“Forest of Light” Trade Dress Claim Nixed; Trademark Claim Survives

Picture yourself at dusk along the river, walking through a massive outdoor art installation featuring tens of thousands of individually-placed spheres of light on short stalks, reminiscent of blooming flowers. Ok, now stop and answer this: what kind of intellectual property would you use to protect this installation?  If you answered “trade dress,” you get a frowny-face sticker, at least according to the Eighth Circuit’s recent opinion in Munro v.… More

UEFA Starball “Curves” and “Illusions” Bounced by Copyright Office

The “Starball” logo of the Union des Associations Européennes de Football (“UEFA”) consists of a round ball made up of black stars, with white polygons in the negative space between the stars. In 2016, UEFA filed an application with the United States Copyright Office to register the Starball as a work of two-dimensional visual art. The Copyright Office was not impressed and, on July 30,… More

Massachusetts to Adopt the Uniform Trade Secrets Act

With H. 4732 (and amendment H. 4868) sitting on Massachusetts Governor Charlie Baker’s desk, Massachusetts is finally on the verge of adopting the Uniform Trade Secrets Act (“UTSA”).  The UTSA was published by the Uniform Law Commission in 1979 and amended in 1985, at which time many states began adopting it.  New York, and possibly North Carolina and Alabama (there is some debate about whether their legislation has expressly adopted the text of the Act),… More

Copyright Office Denies Protection for “Unique” Product Packaging

If you are having trouble obtaining a federal trademark registration for a product’s packaging, some lawyer has probably mentioned to you that copyright protection is a potential alternative or supplement. This is good advice – to a point. Copyright registration is relatively cheap, nobody will pester you about secondary meaning or use in interstate commerce, and you don’t need consumer confusion evidence to prove infringement. However, when it comes to creative expression,… More

Should Patent and Trademark Applicants Be Required To Pay USPTO Attorneys’ Fees?

The Federal Circuit just issued its en banc decision in Nantkwest v. Iancu, concluding that the proper statutory construction of Section 145 of the patent statute, which allows patent applicants to file actions in a federal district court to challenge the denial of patent applications by the Patent and Trademark Office (USPTO), does not require the challengers to pay the USPTO’s attorneys’ fees.… More

How to Protect Your Trademarks When You Can’t Protect Your Trademarks

This article was published first in Cannabis Industry Journal

While the USPTO might not register your trademark, there are still some tools available to protect your intellectual property.

Federal trademark registrations are invaluable tools for emerging businesses. They put the world on notice of a company’s name; they can secure nationwide priority over others using similar names; they distinguish a product in the marketplace;… More

Why Is the European Union’s Proposed Copyright Directive So Controversial?

European harmonization in the field of copyright has always been challenging because the balance between authors’ rights and public interest is struck fairly differently from one country to another. The challenges of “the digital age” and how copyright should evolve considering the new possibilities offered by the internet only adds fuel to this fire.

The new Copyright Directive in the Digital Single Market is an attempt from the European Union to better allocate the revenues derived from the internet by creating new obligations for internet platforms to prevent copyright infringements and requiring them to pay for linking to articles or using snippets.… More

Restating the Obvious: Beer and Wine are Related Goods for Trademark Purposes, Except when They Aren’t

Beer and wine are related goods for trademark purposes. Right? We’ve seen that truism announced by the Trademark Trial and Appeal Board (TTAB) time and time again. So, do you really have to prove it from scratch in every trademark proceeding?

Yes, you do. Sure, it may seem obvious that consumers expect beer and wine to emanate from the same source. After all, they are both beverages,… More

Enforce Your Trademarks Now Or You Might Be The Next Red Hen

If you needed another reason to take action against a third party using your trademark – and you shouldn’t need another reason – consider the Red Hen restaurant.  Which Red Hen?  That’s the point.

As everyone by now knows, White House press secretary Sarah Huckabee Sanders posted a tweet over the weekend stating:

Last night I was told by the owner of Red Hen in Lexington,… More

No, Virginia, You Can’t Just Copy Stuff You Find On the Internet, Even if You Don’t Notice the Copyright Notice

I usually don’t write a whole blog post just to disagree with a sitting federal judge, even when it’s about copyright law’s most notorious disagreement-generating machine: fair use.

This is an exception. A recent decision by the Eastern District of Virginia may cause some individuals and non-profits to believe that it’s permissible to copy and use “publicly available” photos from the internet, as long as they don’t know whether or not the photos are protected by copyright.… More

Can a Trademark Licensee Keep Using the Mark after the Licensor Files for Bankruptcy? Circuit Split Heads to U.S. Supreme Court

All you trademark lawyers better sit down, because this may come as a shock: You are not “intellectual property” lawyers . . . at least not according to Section 11 U.S.C. § 101(35A) of the Bankruptcy Code, which intentionally omits trademarks from the definition of “intellectual property.”

Owing in part to this omission, there is an ongoing circuit split as to the rights of a trademark licensee when a licensor declares bankruptcy.… More

Flags as Trademarks: What are the Rules of the Road?

I never paid a lot of attention to Flag Day, until the year that my daughter was born on June 14.  Now Flag Day is a special day for our family, and of course there is a lot of flag waving on Independence Day which comes hot on its heels.  So this seems like a good time to review the rules on when you can register and use images of flags as trademarks.… More

Can We Give State Cannabis Trademarks Some Teeth While Waiting for a Federal Solution?

Cannabis trademarks. By now, most IP lawyers know two things about them.

First, even though cannabis is legal in an increasing number of states (9 allow recreational use; 29 allow medical use), the United States Patent and Trademark Office (USPTO) is refusing applications to federally register cannabis trademarks, no matter the home state of the applicant, until the substance gets reclassified by or removed from the Controlled Substances Act (which doesn’t seem to be on the immediate horizon).… More

The Thin Dull Line: Are These Auto Interiors Sufficiently Creative for Copyright Protection?

Are automobile interior designs eligible for copyright protection? Last month, we wrote about the Copyright Office Review Board’s (CORB’s) allowance of the registration of a three-dimensional pattern for an automotive floor mat. Does this mean that every little feature of your car is now eligible for copyright protection?

Not according to CORB, which recently released its opinion in the matter of Novem Car Interiors.… More

Watch: Designs for the Generalist In-House Counsel

What does the generalist in-house counsel need to know about protecting designs? Designs occupy a unique space in intellectual property. In the U.S., designs are protected under the patent laws, while in Europe, designs are typically protected under industrial design law. Overlapping protection for designs also exists in the U.S. and Europe through copyright law and through trademark law as it applies to trade dress.

Foley Hoag LLP presents a webinar offering guidance for in-house counsel regarding the basics of design protection from U.S.… More