I Think That I Shall Never See, Trademark Injunctions If Confusion Is Unlikely

TreeIn 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, sitting by designation and writing for a three-judge panel, the First Circuit held that the District Court had no basis upon which to include trademark relief in the… More

Defamation and the Common Interest Privilege in the Construction Industry

Construction guyConstruction projects often involve a complex array of contractors, subcontractors, banks, bonding agents, architects, engineers and so on.  With that many parties depending on each other to complete a project, negative statements about the quality and integrity of other peoples’ work often arise. Such statements, if false, may give rise to defamation claims. However, even a false statement may be protected from liability by a “common interest” privilege. Two recent Massachusetts cases address what kinds of statements qualify for common interest privilege protection in matters related to the construction industry.


Pushing the Envelope on Initial Interest Confusion Claims — Multi Time Machine, Inc. v. Amazon.com

tConsider 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, but not the one that you requested.  As you review the results page, nothing on it explicitly… More

Trademark Strategies for Start-Up Companies

GyroMost 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 — and avoid big headaches — down the road.

A trademark is a word, design or other designation that… More

Statute Criminalizing Election Campaign Lies Found to Violate First Amendment and Article 16

CaptureOn August 6, 2015, the Massachusetts Supreme Judicial Court (SJC) in Commonwealth v. Lucas struck down Massachusetts General Laws, Chapter 56, § 42 (Section 42), which criminalized the utterance or publication of “any false statement in relation to” a candidate for public office or a ballot question. Violations of the statute were punishable by a thousand dollar fine or up to six months imprisonment. Justice Robert J. Cordy, writing for a unanimous court, held that Section 42, which had been around since 1946, violated both the First Amendment and… More

The Case of the Missing Designated Agent: Omitting Subsidiaries From Your DMCA Filing May Be Costly

HollywoodMany of our fine readers are by now well acquainted with the Digital Millennium Copyright Act (DMCA), the late-‘90s era addition to the Copyright Act intended to address an increasingly digital copyright landscape.  The DMCA includes treaty compliance updates, anti-circumvention provisions and, most important for present purposes, the Online Copyright Infringement Liability Limitation Act (OCILLA), 17 U.S.C. § 512, section (c) of which provides a safe harbor for internet “service providers” that host content uploaded by their users.  Because Section 512 is perhaps the most frequently discussed portion… More

Harry Potter Lawsuits And Where To Find Them


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, and even the occasional breaking and entering. Indeed, it appears that Ms. Rowling and her works pop up in court more than any author since… More

A Tale Of Trade And Trademarks: General Cigar Co., Inc. v. Empresa Cubana Del Tabaco

CaptureThe 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), the Cuban embargo, as codified in the Cuban Assets Control Regulations, 31 CFR Part 15 (CACR), still prohibits most transactions between persons subject to US jurisdiction and Cuba. … More

Lego Mark Wars: Toy Giant Snaps Together Two Favorable 3D Trademark Rulings in Europe

2On 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.  However, the patents were invalidated in Canada in 1988 as a result of an action brought by a Canadian competitor, Mega… More

Right of Publicity Claims by Athletes Nearly Shut Out in 2015

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. However, things went downhill after that: other than Davis, the first six months of 2015 have not been kind to right of publicity claims in the sports world.  Here is… More

Copyright Law: The Silent © in Same-Sex Marriage

WhyDontYouLast week, the focus of the legal world was not on intellectual property, to put it mildly. However, copyright law did have a small and somewhat silent, but still important, role in the Supreme Court jurisprudence that led to the legalization of same-sex marriage in Obergefell v. Hodges. In fact, the reasoning of United States v. Windsor, the 2013 precursor to Obergefell which struck down the Defense of Marriage Act (DOMA), relied in large part on a 1956 copyright case.

Why Don’t You Marry the Girl?


TTAB Balks at Parody Argument in Yankees Trademark Case

JuiceIn honor of Foley Hoag’s new New York office, we here at the Boston office reluctantly present a victory by the New York Yankees — albeit not one won on the baseball diamond.

In a trademark opposition that has been underway since 2009, the Yankees have successfully blocked the registration of two marks intended to parody their own: (1) the word mark, THE HOUSE THAT JUICE BUILT (instead of THE HOUSE THAT RUTH BUILT); and (2) a design mark that replaces the Yankees’ baseball bat with a syringe.


5 Things You May Not Know About Trademarks in France

parisFoley 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:

On the French territory, two types of marks coexist: French trademarks issued by the French Trademark Office (INPI), that are valid on the French territory only, and Community trademarks issued by the Community Trademark Office which is part of the OHIM (“Office for Harmonization in the… More

Political Speech, Trademarks And The Definition of “Goods or Services”

3Last 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. Did the Senator settle one day too early?

Hershey v. Hershey

As we previously… More

Pretzel Logic: Federal Circuit holds that TTAB Failed to Consider Mark as a Whole

webcontentAn 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.  It later followed the standard practice of re-applying for the Principal Register based on acquired distinctiveness.  At that point, however, snack titan Frito-Lay stepped in:  it… More