I have been to the Annual Meeting before in other cities and had a great time, but was thrilled when I heard that it was going to be in NYC in 2016. Even though I live in Boston, I love New York and visit often. There are so many iconic things to see in New York,… More
Reprinted with permission from the August 25, 2016 edition of the New York Law Journal© 2016 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited. ALMReprints.com – 877-257-3382 – firstname.lastname@example.org.
It is no secret that First Lady Michelle Obama is a huge fan of fashion designers with Cuban roots.… More
August 25, 2016 marks the 100th birthday of the National Park Service, which runs the nation’s 413 national parks. Although I am not a particularly outdoorsy person, my relatives are, so here we are on summer vacation in Acadia National Park in Maine. I must admit that it is really beautiful here, and the mosquitoes have not devoured me yet. As a trademark lawyer, however, I can’t help but be reminded of what has become one of the most controversial trademark disputes of all time –… More
If you are traveling to London in August (as I am right now), you don’t have to go far before you start soaking in this great city’s contribution to trademark law. In fact, the very first thing many tourists encounter when they arrive in London – the Paddington Station taxi stand – had a significant impact on U.S. trademark jurisprudence over a hundred years before the Lanham Act.… More
Just this month, two disputes over the trademark rights to beauty pageant names were resolved, pending appeal. In World Pageants LLC v. Miss G-String International LLC, the Trademark Trial and Appeal Board (“TTAB”) dismissed an opposition to the registration of MISS G-STRING INTERNATIONAL because the opposer’s mark (MISS NUDE INTERNATIONAL) just wasn’t similar enough to cause confusion. Meanwhile, in Organizacion Miss America Latina v.… More
Trademarks, the core legal protection for the names of companies and their products and services, are powerful and potentially timeless intellectual property rights, but are also frequently misunderstood by attorneys and laypersons alike. In-house attorneys in particular are likely to encounter trademark issues on a day-to-day basis,… More
Trademark and Copyright Law Blog author Catherine Muyl, alongside fellow Foley Hoag attorneys Christina G. Hioureas and Mélida N. Hodgson, have released a new publication discussing the potential legal implications arising from Brexit, including the impact on patents, trademarks and copyrights. You can access a free copy here.
Other Brexit-related posts appearing on this blog include:
It has been about a year since we published Harry Potter Lawsuits and Where to Find Them, my attempt at a comprehensive review of Harry Potter-related litigation. Why update the article now? Two reasons. First: The long-awaited book version of Harry Potter and the Cursed Child hits the shelves on July 31, 2016.… More
On July 5, 2016, the European General Court rendered an interesting decision illustrating the broad protection enjoyed by those trademarks with “a reputation in the EU.” The full text of the decision is available in English here and in French here.
The case involved a Singapore company called Future Enterprises, which filed an EU trademark for MACCOFFEE on October 13, 2008 for a wide variety of food products and beverages in classes 29,… More
Today’s example of unintentional sexism comes to us from Section 2(c) of the Lanham Act. On its face, the language of the statute assumes that someone other than Hillary will win the 2016 presidential election – and it won’t be Jill Stein. It could be Donald Trump, Bernie Sanders, Gary Johnson, or your dad, but it’ll be someone male.
Section 2 of the Lanham Act,… More
This year marks the fiftieth anniversary of the premiere of the original series of Star Trek, which first aired on NBC in September 1966. On July 22, this milestone will be marked in earnest when Paramount Pictures releases the new film, Star Trek Beyond (which sadly includes the final Chekovian performance by the recently-departed Anton Yelchin).… More
Regular readers of the Trademark and Copyright Law Blog and our Trademark Red Tape™ column may recall our previous report on a pilot study by the United States Patent & Trademark Office (PTO) about post-registration proof of use. Under current PTO practice, a specimen demonstrating use of a mark on a single good or service within a class is sufficient to maintain registration for an entire class,… More
Trademark and Copyright Law Blog author Catherine Muyl was interviewed by Andrew Chung of Reuters yesterday about the impact of Brexit on European Patents and Trademarks. You can find a link to the story here. Catherine’s blog posts about the implications of Brexit for trademark owners are available here and here.… More
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.… More
In 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,… More
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.… More
Let’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,… More
Trademark and Copyright Law Blog Co-Editor David Kluft to Speak on Intellectual Property and Social Media Law
David 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. … More
Eight is Not Enough: Second Circuit Adopts Eleven Factor Nominative Fair Use Test in Certification Mark Case
International 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,… More
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 Section 2(a) of the Lanham Act,…
When Is Internet Speech Protected Petitioning Activity? Federal Court Grants Anti-SLAPP Motion In FIRE CIDER Trademark Suit
On 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.… More
Southern District Still Screams For Ice Cream – And Attorneys’ Fees – In Master Softee Trademark Dispute
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,… More
The 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 &… More
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,… More
For the last two years, we have published the Trademark Year in Wine and Beer, a catalogue of each year’s trademark disputes in the alcoholic beverage industry. That is why we were extra excited on April 21, 2016 when the California Secretary of State announced the release of nearly 4,000 digitized trademark applications filed between 1861 and 1900.… 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 offer products or services in Cuba.… 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
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.… 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.… 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 application are excluded (e.g., OTC drugs legally marketed under a tentative or final monograph). … 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,… 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,… More
Skippy Still Hates Peanut Butter: TTAB Denies Petition To Cancel 1947 Trademark Registration . . . Again
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. … 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:
Three-dimensional trademarks have given rise to some interesting European Community decisions in the last several months (see, for example, our comments on the Kit Kat and Lego decisions). A decision rendered last week by the General Court, concerning the Coca-Cola bottle shape, confirms that it is a real challenge to obtain registration for these trademarks.
In 2002, the Coca-Cola Company filed a Community trademark application to protect its well-known “contour glass bottle with fluting.” The trademark was accepted by the Office for Harmonization in the Internal Market (OHIM) on the basis of its inherent distinctiveness.… More
Celebrity Trademark Watch: Gift Bag Promoter Not Likely to Thank the Academy for Oscars Trademark Lawsuit
Celebrated film actors have it tough. After all, only two men and two women can take home a “Best” or “Best Supporting” acting Oscar each year. The lucky winners of 2016 will be announced this coming Sunday, February 28, during the 88th awards ceremony presented by the Academy of Motion Picture Arts and Sciences, commonly referred to as the Academy. The Academy Awards are the culmination of a jam-packed film awards season that includes the Golden Globes,… More
Justice Scalia on Trademark and Copyright: Dastar, Penguin-Shaped Cocktail Shakers and “Guilt by Resemblance”
When we decided to mark the passing of Justice Antonin Scalia by recounting a few of his copyright and trademark opinions, we were somewhat surprised to discover that there really hadn’t been that many. In fact, we located only seven matters in which Justice Scalia contributed a written opinion on a substantive issue of trademark or copyright law, and only four were majority opinions. Here they are,… More
Designers like Alexander Wang, Rebecca Minkoff, and Michael Kors are all gearing up to premier their 2016 fall/winter collections this month during New York Fashion Week. Fashion Week draws more than 230,000 attendees each year to over 500 runway shows and events in New York City. The economic impact of this biannual event is estimated to be close to $900 million.… More
Around this time last year, I started worrying about what would happen if someone at a Super Bowl party asked me to explain an NFL-related lawsuit, particularly one of those IP-ish lawsuits that I’m supposed to know about. So I put together the first Sue-per Bowl Shuffle, a guide to the year’s gridiron disputes over trademarks, copyright, the right of publicity and other matters with a First Amendment flavor.… More
Celebrity Trademark Watch: Who Owns Marilyn Monroe’s Image? – Right of Publicity vs. Trademark Rights
In her posthumously published autobiography, My Story, screen legend Marilyn Monroe wrote: “I knew I belonged to the public and to the world, not because I was talented or even beautiful but because I had never belonged to anything or anyone else.” There is something eerily prophetic about this quote, given how Ms. Monroe’s fame endures to this day, seemingly undiminished over time. One can only speculate,… More
Haven’t seen the new Star Wars movie yet? The pop culture zeitgeist recommends that you binge-watch all six of the prior Star Wars movies before going to see Episode VII, The Force Awakens and, according to the Washington Post, there is some controversy about the proper binge-watching order. Should you watch them in narrative order (I through VI) or in film release date order (IV-VI and then I-III)? … More
Trademark and Copyright Law Blog Welcomes Natasha Reed as Author and Counsel in Foley Hoag’s New York Practice
We are delighted to welcome Natasha Reed as counsel in Foley Hoag’s Intellectual Property Department and — more importantly for present purposes — as our newest blogger. She’ll join Peter Sullivan in our New York City Office and on the author column of the blog.
Natasha has helped owners of some of the world’s most recognized brands in the luxury goods,… More
In September, we discussed In re Tam and the potential for a showdown over the constitutionality of Section 2(a) of the Lanham Act. At that time, a panel of the Federal Circuit had recently upheld the PTO’s refusal to register the mark THE SLANTS for a music group, finding that the name was disparaging to persons of Asian descent. … More
“Be creative!” is an important piece of advice which you often hear from European trademark lawyers. Today, more than ever, this recommendation should be taken seriously. The reason is very simple: the Community trademark office is increasingly stringent towards marks that consist of verbal messages. A recent case provides a good example:
A French company, Intervog, is the owner of two figurative community trademarks, … More
It is often said Christmas is creeping ever-backwards, each year striving to begin its domination of our collective consciousness and consumer dollars at an earlier date. In the realm of litigation, Christmas creep manifests itself in part in the Yule-themed disputes that can occur at any time of the year, particularly in the areas of intellectual property and free speech. In order to get the Trademark and Copyright Law Blog into the holiday spirit,… More
The story begins in the UK in 1935, when a worker at Rowntree’s York factory put an idea in the suggestion box for a snack that “a man could take to work in his pack.” This idea led to the famous four-finger Kit Kat chocolate bar and, although Rowntree was acquired by Nestlé in 1988, the shape has remained almost entirely unchanged since 1935. Only its size has been altered slightly.… More
For some of us who “summered” on the sweltering streets of New York City as children, the sound of the Mister Softee jingle triggers a Pavlovian response for that sweet, soft-serve ice cream. It was the perfect antidote for those hot, humid summer days. Reviewing Mister Softee, Inc. v. Tsirkos, No. 14 CV 1975 (E.D.N.Y. Nov. 23, 2015),… More
Just in time for the holiday season, we present our second annual Trademark Year in Wine and Beer. Whether you are planning a holiday party or just having some friends over, you are probably in the market for some liquid holiday cheer. Sure, you could make your beverage purchases based only on taste or price, but instead why not mix it up this year and pick a drink that was the subject of a recent notable trademark dispute?… More
After the terrorist attack on Charlie Hebdo in January 2015, the French Trademark Office received so many applications for “JE SUIS CHARLIE” that the Office issued a statement in which it warned that it would not register any of these marks. The reason given at that time by the Office was that, because of the widespread use of the slogan, it lacked distinctiveness.
For the past few years, the Trademark and Copyright Law Blog has marked Thanksgiving with a note about the history of turkey trademarks. Last year, we discussed the ownership of GOBBLE GOBBLE, and before that we told you why you can’t buy BAKED TAM anymore. This year, our subject is the TURKEY STICK.
Hickory Farms was founded in 1951,… More
Just as it is important for start-up companies to be mindful of early-stage trademark and copyright protection strategies (see our guides entitled “Trademark Strategies for Start-Up Companies” and “Copyright Strategies for Start-Up Companies”), savvy start-up founders will be thinking about domain name acquisition and related issues right at the beginning.
These days, it is essential for a start-up company to have at least a basic web presence,… More
What if were to tell you that I jointly authored this article with a colleague, but that I’m not going to give her any credit or attribution because I don’t feel like it? Can she sue me for copyright infringement? No, because we are joint authors, so I have as much a right to publish this article as she does. If we lived in Europe, my colleague might have relied on her inherent right of attribution,… More
In 1897, the Boston Athletic Association (BAA) first organized the Boston Marathon and has been running the event ever since. The world famous race has been held on the third Monday of April every year since 1969, and it is the only major Marathon to be held (and internationally broadcast) on a Monday. If you live in Boston, “Marathon Monday” means that you might get the day off,… More
Are we heading for a constitutional showdown over Section 2(a) of the Lanham Act? Will the Supreme Court strike down this prohibition on disparaging marks as an abridgement of First Amendment rights? It is certainly beginning to look like a distinct possibility. Two developments lead me to this conclusion.
Disparaging Marks and Spending Power
The first development arises from two trademark cases that are now on appeal,… More
Just about one hundred years ago, Archibald Query of Somerville, Massachusetts invented the first commercial marshmallow cream, which he pedaled door-to-door in Union Square. Around 1917, he sold the recipe for $500 to two candy makers in Lynn who had just returned from World War I, and their company (Durkee-Mower) still makes Marshmallow Fluff today. In 2006, Union Square boosters began celebrating Query’s achievement with the Fluff Festival,… More
Imagine, for a moment, a successful software company, Agave, that owns the trademark PHOTOCHOPS for a popular image-editing program. Being a diligent trademark owner, Agave registered the trademark PHOTOCHOPS in 2005, right when the original PHOTOCHOPS launched, in connection with “downloadable computer programs for creating and manipulating graphic images on a computer” in International Class 9. Over the years, the PHOTOCHOPS platform slowly shifts from downloadable software to a pure software-as-a-service (SaaS) platform,… More
In its recent decision in Arborjet, Inc. v. Rainbow Treecare Scientific Advancements, Inc., a case involving claims for breach of contract and trademark infringement, the U.S. Court of Appeals for the First Circuit affirmed a preliminary injunction based upon the contract claims, but vacated the portion of the order requiring trademark attribution. In an opinion authored by retired Supreme Court Justice David Souter,… More
Consider this: You are shopping online and you type in the name of a brand of wristwatch. Perhaps you wanted to purchase that exact brand of watch, or perhaps you were looking for a selection of watches that included the brand but also watches similar to it. You click onto a retailer and type in the brand, and you receive “results” for your search. In the list of results there appears other watch brands,… More
Most innovative start-up companies appreciate that a sound patent strategy is critical to success in the marketplace, and in making the company attractive to investors and future acquirers. But they overlook the importance of having a trademark strategy right out of the gate. Trademarks are an essential part of any successful company’s branding strategy. In addition, there are a number of reasons why an early investment in trademark strategy can have big payoffs —… More
On July 31, 2015, Harry Potter author J.K. Rowling celebrates her 50th birthday, according to muggle sources. The enormous success of Rowling’s literary creation and its associated multimedia empire has spawned countless jealousies, countless imitators, countless parodists and countless pirates. The franchise has kept dozens if not hundreds of lawyers busy with precedent-setting copyright cases, trademark disputes, First Amendment battles over religious expression,… More
The United States has taken several recent steps towards normalizing its ties with Cuba and, just yesterday, the two countries re-opened embassies in each other’s capitals for the first time since 1961. Despite these developments, one thing that remains largely unchanged for now is the Cuban embargo. Enforced by the Department of Treasury’s Office of Foreign Assets Control (OFAC),… More
On June 16, 2015, Lego Juris A/S obtained two favorable decisions from the General Court of the European Union which will afford protection to famous Lego “minifigure” as a three-dimensional (3D) trademark; a protection that has been denied to its even more famous standard building brick.
For many years the Danish company, founded by Mr. Ole Kirk Christiansen, relied on patents that were filed at the end of the 1950s. … More
When we published our Sue-per Bowl post, 2015 looked like it would be a good year for right of publicity claims brought by athletes. On January 6, 2015, the Ninth Circuit in Davis v. Electronic Arts held that the First Amendment did not compel dismissal of right of publicity claims brought by former NFL stars who appeared in the “historic teams” option of the Madden NFL computer game.… More
Foley Hoag was recently delighted to announce the arrival of two IP attorneys to our Paris office, Catherine Muyl and Alice Berendes. We asked them to tell us a few things we may not know about trademarks in France. Here they are:
Last month witnessed the resolution of two trademark infringement cases involving the relationship between political activities and the definition of “goods or services.” On May 18, 2015, State Senator Steve Hershey gave up his right to appeal to the Fourth Circuit from the District of Maryland’s decision that he was infringing the Hershey Chocolate trade dress. On May 19, 2015, however, the Fourth Circuit overturned the case on which the District of Maryland had been relying.… More
An application to register PRETZEL CRISPS as a mark will live another day, thanks to a Federal Circuit opinion reversing a TTAB decision that had canceled the mark on grounds of genericness.
The holder of the PRETZEL CRISPS mark, Princeton Vanguard, originally applied to register it in 2004. Not surprisingly, Princeton was diverted to the Supplemental Register given the non-distinctive nature of the mark. … More
I’m back from the International Trademark Association (INTA) Annual Meeting in beautiful (if a bit cloudy and windy) San Diego, which featured the usual array of client meetings, networking with counsel from around the world, and seeing the sights. The convention center area, the USS Midway, and the street of the Gas Lamp Quarter were temporarily overrun with the nearly 10,000 trademark (with a smattering of patent) professionals proudly displaying their INTA badges and ribbons.… More
U.S. applicants will soon be able to use a streamlined international filing procedure for design patents similar to the Madrid Protocol for trademark registrations. Currently, U.S. applicants seeking to protect designs in multiple countries must file separate applications for each of the countries through their national or regional patent offices. Starting May 13, 2015, when the Hague Agreement Concerning the International Registration of Industrial Designs goes into effect in the U.S.,… More
Supreme Court’s B&B Hardware ruling creates the potential for court deference to the TTAB — but will it happen?
Did TTAB proceedings — until now considered a relatively obscure branch of IP litigation, conducted before an administrative body of which most attorneys are blissfully unaware — just assume greater importance? That seems to be the general reaction to the U.S. Supreme Court’s holding in B&B Hardware v. Hargis Industries last month.
B&B Hardware took an unusually aggressive approach to its trademark dispute with Hargis,… More
Hot on the trails of .porn and .adult, a new gTLD enters the fray next week — one that’s already giving PR departments heartburn. The .sucks domain launches for sunrise registrations on March 30, 2015, and with it yet another potentially costly headache for brand owners.
What Is .Sucks?
The .sucks gTLD is similar to .xxx, .porn, and .adult, in that companies are rightfully concerned that their names and trademarks may be associated with domains and websites that could harm those brands or otherwise generate ill will. … More
St. Patrick’s Day is upon us, which in Boston means loads of Kelly green, a famously-litigated parade, and a huge spike in the consumption of Guinness. The iconic dark stout travels in equally recognizable containers, each emblazoned with a Gaelic harp modeled on the famous 14th-century “Brian Boru’s” harp, currently preserved in Dublin’s Trinity College.
Such harps have been a part of Irish heraldry for over seven hundred years,… More
Yesterday marked the sunrise launch of the .porn and .adult generic top-level domains (gTLDs), which join .xxx in the top-level domain name space as gTLDs targeted mainly at online purveyors of adult entertainment. As with .xxx, the introduction of these adult-themed gTLDs presents yet another annoyance for trademark owners already fatigued by the weekly onslaught of gTLDs introduced over the past couple of years pursuant to ICANN’s expansion of the domain name space. … More
As a native Texan, I always feel a bit nostalgic and homesick around early March. Not only is bluebonnet season (read: spring) around the corner (if only that were true here in Boston!), but March 2 marks Texas Independence Day – the date on which, in 1836, Texas declared its independence from Mexico. Although the Republic of Texas lasted only ten years, its fiercely independent spirit seems to live on in the tenacity with which the Lone Star State asserts trademark rights in Texas’s unique brand. … More
By now you’ve probably heard of Snapchat. But if you are not among its growing core base of users between 13 and 23 years of age (probably a good deal younger than you, constant reader) there’s a good chance you are not a Snapchat user. Snapchat is, as they said once upon a time, all the rage with the kids. … More
And the Lawsuit Goes to . . . An Oscar-Time Guide to “Best Picture” Intellectual Property Litigation
The film that wins the Best Picture Oscar this year is certain to attract more viewers and more box office receipts than it had before receiving the award. But Best Picture winners also tend to attract more lawsuits, including intellectual property claims. Plaintiffs show up out of nowhere claiming to be the true authors of the underlying work, infringing defendants come out of the woodwork to unlawfully grab a little bit of the success for themselves,… More
The Better Business Bureau announced last Thursday that it has amended its Code of Advertising to address the new and evolving ways in which advertisers reach consumers through technology. The Better Business Bureau is the administrative parent of the advertising industry’s self-regulatory bodies, including the National Advertising Division.
As advertisers market to consumers who spend more time looking at smart phones and computer screens than television screens and magazines (the traditional media of mass-market advertising),… More
Had enough of Taylor Swift yet? For those of you who hate to love her, you might consider Swiftamine, because she is not going anywhere anytime soon. If anything, her media foot print continues to grow. And while one expects round-the-clock coverage of the pop music megastar on E! Entertainment Television and the like, she is now showing up on the intellectual property blogs,… More
Fortres’ software, called “Clean Slate,” erases user changes to public computers upon reboot, thus returning the computer to its original configuration, i.e., giving it a clean slate. Fortres’ complaint against Batman is that, in the weakest installment (IMHO) of Christopher Nolan’s otherwise-awesome Batman trilogy,… More
Tacky Victory: Hana Bank allowed to use three different trademarks to gain priority over Hana Financial
In a unanimous ruling, the Supreme Court upheld the Ninth Circuit Hana Financial v. Hana Bank and ruled that the question of “tacking” — whether a party’s prior version of its trademark is so closely similar to the current one that the prior period of use should be added, thus giving an earlier priority date — is for juries,… More
Sometimes a cigar is just a cigar, as the saying goes. However, things are not always as they appear, and sometimes events unfold in ways you would not anticipate. Such is the case with the Ninth Circuit decision in the matter of Omega v. Costco. The case concerns Omega’s allegations that Costco was importing watches bearing the Omega symbol, thus infringing the copyright in that design.… More
Heading into this year’s Super Bowl party season, there are two things every lawyer should be concerned about. First, why can’t your team get it together? Second, what do you do if you are asked to explain to your friends and neighbors some NFL-related litigation that you haven’t been following? We can’t help you with the first problem (although, as an Iggles fan living in the heart of Patriots Nation,… More
College Football Crowns an Undisputed Champion; But Rights to the Trademark COLLEGE FOOTBALL PLAYOFF Remain In Dispute
This has been an exciting week in Buckeye Nation – The Ohio State University’s football team won the first-ever college football national championship determined by a playoff system, defeating the Oregon Ducks 42 to 20. It has also been an exciting week for College Football Playoff (CFP), the company responsible for managing the new playoff system, in which a committee selects four teams for a two-round playoff (in contrast to the previous system,… More
Advertiser Jumps the Gun With Brochure Touting Tests; Fifth Circuit Brushes Off First Amendment Challenge to Lanham Act Claims
Like claims for defamation or commercial disparagement, Lanham Act claims are viable only if they involve statements of fact, rather than opinion. But what happens if an advertising statement concerns an issue that is a matter of scientific debate? Does that make the statement an opinion, and therefore non-actionable? The answer, of course, is “it depends” — as illustrated by a recent Fifth Circuit case, and how it distinguished itself from a Second Circuit case with a different outcome.… More
The Biograph Company was founded in 1895 by William Kennedy Dickson, a former employee of Thomas Edison. Biograph became known for its two-minute long documentaries made using a 68mm film format (in order to avoid the litigious Edison’s patents on 35mm technology),… More
If you are hosting or attending a party this holiday season, you probably need to pick up something to drink. This year, why not pick up a conversation starter as well? See if your local liquor store (in our neck of the woods, a “packie”) carries one of the many beverages that were the subject of a trademark or similar dispute in 2014. In deciding an 1891 trademark case,… More
Last year, in the spirit of Thanksgiving, we told you about Horace W. Longacre’s unsuccessful attempt to register BAKED TAM as a trademark for its “turkey ham” product in the early 1980s. This year we bring you a related tale, involving another trademark loss for Longacre’s turkey ham product, just a few years earlier. The deadpan introduction to Judge Alfred Luongo’s 1976 opinion for the Eastern District of Pennsylvania sets the stage admirably:
Federal Government Wins Trademark Battle to Shut Down “Voice of America” Website with “Undeniable Governmental Aesthetic”
Since its first broadcast on February 1, 1942, the Voice of America radio service (VOA) has aired countless hours of programming in dozens of languages to what is currently an estimated global audience of over 100 million people. Although the history of the VOA name is storied and long, VOA’s efforts to protect that name are of a more recent vintage. VOA didn’t apply to register its name as a federal trademark until 2005,… More
Use of Porn Star Images in “Romance Fraud” Dating Profiles Fails to Support Trademark and False Advertising Claims
The plaintiff in Avalos v. IAC/Interactive Corp. called it “one of the biggest conspiracies ever executed on the internet” — the unauthorized use of images of adult film stars in fake online dating profiles. But in an opinion issued October 30, 2014, Judge Jesse Furman of the Southern District of New York held that trademark law was not the right way to go about solving this problem.… More
On October 28, 2014, Judge Paul Grewal of the Northern District of California ruled that a political advocacy website’s confusing use of the mark CHOOSE ENERGY could stay up . . . but perhaps only until election day.
Brewers, distillers, and vintners are no strangers to themed seasonal offerings, so it’s not surprising that Halloween brings out some decidedly decrepit monikers. From PUMPKINHEAD (think reaping) to NOSFERATU, WITCH’S WIT to BRUJERIA, purveyors of alcohol capitalize on the creepy and market the macabre. Every once in a while, of course, great minds think alike,… More
As autumn sets in and Halloween approaches, my mind turns to jack-o-lanterns, skeletons, and phantoms. Phantom marks, that is. Equally incorporeal though perhaps somewhat less frightening than their ghostly namesakes, phantom marks are registered trademarks that contain a “phantom,” or changeable, element. A well-known phantom registration was _ _ _ _ _ _ FOR DUMMIES for various self-help books,… More
Appearances Aside, “Something More” Still Needed for Trademark Infringement Liability in Keyword Advertising Cases
Search engine optimization is a vital issue for brand owners. When a potential customer searches online for Company A, a well-known brand, Company A naturally wants its own website to be as high in the search results as possible and, ideally, at the top of the list.
But Company A is not alone. Its competitor, Company B, wants to show up in the search results as well. … More
October is Pro Bono Month in many states, including Massachusetts, New York, Michigan, New Hampshire, Maine, Rhode Island, Indiana, Tennessee, and Alabama. The ABA has created an annual weeklong National Pro Bono Celebration, which this year is October 19-25. Recognizing the countless lawyers who devote their time and efforts to representing people of limited means, and urging all lawyers to do more, these pronouncements remind us that every attorney has an ethical responsibility to make sure that our system of justice is open to all persons,… More
In Southern California Darts Association v. Zaffina, the Ninth Circuit held that a corporation, whose charter had been suspended by the state of California in 1977, had standing in 2012 to sue and to own trademarks as an unincorporated association.
No matter how sophisticated we are on the outside, on the inside everyone has a favorite novelty t-shirt buried deep in the recesses of their juvenile subconscious. Mine is one that says “Welcome to Philadelphia. Now Go Home,” which so perfectly captures both the convivial pride and bewildering hostility of the city that raised me.
Many five-year olds these days have a different favorite t-shirt,… More
How Not To Market Your Business Online (Even If It Works): Claims Against Fake Review Sites And Stolen Obituary Photos Survive Motion To Dismiss
Despite celebrity endorsements from the likes of Dennis Miller and Alan Thicke, all that glitters isn’t gold when it comes to the marketing of precious metal investments. In March 2014, American Bullion, Inc., which is in the business of encouraging individuals to convert their retirement savings to gold and silver, brought suit against its competitor, Regal Assets, LLC, in the Central District of California, alleging a host of unsavory internet marketing practices. … More
If you happen to be in the Boston area this August, and you are sick of the Freedom Trail, here’s an idea for a little trademark trail. Start in Cambridge at Moody’s Falafel Palace and head downtown past Kneeland Street to the waterfront. Then hop on a Harbor Island ferry and get off at Spectacle Island, where a piece of a vintage White Tower Hamburger plate recently washed up on the beach.… More
Wizard of Oz Celebrates 75th Anniversary & Victory in Copyright and Trademark Dispute Over Film Characters
This August will mark the 75th anniversary of the release of the classic film The Wizard of Oz. As Warner Bros. celebrates the iconic status acquired by the film and its characters during the past seven-plus decades, the studio will likely also be rejoicing over a recent victory concerning the intellectual property rights in images of the characters from the film.
In the early 2000’s,… More
As any IP lawyer will readily admit, trademark practice before the United States Patent & Trademark Office (PTO) comes with its fair share of annoyances: inconsistent treatment of similar applications, unreasonably stringent identification requirements, and so forth. Another difficulty lies in what appears to be a large number of registrations subsisting on the federal register, past their initial maintenance filings, despite a high likelihood that such marks are no longer used,… More
Highlights of Congressional Hearings on Copyright Moral Rights, Termination Rights, Resale Royalty, And Copyright Term
On July 15, 2014, the Judiciary Committee of the United States House of Representatives, through its Subcommittee on Courts, Intellectual Property and the Internet, held hearings regarding a number of copyright issues, including moral rights, termination rights, resale royalty and copyright term. Despite the eclectic nature of the hearing, all of the issues discussed fell under the general category of what Chairman Howard Coble (R-NC) described as the “rights of the creator,… More
“Big Chocolate” Gets Injunction Against Whack-A-Mole Senator; Trademark “Services” Include Political Activities
Last week, Judge William Quarles of the District of Maryland issued an injunction preventing Maryland Republican State Senator Steve Hershey from using his own campaign literature. The case was brought by the Hershey Chocolate Company, which alleged that the Senator’s campaign poster and other materials infringed the famous confectioner’s trade dress. The lawsuit must have come as no surprise to Senator Hershey because, prior to this,… More
Late last year, in a matter of first impression, the Federal Circuit affirmed the Trademark Trial and Appeal Board and held that the city of Houston could not register its official municipal seal with the United States Patent and Trademark Office (USPTO). The basis for this decision was 15 U.S.C. § 1052(b), which forbids trademark registration for the “flag or coat of arms or other insignia of .… More
Do you want your company to control .app or .restaurant? Applying to operate a generic top-level domain (gTLD) isn’t for the faint of heart. Although several hundred companies ponied up the $185,000 application fee for over 1,900 total gTLD applications, that’s only the first stage in the process. Once filed, ICANN reviews each application for financial, technical, and operational competence, ensuring that each applicant has the financial wherewithal,… More
In its recent decision in Cigar King v. Corporacion Habanos, the Federal Circuit Court of Appeals affirmed the cancellation of Cigar King’s trademarks after it failed to comply with discovery orders. This was only the latest in a long line of trademark disputes between cigar brands, and is by no means the first example of a stogie manufacturer that had a complicated relationship with a court order.… More
The matter of Terra Sul Corp. v. Boi Na Braza, Inc. involved a concurrent use proceeding between two restaurants over their nearly identical names. In theory, the scope of the conflict was nationwide, but in reality, as one party put it, “[t]his dispute has always been about New York City.” In a recent precedential opinion, the TTAB concluded that, because the “New York restaurant scene’s embrace is sufficiently broad to reach Newark,” a New Jersey restaurant’s area of concurrent use included New York City and,… More
In a ruling sure to generate heated discussion in the sports world, the trademark community and elsewhere, a divided panel of the Trademark Trial and Appeal Board (TTAB) has ruled that six registered marks including the term REDSKINS owned by the Washington NFL franchise should be cancelled.
A Long, Strange Trip
Of the six marks at issue, one was registered in 1967,… More
The Supreme Court issued a unanimous decision last week in Pom Wonderful LLC v. Coca-Cola Co., a case pitting the false advertising provisions of the Lanham Act against the beverage labeling standards of the federal Food Drug & Cosmetics Act (FDCA). Pom Wonderful, maker of 100% pomegranate juice and other pomegranate-based products, brought false advertising claims against Coca-Cola, accusing its Minute Maid Pomegranate Blueberry drink of misleading consumers into believing they were drinking more pomegranate and blueberry juice than they in fact were. … More
We previously reported on the dispute between the National Association for the Advancement of Colored People (NAACP) and the conservative activist Ryan Bomberger. Bomberger had repeatedly referred to the NAACP in online articles not by its actual name, but by the name “National Association for the Abortion of Colored People.” Bomberger characterized this alternative moniker as a parodic critique of what he perceived to be the NAACP’s pro-choice politics. … More
The United States Patent and Trademark Office is soliciting comments on its draft version of the “Service Mark Specimens” examination guide. The topics covered by the guide include the elements of an acceptable service mark specimen, grounds for refusal, and common issues arising in the examination of specimens for technology-related services. Comments are due by July 16, 2014. More information is available here.… More
Flummoxed By FLANAX: TTAB Cancels Trademark Registration Based On Misrepresentation As To Source Despite No Use In U.S. By Petitioner
In an interesting precedential decision, the Trademark Trial and Appeal Board (TTAB) canceled a registration for FLANAX despite the fact that the petitioner, Bayer Consumer Care AG, did not use FLANAX in the United States, but only in Mexico. The case illustrates that the “misrepresentation as to source” provision of the Lanham Act can be a useful tool in egregious cases,… More
After a week at the International Trademark Association Annual (INTA) Annual Meeting in Hong Kong, and another spent exploring the city and its surrounds, it’s nice to be heading back to the comparatively quaint major city we call home. But as I fly through Siberian airspace, over the North Pole, and through Canada en route to Beantown, I have a few parting thoughts.
The Gateway to Everything
As the Gateway to Asia,… More
In its recent decision in Sussman-Automatic v. Spa World, the Eastern District of New York dismissed a plaintiff’s trademark infringement claims, while allowing its claims for false advertising based on the same conduct to survive. The decision explores the boundaries between a false advertising “bait-and-switch” scheme and the “initial interest confusion” theory in Lanham Act cases.
The Mr. Steam Bait-and-Switch
The plaintiff,… More
INTA annual meetings are always interesting, sometimes in ways that you don’t expect. This year’s meeting is in Hong Kong. I thought I would share my top five observations, both good and bad, about my experience so far.
On the good side of the ledger:
1. The Saturday night Gala was fun! I had never attended it before,… More
Milk Dud? False Advertising Lawsuit Against Makers of Muscle Milk Illustrates Interplay Between Lanham Act, FTC and FDA
In a lawsuit recently filed in the Southern District of Florida, Global Beverage Enterprises, Inc. (“Global”), the manufacturer of specialty carbonated beverages like Mr. Q. Cumber Sparkling Cucumber Beverage, brought Lanham Act claims against CytoSport, Inc., alleging false advertising of CytoSport’s popular Muscle Milk line of beverages. The basis of the claim is that the Muscle Milk beverages contain no milk and, therefore, the product name is false and misleading. … More
Some recent administrative developments may be of interest to copyright and trademark practitioners:
Effective May 1, 2014, the U.S. Copyright Office has amended its registration fee schedule. This includes reduced renewal application fees and increased fees for registering multiple works. A complete list of the new fees is available here.
Updated Trademark Manual of Examining Procedure (TMEP)
On April 30,… More
Yesterday, the United States Supreme Court decided Octane Fitness, LLC v. Icon Health & Fitness, Inc. and Highmark v. Allcare Health Management System, Inc., companion cases that will make it easier for prevailing parties to recover attorneys’ fees in patent infringement litigation. Together, the cases may have far-reaching consequences for litigation strategy and case management in cases involving a range of intellectual property disputes, not just patents.… More
In Dardenne v. MoveOn.org, the Middle Louisiana Federal District Court faced a conflict between trademark protection, on the one hand, and the First Amendment’s protection of political advocacy, on the other. The Court concluded that trademark law cannot be used to suppress political advocacy, at least in the absence of a compelling need to protect the mark and a demonstrable likelihood of confusion.… More
ICANN’s new generic top-level domain name (gTLD) program has introduced opportunities and risks for companies, and probably not in equal measure. Several weeks ago, we posted some guidance regarding steps all brand owners should be taking to secure their valuable trademarks in connection with the launches of the new top-level domain names. Joshua Jarvis, a member of Foley Hoag’s Trademark,… More
Last week, Taco Bell released a TV commercial featuring real men named Ronald McDonald enjoying Taco Bell’s new breakfast items. This is very creative advertising, but is not for the faint of heart. Using a competitor’s trademarks is always a risky business. Do not try this at home. At least not without calling your trademark lawyer first.
This Porridge is Just Right: Supreme Court Adopts “Zones of Interest” Standing in False Advertising Cases
When we last posted about Lexmark v. Static Control, we expected that the Supreme Court would endorse one of the circuit court tests to determine whether Static Control, the maker of a chip that facilitates printer cartridge remanufacturing, had standing to bring a false advertising claim against Lexmark, a company that makes printers and printer cartridges but is not strictly a competitor of Static Control.… More
Social media has become a powerful marketing tool, allowing celebrities to develop their brands and images with the help of Facebook updates or Tweets that can reach millions of fans at the same time. Given the importance of social media as a brand-building medium, how should the law treat “fan accounts,” which are created by fans using a celebrity’s name? What protection does the law provide to celebrities trying to control usage of their personae and brands on social media platforms?… More
Today’s consumers depend on “crowd-sourced” review websites like Angie’s List and Yelp, which permit users to post and read reviews of goods and services. Businesses feel a corresponding pressure to encourage favorable reviews on such websites. But what happens when the website intervenes to regulate the reviews it hosts, perhaps (for example) by deleting reviews that appear phony or suspicious? Can a business sue the website for deleting reviews that would otherwise reflect positively on its goods or services?… More
By now, you’ve probably heard the agonized shrieks of your friendly neighborhood copyright lawyer, decrying the Ninth Circuit’s opinion Garcia v. Google. If you haven’t had the time or inclination to read the opinion, here is a quick synopsis, followed by our list of nine ways in which many find the Ninth Circuit’s February 26, 2014 decision somewhat troubling.
Cindy Lee Garcia agreed to act in a low budget film called “Desert Warrior,” for which she was paid $500.… More
CrossFit, Inc., the fitness training company, licenses its trademarked name and goodwill to over eight thousand affiliates worldwide at $3,000 per year per affiliate. When non-affiliate Jenni Alvies began posting on Facebook about fitness under the name “Crossfit Mamas” (including selling exercise apparel bearing the same name), CrossFit felt Alvies was infringing its mark.
So CrossFit did what anyone would do in this day and age.… More
Hey, These Japanese Mushrooms Aren’t Organic: The Ninth Circuit Addresses the Material Difference Standard in Relation to Produce as Parallel Imports
The Ninth Circuit recently issued a decision upholding the lower court’s finding at summary judgment that a U.S. importer of branded, gray market mushrooms infringed upon the rights of the U.S. trademark owner. Gray-market goods, also known as parallel imports, are branded goods legitimately produced and sold abroad that are imported into the United States without the consent of the U.S. brand owner. … More
Apparently, the answer is “One Love.” On December 6, 2013, Fifty-Six Hope Road Music, Ltd. (“Hope Road”), which controls reggae legend Bob Marley’s estate, filed a federal trademark infringement action against the restaurant company Raising Cane’s USA, LLC (“Raising Cane’s”). Hope Road alleges ownership of the trademark ONE LOVE in connection with a number of goods and services. It further claims that Raising Cane’s unauthorized use of the same mark in connection with restaurant services is a violation of Hope Road’s rights.… More
A recent opinion from the Western District of Virginia sets forth a useful framework for analyzing a variety of Lanham Act claims based on false commercial speech uttered in social media.
Kraft Still the Big Cheese: Seventh Circuit Affirms Injunction in Trademark Dispute over Cracker Barrel
Cracker Barrel Old Country Stores are easy to spot off the highway, but you won’t be noticing the company’s products in grocery store aisles any time soon.
The Seventh Circuit Court of Appeals recently upheld a preliminary injunction barring Cracker Barrel Old Country Store, Inc. (“CBOCS”), from selling branded food products, particularly packaged hams, in grocery stores. The appeals court found that the similarities between the CBOCS mark and that of Kraft Foods Group’s Cracker Barrel cheese products line could easily lead to consumer confusion.… More
In Charles Dickens’ A Christmas Carol, Ebenezer Scrooge’s transformation from miser to profligate is marked by his purchase of a turkey for the Cratchit family. Turkey used to be a luxury food, in most households suitable only for special occasions. In the 1930’s, Americans ate an average of only 1.7 pounds of turkey each year (compared to about 20 pounds today).… More
Summary Judgment Denied in Trademark Dispute over “National Association for the Abortion of Colored People”
Anti-abortion activist Ryan Bomberger of The Radiance Foundation thought he had an unassailable First Amendment defense. After all, his use of the phrase “National Association for the Abortion of Colored People,” in order to criticize the National Association for the Advancement of Colored People (NAACP), was in the context an on-line political dispute over abortion. So when the NAACP threatened suit,… More
Naming Your Sales Division “Replica Products” Is Never A Good Idea or How Not To Facilitate Counterfeiters
Here’s some advice for online marketplaces giving sellers a platform to hawk their wares:
- Do not name any of your sales divisions “Replica Products” or “Replica Retention.”
- Do not let your employees tell sellers that marketing counterfeit luxury goods will not be a problem. (It will be.)
- Do not let your employees tout replica sales as “one of the businesses that we rely on to get us a whole lot of revenue.”
- Do not enlist your employees to develop keywords to drive potential buyers to sellers of counterfeit products.…
From AMC’s white-hot series The Walking Dead to the box office hit World War Z, the fictional zombie apocalypse is on a roll. Be forewarned, however: there may be a real undead threat lurking in your local supermarket or shopping mall, namely the zombie trademark. See, e.g., Anne Gilson Lalonde & Jerome Gilson, Gilson on Trademarks § 3.05 (2013) (discussing potential problems posed to consumers by zombie trademarks). … More
New Trademark Law in China Promises Efficiency and Enhanced Enforcement Capabilities for U.S. Brand Owners
The People’s Republic of China is considered by some to be the next great economic superpower, and U.S. companies seeking to gain a foothold in the Chinese marketplace often begin by attempting to secure trademark rights in China for their many brands, famous and otherwise. However, they are often stymied by China’s complicated trademark registration system, a body of law relatively unfriendly to well-known foreign brands,… More
In Groeneveld Transport Efficiency, Inc. v. Lubecore International, Inc., 2013 U.S. App. LEXIS 18897 (6th Cir. Sept. 12, 2013), an industry veteran and a relative newcomer battled over the appearance of a rather specialized product: automatic lubrication pumps for commercial trucks.
The plaintiff, Groeneveld, began making its pump in the 1980s. Lubecore, the defendant, began selling its own pump roughly 20 years later. … More
Hotel Dispute Gets An Extended Stay in Puerto Rico: First Circuit Case Illustrates the Limits of an Incontestable Registration
In the U.S., a senior user of a trademark can block a junior user within the geographic area of prior use, even if the junior user is the party with an incontestable U.S. federal registration. This is perfectly illustrated in a recent First Circuit decision.
Hotel Meliá, Inc. (HMI), the defendant-appellant in the case,… More
We previously reported that India was scheduled to become the 90th member of the Madrid Protocol Concerning the International Registration of Trademarks (the “Protocol”). We noted that this was a gratifying prospect, since India’s National Trademark Office is notoriously overburdened and slow-moving. Under the Protocol, a country is typically required to examine a registration request within 12-18 months. If the country does not raise any objections within this period,… More
New generic top-level domain names (gTLDs) such as .fun, .law, and .money have been in the works for a very long time, and the first batch may be just around the corner. ICANN recently published a “hypothetical” timeline that pins the first top-level domain delegation date (the date the gTLD becomes active) as September 5, 2013. Whether this date is ICANN’s wishful thinking or not,… More
Say Good Bye to Boston Cream Thigh: Caballero Video Gives Up “Ben & Cherry’s XXX Ice Cream” Franchise
It turns out that the folks at Caballero Video were gentlemen after all, at least from Ben & Jerry’s perspective. Last September, the ice cream maker brought a trademark action in the Southern District of New York to put a stop to Caballero’s “Ben & Cherry’s XXX Ice Cream” line of pornographic videos. Caballero consented to preliminary injunctive relief during the pendency of the action. … More
Unless you are Leonardo Da Vinci or Julius Caesar, you would probably have trouble registering your last name as a trademark. This is because last names are not generally considered to be inherently distinctive enough to qualify for trademark protection without proof of secondary meaning. However, there is an exception for historical names that are likely to be recognized by the public as referring not to an ordinary surname,… More
A decision this week from the Federal Circuit, in a patent invalidity action, has been getting a lot of press for its suggestion that patent (and by implication trademark) holders may be able to avoid challenges to the validity of their IP simply by crafting a website disclaimer explaining that they will not sue certain competitors or other potential challengers. The decision has been argued by some to be an extension of the reasoning of the U.S.… More
An interesting debate recently occurred in the New England Journal of Medicine between a physician and the U.S. Food and Drug Administration (FDA) regarding whether the letters X and Z are used too frequently in pharmaceutical trademarks.
As most of our readers are well aware, the touchstone of whether any two trademarks can coexist in the U.S. — on the United States Patent and Trademark Office (PTO) registers and in the marketplace —… More
The Madrid Protocol Concerning the International Registration of Trademarks (the “Protocol”) provides a simple, unified, cost-effective means for citizens of member countries (including the United States) to register their marks in other member countries. By using the Protocol, trademark owners can obtain a single “International Registration” designating some or all of the member countries, instead of filing separate national applications in each country. If none of the member countries objects to the International Registration,… More
Copyright Owners Left Legally Jet Lagged? – The Supreme Court Embraces the International Exhaustion Doctrine
A multi-year legal drama over the proper scope of certain sections of the U.S. Copyright Act, as applied to goods made and first sold outside the United States, has finally come to an end. In a 6-3 decision issued yesterday, with dissents from Justices Ginsburg, Kennedy, and Scalia (strange bedfellows in many regards, judicially speaking), the Supreme Court, in the case of Kirtsaeng v. John Wiley & Sons,… More
Several recent cases have highlighted the interesting issue of whether and when fictional characters – as distinct from the works they inhabit – are subject to copyright protection. Over the years, courts have developed two main tests for determining whether characters are worthy of copyright protection. First, as Judge Hand pointed out in the 1930 case Nichols v. Universal, stock characters are free for anyone to use,… More
WINTER . . . I MEAN PRINTER . . . IS COMING: Game of Thrones Alleges Copyright Infringement by 3D Printer IPhone Dock
The inner twelve-year old boy in me doesn’t know which is cooler: the throne made entirely from swords for HBO’s Game of Thrones series, or the fact that 3D printer technology can now replicate that throne in my home at the touch of a button. It’s an interesting time to be a twelve-year old boy. It may be an even more interesting time to be an intellectual property lawyer because,… More
It is a basic principle of trademark law that a mark can only be assigned with the goodwill of the business to which the mark relates, for the good reason that the mark is in fact inseparable from the business. But what kind of “business” is necessary to support ownership of a mark? A recent decision by the Federal Court in the Southern District of New York in Creative Arts by Calloway,… More
Kim, Kourtney, and Khloé , the reality-TV triple threat otherwise known as the Kardashians, are going to have to keep up with the federal court in California. The three sisters (not to be confused with Chekhov’s titular ladies), mostly famous for being famous, have been named in a trademark litigation counter-suit filed by the owner of KROMA makeup. The KROMA line was apparently launched in 2010.… More
Amazon has recorded another success in its battle with Apple over use of the term APP STORE. The U.S. District Court in California has granted Amazon’s motion for summary judgment on Apple’s claim of false advertising arising from Amazon’s use of the term APP STORE (or APPSTORE in practice) in connection with Amazon’s online store selling applications for Android devices and the Kindle Fire.
As is well known,… More
Nike’s Successful Retreat Strategy: Trademark Defendant’s Invalidity Counterclaim Is Moot Following Plaintiff’s Covenant Not to Sue
Nike, having sued competitor Already LLC for infringing its marks, later issued a covenant not to sue to Already and sought to dismiss the case. Defendant Already, however, had filed a counterclaim seeking a declaration that Nike’s mark was invalid, and argued that that counterclaim should proceed. The District Court dismissed the counterclaim, and the Second Circuit affirmed that there was no ongoing case or controversy. … More
The start of a new year is a great time to take stock of where your company’s business has been and where it is headed. If you have not done a trademark audit within the last few years, here are five good reasons why you should make it a priority in 2013.
1. You may identify gaps in your registration coverage.
Often, taking a fresh look at a company’s trademark portfolio reveals significant gaps that should be filled. … More
Celebrity Trademark Watch: Elizabeth Taylor, Godmother of Celebrity Branding, Is This Year’s Highest Earning Dead Celebrity
The history of celebrity endorsements is over 100 years old, dating back to at least the late 19th century when acclaimed stage actress Lillie Langtry began appearing on packages of Pear’s Soap. Marketers have long known that, whether in connection with beauty products, breakfast cereal, soft drinks or yogurt, a celebrity spokesperson can lend “star quality” to a commercial brand. Of course, in today’s marketplace,… More
In August of this year, Warner Brothers finally announced the release of Age of the Hobbits, Peter Jackson’s long-awaited follow-up to his Lord of the Rings trilogy, based on J.R.R. Tolkien’s famous fantasy novels. Age of the Hobbits tells the tale of a clever group of diminutive Indonesian tribesmen who convince Chinese actress Bai Ling to save them from a hoard of cannibals mounted on flying Komodo dragons.… More
Within the past few days a number of news outlets, television programs, websites, and blogs have been reporting that former Denver Bronco and current New York Jets quarterback Tim Tebow has received a federal trademark registration for his signature, mid-game prayer gesture in which he drops to one knee while placing a fist against his forehead. This stance is known as “tebowing” and it quickly became an internet phenomenon,… More
Decades of Delay Are OK: First Circuit Rejects Laches Defense Based on “Doctrine of Progressive Encroachment”
In a case on appeal from the District of Puerto Rico, the First Circuit held that the “doctrine of progressive encroachment” defeated a junior user’s laches defense, despite the fact that the junior user had been co-existing with the senior user for decades.
This case involved two banks, both started in the 1960s and both using the mark ORIENTAL. (Banks, it may be said,… More
An often-frustrating aspect of IP law is that in relatively small matters, the cost of litigation can quickly become disproportionate to the value of the intellectual property in dispute. In other words, there is no automatic sliding scale of expenses that shifts according to the value of the IP.
A Connecticut Superior Court judge has upheld a jury verdict that once again demonstrates the product liability risks faced by trademark licensors, particularly those who license technology as well as their marks. In Hannibal Saldibar v. A.O. Smith Corp, the court upheld a $2.4 million judgment against the Tile Council of North America, which had licensed its trademarks and patented technology for dry-set mortar to tile manufacturers,… More
Porn Parody or Infringing Pun? Ben & Jerry’s Brings Trademark Action Against “Porno’s Finest,” Ben & Cherry’s
Last week, Ben & Jerry’s Homemade Ice Cream brought a trademark action in the Southern District of New York to put a stop to its naughty doppelganger, “Ben & Cherry’s XXX Ice Cream.” Distributed by Caballero Video, Ben & Cherry’s is a series of pornographic films with ice cream-themed titles such as “Boston Cream Thigh,” “Hairy Garcia” and “New York Super Fat and Chunky.”… More
In a long-awaited decision, the Second Circuit, in a surprising twist, ordered that high-end shoe designer Christian Louboutin’s trademark registration for his signature red, lacquered outsoles be limited to designs in which such outsoles contrast in color with an adjoining upper.
The North Face Moves for Contempt Against “THE SOUTH BUTT” Defendants Over New Trademark “THE BUTT FACE”
Readers of this blog might remember our previous coverage of the 2010 trademark dispute between The North Face Apparel Corp. and The South Butt, LLC. The defendants in that case adopted the trademark THE SOUTH BUTT for clothing that resembled the style of clothing sold under the well-known mark THE NORTH FACE. According to the Complaint, South Butt repeatedly attempted to register THE SOUTH BUTT as a trademark and offered to sell its business to The North Face for $1 million.… More
Rawlings Sporting Goods Co. has brought suit (complaint here) against competitor Wilson Sporting Goods Co. for giving a Wilson® baseball glove with “metallic gold-colored webbing, stitching and lettering” to a major league player — Brandon Phillips of the Cincinatti Reds — who has won the “Rawlings Gold Glove” award in the past but is an endorser of Wilson rather than Rawlings.
Every baseball fan has heard of the Gold Glove awards given annually to 9 players from the National League and American League,… More
Foley Hoag Attorneys to Screen Provocative, Academy Award-Winning LOGORAMA Film and Lead Discussion of Copyright and Trademark Fair Use Issues
Honestly, who hasn’t fantasized at some point about Ronald McDonald grabbing an Uzi and slaughtering his way through corporate America? LOGORAMA, the Academy Award-winning animated short, involves a gritty police chase set in a Los Angeles-inspired cityscape entirely populated by over 2,500 contemporary and historical trademarks and logos. We couldn’t let this provocative and fascinating film pass completely without notice in the legal community. More
On June 25,…
Marilyn Monroe was perhaps the more clever of Hollywood’s famous dumb blondes. While doubtless no rocket scientist, she nonetheless continues to exploit her carefully honed image to great effect even today. However, 1940’s screen siren Hedy Lamarr, herself a rare beauty, may have been the vixen with the truly beautiful mind. Indeed, she had the intellectual property to back it up — in 1942, several months after the U.S.… More
Just when you thought it was safe to bid on competitors’ trademarks as keywords — provided you played it smart, and didn’t put trademarks in the actual text of your sponsored ad except under certain limited circumstances — comes the Fourth Circuit’s decision in Rosetta Stone v. Google. In its opinion, the Fourth Circuit reverses, in significant part, the U.S. District Court for the Eastern District of Virginia for its apparently hasty summary judgment order in favor of Google,… More
In an ad run initially during the post-game show of the 2010 Super Bowl, Hyundai encouraged viewers to re-think “luxury” and as a result consider buying a Sonata. The ad, which can be viewed on YouTube here, juxtaposed images of “luxury” with everyday settings: policemen eating caviar, middle class houses with giant yachts parked next door, and — in what turned out to be a step too far —… More
Yesterday the University of Pennsylvania Law School’s Penn Intellectual Property Group (PIPG) held its annual symposium, which this year focused on fashion law. David Nimmer, of copyright treatise fame, delivered the keynote, entitled “Copyright and the Fall Line.” However, despite the light-hearted topic and big-name headliner, the event was probably most notable for the apparent absence of a late-invited guest, Michael Pantalony, in-house counsel at Louis Vuitton.
Pantalony set the blogosphere atwitter a few weeks ago by sending a sternly-worded cease and desist letter to the law school’s dean complaining about the artwork on the poster advertising the event,… More
Trademark Offices Warn Applicants of Solicitations by Unscrupulous Companies: How Can a Trademark Owner Protect Itself?
It seems that a trademark owner cannot file a trademark application without subjecting itself to a frenzied barrage of unwanted solicitations by companies seeking the payment of fees in exchange for various trademark-related services, such as publication in the company’s private database or registry, trademark monitoring services, or recordation of the trademark with customs authorities. In some cases, the solicitations resemble invoices and appear to be issued by a government entity.… More
Every now and then celebrities enjoy perks that you and I can only dream about. For the world’s newest music celebrity, Blue Ivy Carter, this is doubtless true as she has recently gotten some unusual white glove service from a government agency — something we all wish we could get the next time we’re at the registry of motor vehicles. Nonetheless, the life of a celebrity is not all glamour and fancy parties.… More
On Tuesday, high-end shoe designer Christian Louboutin told the Second Circuit that District Court Judge Victor Marrero got it wrong when he ruled that Louboutin failed to make a preliminary showing that his hallmark red-soled shoes were entitled to trademark protection, basing that holding on the broad rule that a single color for fashion items could not be trademarked under the Lanham Act.
A version of this article, which was co-authored by Anthony E. Rufo, was reprinted in the World Trademark Review.
How can the owners of famous trademarks enforce their rights without being given the dreaded “trademark bully” label? The answer lies in knowing where to draw the line, and in exercising diplomacy in letting people know when the line has been crossed.… More
Anheuser-Busch InBev NV, owner of the U.S. “Budweiser” mark for beer, has recorded a small success in its longstanding efforts to establish worldwide exclusive rights to the Budweiser mark by purchasing the rights to Budweiser trademarks held by a small Czech brewery, Budejovicky Mestansky Pivovar.
However, this is a victory in a small skirmish in InBev’s much larger trademark war with another Czech brewer,… More
Stating that the antidilution law should be used as “a scalpel, not a battle axe,” Judge Laura Taylor Swain of the Southern District of New York once again found that Starbucks failed to prove that the famous STARBUCKS trademark was likely to be diluted by the use of the marks CHARBUCKS BLEND, MR. CHARBUCKS, and MISTER CHARBUCKS on dark roasted coffee. In her December 23 opinion,… More
As most readers know, the Supreme Court held in the 2006 eBay decision that injunctions were no longer to be the norm in patent cases, and irreparable harm was not to be presumed. Instead, injunctions are within the equitable discretion of the district court, and are to be granted only if the plaintiff has shown entitlement under the traditional multi-factor test.
It’s been clear for some time that the same principles now apply in copyright and trademark cases as well.… More
The lawsuit between Twitter and Twittad about which we wrote yesterday has ended barely a month after it began. Twitter and Twittad announced on October 10, 2011, that they have settled their dispute over Twittad’s registration of LET YOUR AD MEET TWEETS as a trademark. While the full terms of the settlement agreement are confidential, the Wall Street Journal reports that Twitter will drop its lawsuit, and Twittad will assign its rights in the registration to Twitter, although Twittad will continue to use the tagline with its services. [more]
UPDATE: Twitter and Twittad have settled their dispute. Click here for details.
The online “microblogging” service Twitter filed suit last month against Twittad, LLC, a company that enlists Twitter users to participate in advertising campaigns for pay. Twittad has registered the phrase LET YOUR AD MEET TWEETS with the United States Patent and Trademark Office (PTO) as an identifier for its advertising-related services.… More
As mentioned in our prior blog entry, Facebook has sued Teachbook.com LLC in the Northern District of Illinois for infringement of the ubiquitous FACEBOOK mark, after losing a venue battle in the Northern District of California this past May.
Facing an astronomically larger opponent, Teachbook went for an aggressive strategy that has tempted many a defendant: to see if, despite the very high hurdle imposed by Rule 12,… More
As reported recently, Facebook has dropped its suit against Lamebook, the subject of our prior blog entry, pursuant to a settlement agreement. This followed Facebook’s unsuccessful attempt to have the case transferred to its home turf in the Northern District of California.
According to the news report, Lamebook got to keep its name as part of the settlement,… More
A trademark is more than a designation of source. It is also a symbol of quality, attesting to the consistent, predictable nature of the identified goods or services. Consumers rely upon marks to insure that they purchase the same product or service they have come to know from prior experience.
For this reason, a company that uses its mark through licensees must control the quality of the goods and services that the licensees sell under the mark.… More
The long-awaited study of so-called trademark bullies was recently released by the Department of Commerce. As you may recall from our prior blog post, the study was the result of legislation filed by Senator Leahy of Vermont and signed into law by President Obama on March 17, 2010 (Pub. L. 111-146, Sec. 4). The legislation gave the Secretary of Commerce one year to “study and report to [Congress] the extent to which small businesses may be harmed by litigation tactics [by corporations] [the purpose of which is] attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.” (Subsequent to enactment, the words “of corporations” were stricken and replaced by “the purpose of which is” by Pub.L. 111-295, Sec. 6(h).)
The decision by Apple Corps, the Beatles’ music company, to allow distribution of Beatles songs on iTunes appears to have been vindicated by the initial sales figures achieved (two million singles sold in the first week, reports Billboard). However, the release of Beatles’ music on iTunes, the final act in the resolution of the long-running trademark dispute between Apple Computer and Apple Corps, also illustrates the basic truth underlying the resolution of many trademark negotiations: the company with the biggest consumer footprint ultimately wins.… More
Lamebook, LLC operates a website, www.lamebook.com, at which people can submit amusing (or merely “lame”) messages and photos appearing on facebook.com – its tag line is “the funniest and lamest of facebook.” (Warning: some of the content is funny or lame mainly because it is off-color.) The editors screen the submissions and remove identifying information before displaying them on the site in various categories (such as “TypOHs”),… More
The U.S. Court of Appeals for the Federal Circuit (CAFC) has affirmed the decision of the Trademark Trial and Appeal Board (TTAB) that Chippendales’ “Cuffs & Collar” trade dress (pictured below) is not inherently distinctive for “adult entertainment services, namely, exotic dancing for women in the nature of live performances.” In re Chippendales USA, Inc., No. 2009-1370 (Fed. Cir. October 1, 2010) (PDF).
For nearly ten years,… More
In what would appear to be the final chapter of the battle between online giant eBay and luxury jeweler Tiffany, a Southern District of New York judge has bounced Tiffany’s false advertising claim, the only claim remaining following a Second Circuit decision earlier this year.
On remand, the district court focused on whether eBay’s advertisements about the availability of Tiffany merchandise on its site misled or confused customers since at least some purportedly Tiffany products were counterfeit.… More
The Massachusetts Appeals Court has served up a reminder to Massachusetts trademark licensors that they may be subject to liability for injuries caused by defective products bearing their licensed mark, even if they are not the manufacturer or seller of the defective product. Under the "apparent manufacturer" doctrine, a nonseller trademark licensor may be liable for defective products if the licensor "participated substantially" in the design, manufacture or distribution of the products.… More
In American Needle, Inc. v. National Football League, the U.S. Supreme Court held that the National Football League was subject to suit under the Sherman Antitrust Act regarding its practices in licensing team trademarks to merchandisers. Between 1963 and 2000, the IP licensing entity set up by the league, NFL Properties, had “granted nonexclusive licenses to a number of vendors,” including American Needle, “permitting them to manufacture and sell apparel bearing team insignias.” In 2000,… More
There is something for trademark holders and service providers alike in the Second Circuit’s opinion in Tiffany (NJ), Inc. v. eBay Inc. (PDF). In that case, the court held, among other things, that eBay’s Herculean anti-counterfeiting measures precluded direct and contributory liability for trademark infringement. The court reasoned that under either theory of liability, the mere fact that a service provider, such as eBay, knows in a very general sense that its website contains counterfeit products will not,… More
As previously reported, North Face sued South Butt for trademark infringement and dilution for using the name THE SOUTH BUTT and an arc designed to evoke the well-known logo for THE NORTH FACE. On the eve of a preliminary injunction hearing, the parties reported that they had settled their claims.
Proving that history repeats itself, the TTAB recently decided a case that is strongly reminiscent of a matter we handled several years ago. In 2005 we defeated a challenge by Missiontrek Ltd. Co. to the registration of the software mark ONFOLIO, owned by our client Onfolio, Inc. Missiontrek claimed that ONFOLIO was confusingly similar to its previously-registered software mark CARTAGIO.
Instead of filing an answer to this challenge, we moved for summary judgment,… More
In a lawsuit that has grabbed the attention of the trademark community, The North Face Apparel Corp. sued The South Butt, LLC, its founder (college student Jimmy Winkelmann), and a pharmacy that sold allegedly infringing goods for using the mark THE SOUTH BUTT on clothing that resembled the style of clothing sold under the well-known mark THE NORTH FACE. According to the Complaint (PDF), South Butt repeatedly attempted to register THE SOUTH BUTT as a trademark and offered to sell its business to North Face for $1 million.… More
Welcome to the Foley Hoag Trademark & Copyright Law Blog! In this space, we will aim to keep you apprised of significant developments in the law of trademarks, copyright, false advertising, domain names and the Internet, and related areas.
We will also share with you our thoughts on key legal developments, highlight instructive real-world lessons in intellectual property policing and protection, and discuss emerging intellectual property issues. We hope you find it useful,… More