Monthly Archives: June 2016

A Brexit Primer for Trademark Owners

Keep Calm 2On June 23, the citizens of the UK voted Yes to the question “Should the UK leave the European Union?” Here are some answers to questions that we are hearing from trademark owners.

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

Brexit: Potential Consequences For European Union Trademarks

Brexit Direction Sign

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

Objective Reasonableness Can Be Central to Fee-Shifting Analysis in Copyright Cases

GyroIn Kirtsaeng v. John Wiley & Sons, Inc., the Supreme Court clarified the test for awarding attorney’s fees when applying the Copyright Act’s discretionary fee-shifting provision, 17 U.S.C. § 505. The Court held that the objective reasonableness of a losing party’s position should be given “substantial weight”—but not necessarily control—the outcome of a fee petition.  The lower courts had varied considerably in their approach to the discretionary fee-shifting analysis. … More

Trademark and Copyright Law Blog Co-Editor David Kluft to Speak on Intellectual Property and Social Media Law

MeDavid 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

Security ISCInternational 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

Trademark Red Tape: Incoming Fee Increases And Sweeping TTAB Rule Changes

ASDJune 2016

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:

Jimi Hendrix Portrait Denied Copyright Protection For Lack of Originality

HendrixFrance is often presented as a country which is quite protective of IP owners, especially in the field of trademarks and copyright.‎ However, a recent decision rendered by the Paris District Court in relation to a portrait of Jimi Hendrix clearly goes in the opposite direction.

Gered Mankowitz is an English photographer who is the author of many portraits of pop and rock stars,… More