Category Archives: Trademark

Upcycling at the Super Bowl

As we approach the Super Bowl, the world of “upcycling” also takes the stage. Upcycling refers to the process where garments or other materials are reused and transformed into a new or unique item.

This season, celebrities Taylor Swift, Simone Biles, and others have worn unique designs based on NFL jerseys and related team-branded gear. These upcycled garments were created by Kristin Juszczyk, the wife of San Francisco 49ers fullback Kyle Juzczyk and an up-and-coming designer in her own right.… More

How Original! The Oscars and the Craft of Derivative Works

Happy Oscar season! As we ramp up for film’s most anticipated event, the lists start flying for the year’s potential winners. Frequently, the Academy favors somewhat obscure, esoteric films—so it might be surprising to learn how many nominees are, in fact, adaptations of existing art. Look no further than this year’s top contenders for examples of this, including Oppenheimer, American Fiction,… More

WEBINAR: Top IP Cases in 2023

Who said there’s no looking back?

It is crucial to consider key takeaways from the most important IP cases in 2023 when planning for 2024. Foley Hoag presented a 60-minute webinar on Wednesday, January 24, 2024, offering guidance on what we learned last year and what to prepare for in the new year. Our speakers focused on developments in trademark, copyright, patent and trade secret law.

 … More

Five Trademark Questions to Ask in the New Year

As we ring in 2024, sip some champagne and make a resolution to check in on your trademark portfolio more often.  It misses you!

Here are a few productive questions to ask:

  1. Do your registrations cover your reality?  You may have launched new brands or drastically redesigned your logo since you last interacted with the USPTO.  Or perhaps your business has expanded or evolved,…
  2. More

How Do You Like Them Apple (Trademarks)? Malus Musings on Brand Protection

With “spooky season” dominating October holiday talk, it’s easy to forget poor old National Apple Day or simply Apple Day, which took place last Saturday and is observed every October 21. According to Wikipedia, one can celebrate Apple Day in any number of ways, from “apple games in a garden to large village fairs with cookery demonstrations, games, apple identification, juice and cider, gardening advice, and the sale of many hundreds of apple varieties.” Those activities are all well and good – and I fully appreciate that “bobbing for apples” wasn’t listed because,… More

WEBINAR: Legal Ethics for In-House Attorneys Handling Copyright, Trademark & Advertising Matters

Ethical duties are paramount in any legal practice. Matters relating to copyright, trademark and advertising law give rise to some special ethical considerations. Even unintentional missteps can be detrimental to the attorney, and their client.

In this 60-minute webinar, designed for in-house counsel, we discussed how to identify and address ethical issues to guard against potentially irreversible consequences.

Topics

  • Oaths filed with the Patent and Trademark Office,…
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WEBINAR: Trademark and Advertising Basics for Cannabis Companies

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

Foley Hoag presented a webinar covering a range of topics related to cannabis trademark protection and promotion of cannabis-related goods and services, including:

  • Maximizing trademark rights at the federal and state level
  • Leveraging alternative IP strategies for brands
  • Advertising best practices and what not to say
  • FDA regulation of cannabis and cannabis-derived products
  • CBD,…
  • More

A Tale of Two Gorillas: An Underdog (Under-Ape?) Story

DK

March 8 was, according to questionable sources, National Retro Video Game Day in the US.  As one of Foley Hoag’s several resident video game nerds, this reminded me of one of my favorite video-game-related IP disputes.

In the 1970s, a nearly century-old Japanese playing card company called Nintendo started to branch out into electronic gaming, and in 1979 started a coin-operated arcade gaming division. … More

Missing Appointments: Supreme Court Grants Certiorari in Arthrex v. Smith & Nephew

While all eyes have been trained on the confirmation hearings from last week, the Supreme Court made news in the IP world. The Court granted certiorari in Arthrex v. Smith & Nephew (Nos. 19-1434, -1452, -1458), a decision analyzing the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2. In Arthrex, a panel of the Federal Circuit held that the statutory scheme for appointing administrative patent judges (APJs) of the Patent Trial and Appeal Board violates the Appointments Clause.… More

SCOTUS Willfully Unfastens Infringer’s Profits From Its Mental State

Yesterday, the Supreme Court decided a trademark damages question that has long divided courts across the country.

For decades, a trademark owner’s chances of recovering an infringer’s profits in litigation varied depending on where the case was pending.  The Lanham Act allows an award of an infringer’s profits “subject to the principles of equity” – but what does that mean?  Can an unknowing infringer be on the hook for its profits,… More

CORONASPLOITATION-19: A Brief Survey of Recent COVID-19-Related Trademark Applications

Benjamin Franklin famously said that “nothing in this world can be said to be certain, except death, taxes, and the entrepreneurial spirit of Americans to turn a crisis into a business opportunity.”  That quote may not be entirely accurate, but the U.S. federal trademark register serves as a historical record of this entrepreneurial spirit, from the various applications related to 9/11 in the wake of that tragedy,… More

The Top 5 Most Fashionable Intellectual Property Disputes To Walk This Year’s Runways at New York Fashion Week

New York Fashion Week (NYFW) officially kicks off tomorrow, February 7, 2020, with a week’s worth of captivating runway shows from top designers.  The timing, however, could not be worse, since the 92nd Academy Awards is airing on February 9th, dead smack in the middle of Fashion Week.  Due to this scheduling snafu, designer Tom Ford, who styles top actresses walking the red carpet at the Oscars,… More

Watch: Top IP Cases in 2019 In-House Counsel Need to Know

Reviewing Cases in 2019 to See 20-20 in 2020

Who said there’s no looking back? It is crucial to consider key takeaways from the most important IP cases from 2019 when planning ahead for the new year. Foley Hoag presents a webinar offering guidance on what we learned last year and what to prepare for in the new year.

Our speakers focus on 2019 developments in trademark, copyright,… More

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, … More

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

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

Watch: Top IP Cases in 2018 In-House Counsel Need to Know

Who said there’s no looking back? It is crucial to consider key takeaways from the most important IP cases from 2018 when planning for 2019. Foley Hoag presents a webinar offering guidance on what we learned this year and what to prepare for in the new year.

Our speakers focus on 2018 developments in copyright, patent and trademark law.

Speakers

Smiles Like Teen Spirit: “Smiley Face” Copyright and Trademark Litigation

You may think the phrase “million-dollar smile” is just a metaphor, but a smile could cost you millions of dollars in litigation damages if you aren’t careful, at least according to Nirvana LLC, the legal entity that owns the intellectual property rights relating to the 90’s rock band Nirvana.

Nirvana’s Smiley Face Logo

If you thought the image of a yellow smiley face was too common to be owned by anyone,… More

Under the Sea: Sneaky Trademark Filings for Cautious Companies

The general rule of thumb for trademarks in the U.S. – and everywhere else, for that matter – is “the earlier, the better.”  It’s almost always the right move to file a trademark application as early as possible, and well in advance of a product or service announcement, both to (a) minimize the possibility of conflicting marks and filings; and (b) mitigate the potential for attempted trademark and domain name “squatting” that inevitably follows a well-publicized product/service announcement. … More

Watch: Social Media Pitfalls and Best Practices

Co-Hosted by Foley Hoag LLP and ACC – Northeast

Social media platforms present countless opportunities for companies looking to connect to consumers and clients in real time. But, like so much else in our connected age, these opportunities come with a host of risks ranging from minor public relations blips to unpleasant regulatory run-ins with government agencies, and from DMCA takedowns to right of publicity lawsuits.

Foley Hoag,… More

The Ultimate Girls Versus Boys Battle Of The Trademarks: Girl Scouts Sue Boy Scouts for Trademark Infringement and Dilution

When I heard that the Girl Scouts of the United States of America filed a lawsuit against the Boy Scouts of America last week, I was fascinated.  As a former Girl Scout and troop leader myself, who also happens to practice trademark law, I have a lot of thoughts about this case.  Many people predicted that the Boy Scouts’ decision to admit girls last year would put the organizations on a collision course. … More

MoMA and New York City Shut Down Trademark Infringing Eateries on the Same Day

Disputes over restaurant trademarks are not exactly rare. However, we couldn’t help noticing that on September 28, 2018, injunctions issued hours apart in two restaurant name disputes involving high profile New York marks.

City of New York v. Tavern on the Green

The iconic Tavern on the Green restaurant in Central Park is owned by the City of New York, but has been operated by concessionaires since it opened in 1934.… More

Just in Time for IPO’s Annual Meeting in Chicago: The Official Top Ten CHICAGO Trademark Filings

In anticipation of our visit to Chicago next week for the Intellectual Property Owners Association’s Annual Meeting, we took a tour through the USPTO’s trademark database in search of Chicago-themed trademarks. Among marks consisting of the word CHICAGO and no other words, we found quite a few gems, including some whose histories illustrate interesting trademark issues. Unsurprisingly, many of these marks have faced resistance on the basis that they lack distinctiveness because they merely describe the geographic origin of the goods or services they seek to identify,… More

Creative Trademark Enforcement Part V: Cease-N-Desist

Over the past few years, we have seen numerous instances of companies protecting their trademarks in creative ways – approaches that leverage humor and the brands themselves in order to achieve an acceptable legal outcome while simultaneously promoting the company and its brands, thus minimizing the risk of public relations blowback. In this “Creative Trademark Enforcement” series of blog posts, I’m continuing to explore some of the more interesting takes on this approach,… More

“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

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

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

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

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

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

Seattle Trademark History Tour, Part 10: Behaving Badly at the St. Francis Since 1907

This year, the great city of Seattle, Washington is the location of both the International Trademark Association Annual Meeting (May 19-23) and the American Intellectual Property Law Association Spring Meeting (May 15-17). If you are one of the many lawyers attending these events and you want a Seattle trademark experience, you could do the obvious and visit locations associated with the city’s famous modern brands.… More

Seattle Trademark History Tour, Part 8: The Invention of the Super Market

This year, the great city of Seattle, Washington is the location of both the International Trademark Association Annual Meeting (May 19-23) and the American Intellectual Property Law Association Spring Meeting (May 15-17). If you are one of the many lawyers attending these events and you want a Seattle trademark experience, you could do the obvious and visit locations associated with the city’s famous modern Washington became the 42nd state in 1889,… More

Seattle Trademark History Tour, Part 7: Ostrea Lurida & the San Francisco Oyster House

This year, the great city of Seattle, Washington is the location of both the International Trademark Association Annual Meeting (May 19-23) and the American Intellectual Property Law Association Spring Meeting (May 15-17). If you are one of the many lawyers attending these events and you want a Seattle trademark experience, you could do the obvious and visit locations associated with the city’s famous modern brands.… More

Seattle Trademark History Tour, Part 6: Old German Lager Won’t Give You a Headache

This year, the great city of Seattle, Washington is the location of both the International Trademark Association Annual Meeting (May 19-23) and the American Intellectual Property Law Association Spring Meeting (May 15-17). If you are one of the many lawyers attending these events and you want a Seattle trademark experience, you could do the obvious and visit locations associated with the city’s famous modern brands.… More

Seattle Trademark History Tour, Part 5: The Store Where Your Credit Is Good

This year, the great city of Seattle, Washington is the location of both the International Trademark Association Annual Meeting (May 19-23) and the American Intellectual Property Law Association Spring Meeting (May 15-17). If you are one of the many lawyers attending these events and you want a Seattle trademark experience, you could do the obvious and visit locations associated with the city’s famous modern brands.… More

Seattle Trademark History Tour, Part 3: The Feuding Fremont Undertakers

This year, the great city of Seattle, Washington is the location of both the International Trademark Association Annual Meeting (May 19-23) and the American Intellectual Property Law Association Spring Meeting (May 15-17). If you are one of the many lawyers attending these events and you want a Seattle trademark experience, you could do the obvious and visit locations associated with the city’s famous modern brands.… More

Whois, We Hardly Knew Ye: GDPR Spells Doom For Domain Name Ownership Transparency

By now, our readers are likely familiar with the General Data Protection Regulation (“GDPR”), the sweeping, European Union-wide legal and regulatory regime that provides enhanced protections for personal data.  The GDPR, which goes in effect on May 25, 2018, is expected to reshape the digital data landscape in the EU and beyond.  My colleague Catherine Muyl (from our Paris office) provided a helpful GDPR overview back in January,… More

Seattle Trademark History Tour, Part 1: The “Gargeline” Shootout at Pioneer Square

This year, the great city of Seattle, Washington is the location of both the International Trademark Association Annual Meeting (May 19-23) and the American Intellectual Property Law Association Spring Meeting (May 15-17). If you are one of the many lawyers attending these events and you want a Seattle trademark experience, you could do the obvious and visit locations associated with the city’s famous modern brands.… More

The Black Hole of Misappropriation: Astronaut’s Right of Publicity and Trademark Claims Survive Summary Judgment

Is astronaut David Scott more like fellow astronaut Buzz Aldrin or NASA pilot Chuck Yeager? Scott was the Commander of the Apollo 15 mission and the seventh person to walk on the moon, so the obvious answer is Aldrin. However, when it comes to the right of publicity, Scott has much more in common with Yeager, at least according to Judge Nathanael Cousins of the Northern District of California in Scott v.… More

Port in Porto, Portugal: Wine And Geographical Indications At PTMG

I am in Porto, Portugal for the spring conference of the Pharmaceutical Trade Marks Group, and I have enjoyed learning a bit about port wine – and the associated geographical indication – while I am here.  Port, of course, is a sweet, heavy wine popular as an after-dinner drink, though it comes in various varieties, including a white version handy for mixing cocktails.  The essential quality of port arises from the process by which it is made,… More

Creative Trademark Enforcement Part IV: Going “Olde” School

Over the past few years, we have seen numerous instances of companies protecting their trademarks in creative ways – approaches that leverage humor and the brands themselves in order to achieve an acceptable legal outcome while simultaneously promoting the company and its brands, thus minimizing the risk of public relations blowback. In this “Creative Trademark Enforcement” series of blog posts, I’ll be exploring some of the more interesting takes on this approach,… More

The Shape Of My Heart: A Guide To Chocolate Shape Trademarks For Your Valentine

The past year has been an active one in the chocolate trademark wars, as confectionery giants attempt to use trademark law to protect the shapes of iconic candy products.  In the US, and in many other jurisdictions, companies can protect product shapes or configurations, but only if they are sufficiently distinctive that the design functions as an indicator of source.  Chocolatiers have had varying degrees of success in convincing trademark offices and courts that their confections have attained that status. … More

Watch: Brand Management for In-House Counsel

The Intersection of Trademarks, Advertising and Corporate Social Responsibility

Protecting the value of your corporate brand is a critical mission. As companies are increasingly asked to make disclosures regarding their efforts to address social and environmental risks, these disclosures create both opportunities and challenges for those entrusted with protecting a company’s intangible assets.

In this webinar, we explore the interrelationship between trademarks, false advertising and emerging compliance requirements in the field of corporate social responsibility (CSR).… More

From Runway To Replica: The Most Fashionable Intellectual Property Infringement Beefs Of 2017

New York Fashion Week (NYFW) 2018 kicks off on Thursday, February 8 through Friday, February 16, with a full schedule of exciting and exhilarating runway shows. This year’s designers include many of the usual faces, like Tom Ford, Ralph Lauren, and Jason Wu, to name a few. As usual, there is some controversy concerning designers that are notably missing from this year’s schedule, like Georgina Chapman’s label Marchesa.… More

Don’t Mess With Grumpy Cat’s Intellectual Property!

In my never-ending quest to write articles that my children would read, I bring you the case of Grumpy Cat.

The guardians of Grumpy Cat (whose actual name is Tardar Sauce), through its company, Grumpy Cat Limited, developed a cottage business in commercially exploiting the likeness of Grumpy Cat for use on, among other things, T-shirts, coffee mugs, books and calendars. … More

Creative Trademark Enforcement Part III: The Southern Hospitality Of Old No. 7

Over the past few years, we have seen numerous instances of companies protecting their trademarks in creative ways – approaches that leverage humor and the brands themselves in order to achieve an acceptable legal outcome while simultaneously promoting the company and its brands, thus minimizing the risk of public relations blowback. In this “Creative Trademark Enforcement” series of blog posts, I’ll be exploring some of the more interesting takes on this approach,… More

Creative Trademark Enforcement Part II: Shutting Down The Upside Down

Over the past few years, we have seen numerous instances of companies protecting their trademarks in creative ways – approaches that leverage humor and the brands themselves in order to achieve an acceptable legal outcome while simultaneously promoting the company and its brands, thus minimizing the risk of public relations blowback. In this “Creative Trademark Enforcement” series of blog posts, I’ll be exploring some of the more interesting takes on this approach,… More

Creative Trademark Enforcement Part I: Velcro Companies Aim To Sing You Into Submission

Readers of this blog are likely aware that trademark owners are required to actively monitor, police, and enforce their trademarks against infringement and misuse.  Failure to do so can result in limitation of and, in the most extreme cases, a complete loss of trademark rights.  It is thus understandable that trademark owners and their lawyers tend to handle such matters via decidedly humorless cease-and-desist letters,… More

Trademark Case Too “Banal” To Justify Social Media Gag Order

Before the social media era really kicked into gear, I was representing a defendant in a defamation case who was being sued by a very wealthy plaintiff. Because of his charitable generosity, the plaintiff’s name was on everything in town (I’m not saying which town), including schools, buildings, bus stops and highway exit signs. There was even (I swear this is true) a statue of the plaintiff’s mother in the city park across from the courthouse.… More

Watch: European Trademark and Design Basics for U.S. In-House Counsel

With many U.S. companies increasingly eyeing the global marketplace for their products and services, an understanding of U.S. intellectual property protection isn’t enough.

Joshua Jarvis, Catherine Muyl and Marion Cavalier presented a webinar offering guidance for in-house counsel regarding the basics of trademark and design protection in the European Union. Viewers will learn about the opportunities and pitfalls to be on the lookout for when looking to secure,… More

. . . And Your Name Is? Court Orders Anonymous Parallel Importer To Reveal Itself In “Lever Rule” Trademark Challenge

We recently hosted an event at the firm where we discussed legal issues concerning parallel imports in the transportation industry, so a recent decision by the U.S. Court of International Trade discussing “Lever Rule” protection caught my attention.  To those who do not traffic in the world of parallel imports, the Lever Rule is a tool available to trademark owners to limit unauthorized imports of gray market goods bearing the owner’s mark. … More

A History Of GOLDEN GATE Trademarks For Alcoholic Beverages

In celebration of the Intellectual Property Owners Association’s Annual Meeting, currently underway in San Francisco, we offer a brief tour through some GOLDEN GATE-themed trademarks.  As a prominent feature of San Francisco’s geography, even before the iconic bridge was built, the Golden Gate is a popular theme in trademarks for local goods, both in word and image form.  For fun and focus, we have chosen to highlight GOLDEN GATE trademarks for alcoholic beverages.… More

Europe’s Answer To “I Love New York”: The Official Trademark Of Venice

This summer, I was lucky enough to vacation with family and friends in Venice, Italy.  Highlights included seeing the traditional city sights, riding around the canals in a gondola, seeing glass being blown on the Island of Murano, and eating wonderful food.  Lowlights included knocking down a stop sign with our rental car (my brother’s driving skills have sadly not improved over the years) and getting eaten alive by bugs (a theme that runs through all of my summer vacations).  … More

Trademark Investigations In The Age Of Social Media: When Can You “Friend” An Adversary?

I have often called my friend and colleague, Dave Kluft, the master of opposition research.  When we have a trademark case together, he can be counted upon to think deeply about our adversaries, see the world through their eyes, and uncover every small detail about them that could possibly be relevant to our case.  Most of us mere mortals, however, limit our investigations to working hours and use traditional methods. … More

Trademark Office Issues Tequila Certification Mark Just In Time For National Tequila Day

National Tequila Day is celebrated on Monday, July 24. Tequila is made with the distilled extract of the blue agave plant, which grows in and around the city of Tequila and other parts of the state of Jalisco, Mexico. Although agave has been used for the manufacture of fermented beverages since pre-Columbian times, the ancestor of what we now know as “tequila” was reportedly first made in the 16th century by Spanish conquistadors who had run out of imported brandy (which is why they originally called it “Mezcal Brandy”).… More

Celebrity Trademark Watch: Gene Simmons Claims Exclusive Right In Hand Gesture

Earlier this month, KISS guitarist Gene Simmons filed an application with the United States Patent and Trademark Office (“USPTO”) to register the “devil’s horns” hand gesture, which he routinely flashes at rock shows, as a trademark for “entertainment, namely, live performances by a musical artist; personal appearances by a musical artist.”  This bold move brings up a number of interesting questions, ranging from “Does the gesture really function as an indicator of source that points to Simmons?” to “How will he ever enforce it?” to “Can you really claim trademark rights in a hand gesture?”  For a number of reasons,… More

Watch: Protecting Product Configurations, Packaging, and Designs

What In-House Counsel Needs to Know

Product configuration and packaging play an integral part in consumer choice and can often set a particular product apart from its competition on the store shelf. Because companies heavily invest in creating unique product designs and packaging that encourage brand association, business owners should also consider protecting those investments as intellectual property.

Peter SullivanNatasha Reed and Jenevieve Maerker presented a webinar offering guidance for in-house counsel regarding the different types of intellectual property that may protect product configurations and packaging in the United States,… More

A Gem On The Mediterranean – 10 Things To See And Do While Attending The INTA Annual Meeting In Barcelona

Barcelona may be my favorite city in the world.  It is certainly a top contender.  Because one of my dearest friends is a native Barcelonian, I’ve been fortunate enough to have visited multiple times, and I have also had one of the best tour guides you could hope for.  So when I found out that the 2017 International Trademark Association (INTA) Annual Meeting (May 20 -24) was being held in BCN (a common abbreviation for the city and its airport),… More

10 Trademark Cases About Yo Mama

Anna Jarvis led the efforts to establish the first official celebration of Mother’s Day in 1908, during which she honored her own mother, Ann Maria Reeves Jarvis, a Civil War-era social activist. But about a dozen years after that first celebration, Anna Jarvis had become the holiday’s most vocal opponent. Why? Commercialization. The floral and greeting card industries had already taken over her idea,… More

Marijuanaville v. Margaritaville: Registering Trademarks For Chemically Induced Mental Paradises

Although marijuana is becoming legal to varying degrees in an increasing number of states, your chances of getting a marijuana trademark registered with the United States Patent and Trademark Office (PTO) are still grim. In order to register a trademark with the PTO, the applicant has to show that the goods or services with which the mark will be used are permitted under federal law. Therefore, until marijuana gets reclassified by or removed from the federal Controlled Substances Act,… More

Court Issues Temporary Restraining Order Against Invention Patenting and Promotion Company for Unfair and Deceptive Trade Practices

There are many businesses focused on helping inventors develop and monetize their ideas.  There are companies that, for instance, help people seek patents on their inventions, license their inventions, turn their ideas into tangible products, and promote those products.  World Patent Marketing in Florida bills itself as one of those companies.  But according to a complaint filed by the Federal Trade Commission this month,… More

A Hefty False Advertising Case: When the Competition Calls You Wimpy

If you’re interested in garbage, the crass objectification of male celebrities, or both – or if you consider the two roughly equivalent – have I got a false advertising case for you!  Despite their “Don’t Get Mad; Get Glad” tagline, the makers of Glad trash bags got pretty mad at a recent advertising campaign launched by their competitor, Hefty. So mad, in fact, that they filed a complaint with the National Advertising Division (NAD) of the Better Business Bureau.… More

Watch: Internet Takedowns and Domain Name Disputes for the Generalist In-House Counsel

As all aspects of business inexorably shift toward online, it is not surprising that intellectual property infringement, cybersquatting, and related internet abuses abound. Luckily, there are various procedures available by which aggrieved companies can seek relief short of litigation.

Joshua Jarvis, David Kluft and Anthony Rufo presented a webinar offering guidance for in-house counsel regarding internet takedowns and domain name disputes,… More

The PARIS BEACH CLUB Trademark. Get It?

En route to Paris for the spring conference of the Pharmaceutical Trade Marks Group, I am contemplating trying to pay a visit to the PARIS BEACH CLUB.  Paris Beach Club!  Get it?  It’s a joke because, as everyone of course knows, Paris is land-locked and has no beach.

Or so goes the reasoning of one of my favorite Trademark Trial & Appeal Board cases,… More

Sexual Harassment Parody Commercial Held Not To Violate Lanham Act

Section 43(a) of the Lanham Act prohibits false or misleading statements in commerce that are likely to cause confusion as to a person’s affiliation, approval or sponsorship of someone else’s commercial activities. Here’s an easy example: You take an iconic photograph of a celebrity and, without the celebrity’s permission, incorporate it into the wrapper of a candy bar you are selling. Consumers are confused into thinking the celebrity has endorsed the candy bar,… More

Watch: Strategies for In-House Counsel Selecting Trademarks for Pharmaceuticals and Biologics

Naming pharmaceutical and biologic products presents unique challenges from both trademark and regulatory perspectives. In addition to the traditional marketing goals of trademark selection, companies evaluating names for medications must also consider safety issues, false advertising concerns, and more. Importantly, pharmaceutical trademarks must pass muster not only with the Patent and Trademark Office (PTO), but also with the Food and Drug Administration (FDA). The recent advent of a market for biosimilars presents new questions and challenges.… More

L’Élixir De L’Amour: How A 19th Century French Widow Turned Her Trademark Champagne Into A Lifestyle Beverage

Valentine’s Day is upon us yet again. Chances are, you and your sweetheart will find yourselves together in a restaurant on February 14th. Roses may be gifted, chocolate confections may be consumed, and to drink – why, champagne of course. Is any other spirituous potable more synonymous with love than a bit of bubbly?  The clinking of flutes or coupe glasses is an unmistakable counterpoint in the soundtrack of virtually every wedding and anniversary celebration.… More

New York Fashion Week: A Lineup of The Most Fashionable Trademark and Copyright Claims

It’s that time of the year again when New York City becomes the most fashionable place on the planet. While I would argue that Manhattan is always fashionable, New York Fashion Week adds a bit of extra excitement, glamour and coolness to the mix.  Fashion Week kicks off this Thursday, February 9 through Thursday, February 16, and as usual, the fashion world is all abuzz over who will be the designer-to-watch. … More

Sue-per Bowl Shuffle III: The Year In NFL-Related Intellectual Property Litigation

Two years ago, 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 intellectual property lawsuits that sports fans assume IP lawyers know about. This anxiety led me to put together the Sue-per Bowl Shuffle I and Sue-per Bowl Shuffle II: guides to trademark, copyright, patent and other intellectual property disputes concerning the NFL during 2014 and 2015 respectively.… More

Connecting The DOTBLOG: Is Your Trademark Descriptive Or Suggestive?

When you see the name DOTBLOG, what does it mean to you? Is it just a blog about DOTS candy? Or about the painter George Seurat? Maybe it indicates a service that will help you punctuate your blog entries? Ok, probably not, but it must have something to do with blogs, right? Or something online, perhaps?  If these assumptions are correct, does that make the mark merely descriptive for trademark purposes? … More

Can “Merry Christmas” Be A Trademark For Christmas Wrapping?

In 1905, the owners of Smith & Kaufman, Inc., a ribbon & silk company in New York, hit upon an idea. Wouldn’t it be great, they thought, if we made a red holiday ribbon for wrapping Christmas presents, with the words “Merrie Christmas” woven into the ribbon at intervals of about two inches in Old English script type?  And wouldn’t it be even better, they thought, if we could stop our competitors from doing the same thing,… More

A Trademark Year In Wine And Beer 2016: Our Holiday Buyer’s Guide To Disputed Beverages

trademark-year-in-wine-and-beerJust in time for the holiday season, we present our third annual Trademark Year in Wine and Beer, a wrap-up  of alcohol-related trademark and trademark-ish disputes dating back to December 2015, when we published our last edition. Our scope includes lawsuits brought in U.S. Courts, actions before the Trademark Trial and Appeal Board (“TTAB”), arbitrations pursuant to the  Uniform Domain Name Dispute Resolution Policy (“UDRP”),… More

A Difference With A Distinction: The Second Circuit Upholds Preliminary Injunction In Parallel Imports Case

twIn Abbott Laboratories, et al. v. H&H Wholesale Services, Inc., et al., the United States Court of Appeals for the Second Circuit affirmed a preliminary injunction issued in a trademark case focused on the parallel importation of diabetes test strips.  One defendant had hoped to overturn the injunction order by arguing that its place in the supply chain shielded it from direct liability for consumer confusion. … More

Opportunism Knocks: The (Likely) Futility Of “ZIKA” Trademark Applications

zikaAs an intellectual property attorney, I find the phenomenon of trademark opportunism to be a curious, and sometimes amusing, thing. (I don’t get out much.)  As soon as a distinct word, phrase, sound bite, or concept emerges in popular culture, some folks run straight to their computers and file a trademark application, presumably hoping to capitalize by owning some exclusive right in connection with a hot topic.… More

Hurray For HOLLYWOOD (Florida)! -The Motion Picture Capital’s Distant Cousin

hollywood signI am headed to Hollywood.  As much fun as it would be to report that I am leaving the work-a-day world behind to try and make it in moving pictures, the silver screen will have to wait.  I am actually going to the International Trademark Association (INTA) Leadership Meeting in sunny Hollywood, Florida, which begins on November 15th.  Nestled between Fort Lauderdale and Miami on the Atlantic coast,… More

“I’m With the Band”: Boston Guitarist Can Call Himself “Former Original Member” Without Infringing Trademark

bostonLast week, a federal jury in Boston found that Barry Goudreau, a guitarist who played in an early incarnation of the rock band Boston, did not infringe trademark rights in the band’s name by allowing himself to be identified as a “former original member” of Boston.  The verdict in Scholz v. Goudreau, Case No. 1:13-cv-10951-DJC (D. Mass.), which rejected the trademark claims brought by group founder Tom Scholz,… More

Hot News, Shredded Wheat and Wool Underwear: Brandeis On Copyright And Trademark

brandeisOctober 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

Advertising Through Social Media: Ten Tips For FTC & NAD Compliance

social-media

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

Fall Is In The Air: Are The Justices Getting Ready For The Gridiron?

The Washington Redskins Ask The Supreme Court To Block Fourth Circuit From Participation In Important Trademark Cases

footballAnother 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

Copyright Plaintiffs Keep Trying to Topple Empire. Can Proto-Cookie Succeed Where Others Failed?

empire-posterJust 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

Happy Birthday, National Parks! Would You Like Your Trademarks Back?

Entrance sign at Yosemite National ParkAugust 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

The London Omnibus And its Impact on U.S. Trademark Law

Omnibus Photo by DaveIf 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

Miss Trademark USA: Beauty Pageant Naming Disputes

sdJust 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

Watch: Trademarks for the Generalist In-House Counsel

On July 26, Julia Huston, Josh Jarvis and Nicole Kinsley presented a webinar covering the essentials of what every generalist in‑house legal practitioner should know about trademarks.

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

Potential Legal Implications Arising from “Brexit”

CaptureTrademark 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:

MACCOFFEE Found Likely To Ride Coat-Tails Of McDonald’s EU ‘Mc’ Family Of Trademarks

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

The Federal Trademark Statute Assumes Hillary Can’t Win

HiliaryToday’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

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

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:

When Is Internet Speech Protected Petitioning Activity? Federal Court Grants Anti-SLAPP Motion In FIRE CIDER Trademark Suit

Free Fire CiderOn 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

Mister Softee

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 Wayback Machine: A Useful IP Litigation Tool, But Is It Admissible?

waybackThe 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

Trademarks and Gators: 10 Tips to Survive and Thrive at the INTA Annual Meeting in Orlando

all

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

Top Five Reasons Why You Should File For Trademark Protection In Cuba

Businessmen handshake - United States and CubaAs 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

Celebrity Trademark Watch: Beyoncé Sues Feyoncé and Fame is the Name of the Game

RINGBeyoncé 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

FDA Issues Final Guidance on Proprietary Names for Drugs and Biological Products

Dozens of prescription medicine bottles in a jumble. This collection of pill bottles is symbolic of the many medications senior adults and chronically ill people take.

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

CARRERA’s Trademark Reputation: “Luxury, High Tech, High Performance and Success”

iStock_000019891443_Small

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

Skippy 1Two 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

Adidas To Trademark Competitors: ‘Two Stripes, You’re Out’

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.

adidas 1

The European Union recently afforded an even wider range of protection for the Adidas sneaker design,… More

Trademark Red Tape: Disparaging Marks And TTAB Tidbits

ASDMarch 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:

The Coca-Cola Bottle In Europe: No Fluting, No Distinctiveness

CC1Three-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

iStock_000035858970_SmallCelebrated 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”

ScaliaWhen 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

Sue-per Bowl Shuffle II: The Year in NFL-Related Intellectual Property Litigation

SBS

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

mmIn 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

Date Me, Snog Me But Don’t Meet Me in the European Trademark Office

date me“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

The Twelve Res of Christmas: Yule-Themed IP Matters in 2015

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

No Break In Fight Over Kit Kat Three-Dimensional Trademark

KitkatThe 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

A Trademark Year in Wine and Beer 2015: Our Holiday Buyer’s Guide to Disputed Beverages

Intro RedJust 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

French Trademark Office Will Not Register “PRAY FOR PARIS” Or “JE SUIS PARIS”

downloadAfter 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.

We commented that it was very unusual for the Office to issue this kind of general statement,… More

Domain Name Strategies for Start-Up Companies

CaptureJust 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

Authorship Credit for Scholarly and Creative Works: The Elusive American Attribution Right

creditWhat 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

Of Slants, Skins and Signs: The Coming First Amendment Showdown

adsfAre 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

Marshmallow Justice: 10 Tales of Legal Fluff and Other Stuff

FluffJust 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

USPTO Pilot Program Offers Relief to Proprietors of “Evolving” Goods and Services

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

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,… More

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,… 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 —… More

Harry Potter Lawsuits And Where To Find Them

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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

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. … 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.… 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. … More

INTA.sucks: Brand Prophylaxis or Trademark “Protection” Racket?

CaptureI’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

Top Eight Things You Should Know About the Hague System For International Registration of Designs

CaptureU.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?

sdf

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

The Next New gTLD Just .Sucks for Brand Owners

.sucks

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

Seeing Double Trademarks on St. Patrick’s Day? It’s Probably the Guinness

3St. 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

.PORN and .ADULT Join .XXX to Form Unsexy Threesome for Brand Owners

Porn

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

Don’t Mess with Texas Trademarks

DMWTAs 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

And the Lawsuit Goes to . . . An Oscar-Time Guide to “Best Picture” Intellectual Property Litigation

OscarThe 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

AdCode 2.0: Better Business Bureau Updates Advertising Code to Keep Up With Technology

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

Holy Overreach, Batman! Fictional Software Trademark Row Rejected by Supreme Court

BatmanWhen Fortres Grand Corporation saw sales of its software program drop, it blamed – wait for it – Batman.

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

Ninth Circuit (Mostly) Skirts the Issue of Copyright Misuse in Most Recent Omega v. Costco Decision

quarterSometimes 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

Sue-per Bowl Shuffle 2014: The Year in NFL-Related Intellectual Property Litigation

sdf

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

asdfThis 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

1Like 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

A Trademark Year in Wine and Beer: Our 2014 Holiday Buyer’s Guide to Disputed Beverages

DrinkersIf 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

Turkey Purveyors Try to Gobble Up Trademark Rights

Image 1Last 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:

“Gobble-gobble.”… More

Federal Government Wins Trademark Battle to Shut Down “Voice of America” Website with “Undeniable Governmental Aesthetic”

CaptureSince 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

CaptureThe 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

Political Ad’s Use of Trademark until Election Day Not Infringement

CaptureOn 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.

The plaintiff, Choose Energy, Inc., operates an online energy marketplace at chooseenergy.com, through which individuals and businesses in several states can shop for an energy supplier.… More

The PTO vs. The Phantom Marks: A Ghost Story

RRRRDon’t read this one before bed.

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

gg

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

Opportunities for Trademark and Copyright Lawyers To Volunteer During Pro Bono Month

CaptureOctober 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

How Not To Market Your Business Online (Even If It Works): Claims Against Fake Review Sites And Stolen Obituary Photos Survive Motion To Dismiss

1Despite 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

Wizard of Oz Celebrates 75th Anniversary & Victory in Copyright and Trademark Dispute Over Film Characters

adfsdfThis 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

The Trademark “Chaff” Quandary: PTO Report On Post-Registration Proof of Use

Mag GlassAs 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

Pic1On 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

1Last 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

Amazon’s Inability To Register Domain Name .Amazon Is An Interesting Case Study For New gTLDs

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

NYC Restaurant Scene Extends to Newark In Concurrent Use Trademark Case

BNB1The 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

Divided TTAB Panel Once Again Finds REDSKINS Trademarks Disparaging

redskins-logoIn 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

Supreme Court Paves The Way For Lanham Act Claims Against FDA-Regulated Competitors

pomThe 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

“National Association For The Abortion of Colored People” Trademark Case Heads To Fourth Circuit

naacpWe 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

Comments Sought on Service Mark Examination Guidelines

CommerceThe 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

Capture

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

An INTA Hong Kong Debrief

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

Bait-And-Switch Trademark Case Defines Limits Of Initial Interest Confusion

MrSteamIn 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

Milk Dud? False Advertising Lawsuit Against Makers of Muscle Milk Illustrates Interplay Between Lanham Act, FTC and FDA

MM1In 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

Recent Copyright And Trademark Administrative Developments

Some recent administrative developments may be of interest to copyright and trademark practitioners:

Copyright Fees

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

Supreme Court Rulings Will Make Fee Awards More Likely In Trademark Cases As Well As Patent Cases

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

This Porridge is Just Right: Supreme Court Adopts “Zones of Interest” Standing in False Advertising Cases

Bears 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 Fan Accounts: Honoring a Celebrity’s Brand or a Trademark Violation?

Dean1

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

Crowd-Sourced Review Website May Incur Lanham Act Liability For Selectively Deleting Reviews

MovingStorage

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

Nine Thoughts On The Ninth Circuit’s “Innocence of Muslims” Copyright Decision

Innocence 1By 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.

Synopsis

Cindy Lee Garcia agreed to act in a low budget film called “Desert Warrior,” for which she was paid $500.… More

“Facebook Said I Could” Defense Fails to Justify Digital Millennium “Trademark” Notice

Crossfit picCrossFit, 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

Mushrooms

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

Celebrity Trademark Watch: What Do Bob Marley and Chicken Fingers Have in Common?

Chicken

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

Kraft Still the Big Cheese: Seventh Circuit Affirms Injunction in Trademark Dispute over Cracker Barrel

cbocs

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

Summary Judgment Denied in Trademark Dispute over “National Association for the Abortion of Colored People”

naacp

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

Trade-Key1

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.…
  • More

Zombie Trademarks: Are They Really an Undead Threat to Consumers?

Zombie

 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

China

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

Sixth Circuit Rules that Trade Dress Law Does Not Prevent Copying of Functional Design

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

The Madrid Protocol: Passage to India Now Open

india

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

Protect Your Brands in the New Domain Name Regime: The Trademark Clearinghouse Is Open for Business

ICANN

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

Ben & Jerry's - August 1

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

A Distinctive Fourth of July: Fireworks and Historical Figure Trademarks

Fireworks and SousaUnless 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

Can a Website Disclaimer Prevent Declaratory Judgment Actions in IP Cases? Maybe…or Maybe Not

Disclaimer-1-272x300A 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

Mind Your Xs and Zs: Are These Letters Too Common in Pharmaceutical Trademarks?

x and z 

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: A Passage to Indian Trademark Registration

taj mahalThe 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

Superheroes of Copyright: When Do Fictional Characters Enjoy Copyright Protection?

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

Court Finds No Business In This Show Business Trademark Dispute

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

The APP STORE Trademark Wars: New Year’s Installment

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

Top 5 Reasons to Audit Your Trademark Portfolio in 2013

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

Celebrity Trademark Watch: Did Tim Tebow “Trademark” his Signature Move?

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”

orientalIn 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

Sliding the Scale: The UK’s New “Small Claims” Court for Intellectual Property Disputes

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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.

That may be changing in the UK. On October 1, 2012, the UK government launched a new “small claims track” in the Patents County Court) (“PCC”),… More

Product Liability Risk in Licensing Trademarks with Technology

asbestos

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

image004image002Last 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

The North Face Moves for Contempt Against “THE SOUTH BUTT” Defendants Over New Trademark “THE BUTT FACE”

nf1  sb2

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

Colors as Trademarks: The Gloves Are On In This Baseball Brawl

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,…

Celebrity Trademark Watch: Marilyn, Elvis and Michael Teach Us How to Beat the High Cost of Dying

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

Google AdWords Appellate Decision Injects Some Uncertainty Back Into the Keyword Game

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

Trademark Parody Dispute Puts Fashion Law in the Spotlight

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

Celebrity Trademark Watch: Is It Possible to Hip Hop to the Front of the Line?

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

Court Tells Louboutin To Take A Hike. And He Does. To the Second Circuit.

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.

Charbucks Wins Round 3 of Trademark Dispute with Starbucks

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

A New Twist on eBay: Compulsory Licensing in Copyright Cases?

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

Twitter and Twittad Settle Dispute over TWEET

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]

Twitter Stakes Its Claim to TWEET

UPDATE: Twitter and Twittad have settled their dispute. Click here for details.

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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

Teachbook Goes All In Against Facebook, But Fails to Obtain Early Dismissal

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

No Shirt, No Shoes, No Trademark: Naked Licensing Can Mean Abandonment of Your Valuable Rights

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

Overhyped “Trademark Bully” Study Delivers Predictable Results

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).)

Apple and the Beatles: The End of a Long and Winding Road?

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

Facebook’s Evil Twin: Lamebook

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

Inherent Distinctiveness vs. Secondary Meaning: Chippendales Fights On Despite Setbacks

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

TIFFANY Update: False Advertising Claim Rejected

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

Trademark Licensors Beware: You May be on the Hook for Your Licensee’s Defective Products

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

Sports Franchise Marks and Logos: One Owner, or Many?

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

The Private Counterfeiting Police: Tiffany (NJ), Inc. v. eBay Inc.

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

Likelihood of Confusion: Similar Suffixes Do Not Suffice

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

Settlement of South Butt Case Unfortunate for Trademark Owners and Parodists Alike

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!

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