The Original Sin of Trademark Law: Failure to Function

Last week, Foley Hoag Partner Josh Jarvis joined John Welch, Author, TTABlogger and Counsel at Wolf Greenfield & Sacks; Alexandra Roberts, Associate Professor at the University of New Hampshire Franklin Pierce School of Law; and Daniel McKinnon, Head of Global Brand Protection and Senior Counsel at New Balance, for a spirited discussion regarding “failure to function” – the threshold question of whether a purported trademark actually serves,… More

Bite-Sized Legal Tales for Your Halloween Candy Bowl

Spooky Stories of Useful Bananas, Judicial Intervention in the Candy Aisle, and the Urge to Run Away and Join the Halloween Circus

It’s the most wonderful time of the year!  Whatever the intent of the original song, I find it resonates most for me when cold air is just starting to move in rather than when it’s fully settled, and when yards are merrily bedecked in zombies rather than reindeer.… More

Watch – IP Enforcement on Online Marketplaces: Strategies for In-House Counsel

As commerce becomes increasingly electronic and decentralized, manufacturers and brand owners face new challenges in protecting and enforcing their intellectual property rights in the context of online marketplaces. IP owners, courts and the marketplaces themselves are struggling to define fair, effective and efficient approaches to protecting IP rights and consumers without hindering the free flow of online commerce.

Foley Hoag presents a webinar covering recent developments and best practices for companies seeking to protect copyrights, patents, trademarks and other IP rights against infringement in online marketplaces.

Topics Discussed

  • Legal enforcement mechanisms available in the U.S. and significant foreign markets for combating IP infringement in online marketplaces
  • Strategies for addressing ephemeral or difficult-to-identify marketplace sellers
  • Safe harbors that protect marketplaces and how to deal with the challenges they present for enforcement
  • Antitrust risks associated with collaborating with online marketplaces and others to block the sale of infringing products
  • Best practices for working with marketplaces to establish an efficient and proactive policing and enforcement program

Speakers

Upcoming Event: Boston Trademark Roundtable with the USPTO (September 17, 2019)

The American Intellectual Property Law Association (AIPLA) and Foley Hoag are pleased to invite you to an open roundtable discussion with USPTO officials Meryl Hershkowitz (Deputy Commissioner for Trademark Operations, United States Patent and Trademark Office) and Larry Stanley (Interlocutory Attorney, Trademark Trial and Appeal Board).

Topics will cover a range of USPTO trademark operations, procedures, and policies, including the recent and upcoming changes to representation of foreign applicants,… More

In Defense of Ohio State’s Application to Register THE as a Trademark

The picture you see is of a shirt from my husband’s closet – a gift I gave him a few years ago.  He is a big Ohio State Buckeyes fan, and this is sort of an inside joke for OSU football fans.  The word THE superimposed on the shape of the state of Ohio, in scarlet and gray, instantly calls to mind Ohio State.  For some reason I have never grasped,… More

Watch: IP and Advertising Basics for Cannabis Companies

Business is booming for cannabis ventures, but the legal landscape for related intellectual property protection and product advertising is rife with complications that demand special consideration, and companies should be paying attention to these issues out of the gate.

Foley Hoag presents a webinar covering a range of topics related to cannabis IP protection and promotion, including:

  • Maximizing trademark rights at the federal and state level
  • Leveraging copyright as secondary protection for brands
  • Cannabis patent basics and strategies
  • Advertising best practices and what not to say FDA regulation of cannabis and cannabis-derived products
  • CBD,…
  • More

Supreme Court to Decide Whether Trademark Owner Must Prove Willful Infringement to Obtain an Infringer’s Profits

Under 15 U.S.C. § 1117(a), trademark holder who proves infringement may receive as damages an award of profits “subject to the principles of equity.”  This phrase has divided the circuit courts going back several decades, with six circuits requiring a finding of willful infringement in order to obtain an infringer’s profits, and the other six circuits allowing for such damages without a finding of willful infringement.… More

Son of Tam: Supreme Court Strikes Down Lanham Act Section 2(a) For “Immoral” and “Scandalous” Marks

In our prior blog entries here, here, here, here, here and here, we followed the course of Matal v. Tam, the case involving the mark “THE SLANTS.”  In that case, the Supreme Court struck down a portion of Section 2(a) of the Lanham Act, 15 U.S.C.… More

EU Parliament Approves New Copyright Rules for the Internet

We had been following on this blog the heated debates around the proposed EU Copyright Directive. These debates now belong to history since on March 27, 2019, the European parliament adopted the Directive with 348 votes against 274 and 36 abstentions.

The two most controversial provisions are Article 15 (previously 11) and Article 17 (previously 13).

Article 15: Creation of a New IP Right for Publishers of Press Publications

Article 15 addresses the issue of press publications that are circulated on the internet.… More

Watch: IP Licensing Pitfalls for the Generalist In-House Counsel

Intellectual property licenses can be important in various situations ranging from large scale strategic transactions and IP litigation to day-to-day lower profile transactions. Even the latter can have far-reaching impact on a company’s proprietary assets, particularly if certain IP-related concerns are overlooked.

Foley Hoag presents a webinar covering a range of traps and tips related to IP licenses, including:

  • Identifying less obvious IP licenses in commercial agreements
  • Addressing ownership and rights to IP or technology created in common business relationships
  • Data rights: value,…
  • More

IP and Social Networks: The Paris District Court Invalidates IP Clauses of Google+ Terms of Use

It’s been rough weather for Google in France. Three weeks after the French ‎Data Protection Authority imposed a record fine against Google for non-compliance with the GDPR, the Paris District Court (“Tribunal de Grande Instance”) invalidated 38 clauses of Google’s Privacy Policy and Terms of Use for Google+, the Internet-based social media network owned and operated by Google.

This decision was rendered on February 12,… More

Supreme Court: Copyright Owners Must Wait For Registration Certificate Before Suing

On March 4, 2019, the United States Supreme Court held that, with certain exceptions, a copyright owner must obtain a copyright registration certificate from the Copyright Office  before filing a copyright infringement suit. The unanimous opinion in Fourth Estate Public Benefit Corp. v. Wall-Street.Com, LLC, authored by Justice Ruth Bader Ginsburg, affirmed the Eleventh Circuit and resolved a split among the circuit courts of appeal.… More

BIG MAC Trademark Not That Big in the EU: How McDonald’s Failed to Prove Genuine Use of its EU Trademark

On January 11, 2019, the Cancellation Division of the European Union Intellectual Property Office (“EUIPO”) rendered a surprising decision that revoked in its entirety the McDonald’s Company’s BIG MAC trademark registration, which had been registered in the EU since December 1998.

This is the latest chapter in a fight between McDonald’s and Supermac’s, a competing chain that operates fast-food restaurants in both parts of Ireland.… More

Cultural and Intellectual Property Appropriation: Disputes Over Culturally-Inspired Fashions

If you haven’t heard already, New York Fashion Week is here! As usual, a lineup of awe-inspiring shows is expected to roll out over the next several days, as it does every September and February, highlighting the latest fashion trends of some of world’s most famous designers.  One of the big stories surrounding New York Fashion Week this year is the amount of cultural diversity expected to appear on the runway. … More

Law Students Seek to “Free Rapunzel from The Trademark Tower” by Opposing RAPUNZEL as a Trademark for Dolls

In an interesting case pending before the TTAB, law students from the Suffolk University IP and Entrepreneurship Clinic have opposed an application filed by United Trademark Holdings, Inc. to register RAPUNZEL as a trademark for dolls and toy figures.  The students, led by clinic director Loletta “Lolita” Darden, represent Professor Rebecca Curtin, a trademark law professor and mother of a young girl who has purchased dolls. … More