On June 29, 2023, the Supreme Court in Abitron Austria GmbH v. Hetronic International, Inc., limited the extraterritorial reach of the Lanham Act. The majority opinion was written by Justice Alito and joined by Justices...more
On June 8, 2023, the Supreme Court unanimously decided the trademark parody case captioned Jack Daniel’s Properties, Inc. v. VIP Products LLC in favor of Jack Daniel’s, and against the dog toy manufacturer and serial parodist...more
6/21/2023
/ Dilution ,
First Amendment ,
Intellectual Property Protection ,
Jack Daniels Properties Inc v VIP Products LLC ,
Lanham Act ,
Likelihood of Confusion ,
Parody ,
Rogers Test ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
In Twitter, Inc. v. Taamneh, the Supreme Court unanimously held that social media companies are not liable for aiding and abetting the Islamic State of Iraq and Syria (ISIS) in its terrorist acts that victims claimed resulted...more
Art. Money. Copyright. Fair use. Andy Warhol. And Prince, the Purple One. (Or in this case, Orange.)
These were the hot topics in the recently decided Supreme Court case of Andy Warhol Foundation for the Visual Arts,...more
6/6/2023
/ Andy Warhol Foundation for the Visual Arts Inc v Goldsmith ,
Artists ,
Copyright ,
Copyright Infringement ,
Copyright Litigation ,
Derivative Works ,
Fair Use ,
Fine Art ,
Intellectual Property Protection ,
Photographs ,
SCOTUS ,
Transformative Use
On March 31, 2023, the Supreme Court heard arguments in Abitron Austria GmbH v. Hetronic International, Inc., where at issue is whether the Tenth Circuit erred in applying the Lanham Act extraterritorially to Abitron’s...more
In Abitron Austria GmbH v. Hetronic International, Inc., Oklahoma-based Hetronic, maker of radio remote controls for heavy-duty construction equipment, sued its former distributor Abitron (from Austria) for selling copycat...more
4/17/2023
/ Abitron Austria GmbH v Hetronic International Inc ,
Extraterritoriality Rules ,
Foreign Sales ,
Intellectual Property Protection ,
Lanham Act ,
Oral Argument ,
Petition for Writ of Certiorari ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
On March 22, 2023, the Supreme Court heard oral argument in the trademark parody case captioned Jack Daniel’s Properties, Inc. v. VIP Products LLC. As we previously blogged, the issues presented in the care are:
...more
3/28/2023
/ Beverage Manufacturers ,
Brand ,
Dilution ,
First Amendment ,
Intellectual Property Protection ,
Lanham Act ,
Likelihood of Confusion ,
Oral Argument ,
Retail Market ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Wine & Alcohol
On November 21, 2022, the Supreme Court granted certiorari on the following questions described in Jack Daniel’s petition:
Respondent VIP Products LLC markets and sells dog toys that trade on the brand recognition of...more
1/20/2023
/ Beverage Manufacturers ,
Certiorari ,
Dilution ,
First Amendment ,
Intellectual Property Protection ,
Lanham Act ,
Likelihood of Confusion ,
Retail Market ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Wine & Alcohol
The Trademark Trial and Appeal Board (“TTAB”) sustained the objection of the publisher of the tech magazine WIRED (“Opposer”) to an Applicant’s (“Applicant”) bid to register the term “WIRED” for clothing but rejected its...more
On August 23, 2022, the Trademark Trial and Appeal Board (“TTAB”) rejected on summary judgment JHO Intellectual Property Holdings’ (“Applicant”) application to register the mark “PURPLE RAIN” for a variety of nutritional...more
The Trademark Trial & Appeal Board (“TTAB”) affirmed the US Patent & Trademark Office’s (“PTO”) refusal to register two different logo marks filed by California’s County of Orange (“County”) on the ground that they constitute...more
On March 25, 2022, the Supreme Court agreed to consider whether Andy Warhol’s “Prince Series” sufficiently transforms Lynn Goldsmith’s 1981 photograph of Prince (the “Photograph”) to qualify for the Copyright Act’s fair use...more
4/7/2022
/ Certiorari ,
Copyright ,
Copyright Infringement ,
Copyright Litigation ,
Fair Use ,
Fine Art ,
First Amendment ,
Intellectual Property Protection ,
Personal Expression ,
SCOTUS ,
Transformative Use
On September 17, 2021, the Third Circuit held in Beasley v. Howard that trademark cancellation proceedings before the Trademark Trial and Appeal Board (“TTAB”) do not have claim preclusive effect against trademark...more
9/29/2021
/ Fraud ,
Intellectual Property Protection ,
Issue Preclusion ,
Jurisdiction ,
Lanham Act ,
Music Industry ,
Trademark Cancellation ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Trial and Appeal Board ,
Trademarks
On March 26, 2021, the Second Circuit reversed a 2019 district court ruling and held that Andy Warhol’s “Prince Series” did not qualify as fair use of Lynn Goldsmith’s 1981 photograph of Prince (the “Photograph”). ...more
In a fifty-seven-page memorandum opinion and order, the United States District Court for the Southern District of New York granted a fashion brand its motion for a preliminary injunction preventing its lead designer from...more
3/18/2021
/ Advertising ,
Arrangement and Promotion ,
Contract Terms ,
Employment Contract ,
Fashion Branding ,
Fashion Design ,
Instagram ,
Intellectual Property Protection ,
Motion To Enjoin ,
Name and Likeness ,
Personality Rights ,
Preliminary Injunctions ,
Social Media ,
The Copyright Act ,
Trademark Litigation ,
Trademarks ,
TRO
The question of whether a generic term combined with the .com gTLD extension could serve as a trademark was settled last July, when the U.S. Supreme Court ruled that the proposed trademark could not...more
In a precedential decision, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) affirmed the refusal to register the trademark GOD BLESS THE USA for home decor items on the ground...more
Slogans can, but do not always, function as trademarks. To be sure, the United States Patent and Trademark Office (“USPTO”) frequently allows slogans such as JUST DO IT! or QUALITY THROUGH CRAFTSMANSHIP, among many others, to...more
On September 30, 2020, the Trademark Trial and Appeal Board ruled in favor of the assignee of the famous LEHMAN BROTHERS trademark against the registration that mark as a brand name for beer, spirits, and bar and restaurant...more
10/8/2020
/ Abandonment ,
Barclays ,
Evidence ,
Intellectual Property Protection ,
Lehman Brothers ,
Likelihood of Confusion ,
Priority Disputes ,
Trademark Application ,
Trademark Expiration ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks
On June 30, 2020, the U.S. Supreme Court (the “Court”), in an 8-1 decision, affirmed the Fourth Circuit’s holding that “BOOKING.COM” is a protectable trademark, thereby rejecting a sweeping rule that a protectable trademark...more
7/8/2020
/ Acquired Distinctiveness ,
Appeals ,
Booking.com ,
Domain Name Registration ,
Domain Names ,
Generic Marks ,
Lanham Act ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO
On May 14, 2020, the United States Supreme Court held in Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., that a party is not precluded from raising new defenses, when a subsequent lawsuit between the same...more
5/19/2020
/ Claim Preclusion ,
Collateral Estoppel ,
Counterclaims ,
Defense Preclusion ,
Fashion Branding ,
Issue Preclusion ,
Lucky Brand Dungarees v Marcel Fashion Group ,
Motion to Dismiss ,
Release Agreements ,
Res Judicata ,
SCOTUS ,
Split of Authority ,
Subsequent Litigation ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
The Lanham Act (“Act”) makes it clear that generic terms cannot be registered as trademarks. But can an online business create a protectable trademark by adding a generic top-level domain (e.g., “.com”) to an otherwise...more
5/15/2020
/ Acquired Distinctiveness ,
Appeals ,
Booking.com ,
Certiorari ,
Descriptive Trademarks ,
Domain Name Registration ,
Domain Names ,
Generic Marks ,
gTLD ,
Lanham Act ,
SCOTUS ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO
In a recent precedential decision concerning the rarely litigated or cited Section 2(b) of the Lanham Act, the Trademark Trial and Appeal Board affirmed a refusal to register the service mark...more
On April 27, 2020, the United States Supreme Court held, in Georgia et al. v. Public.Resource.Org., Inc., in a 5-4 decision, that copyright law does not protect annotations contained in the official annotated compilation of...more
5/6/2020
/ Annotated Case Law ,
Appeals ,
Copyright ,
Copyright Infringement ,
Copyrightable Subject Matter ,
Georgia v. Public.Resource.Org Inc ,
Government Edicts Doctrine ,
Legislative Duties ,
Reaffirmation ,
Reversal ,
SCOTUS ,
Statutory Code ,
The Copyright Act
On April 23, 2020, the United States Supreme Court held in Romag Fasteners, Inc. v. Fossil Group, Inc., FKA Fossil, Inc., et al., that under the Lanham Act, a plaintiff is not required to show that a defendant willfully...more
5/3/2020
/ § 1125(a) ,
§ 1125(c) ,
Appeals ,
Burden of Proof ,
Charge-Filing Preconditions ,
Compensatory Awards ,
Dilution ,
Lanham Act ,
Lost Profits ,
Remand ,
Remedies ,
Romag Fasteners v Fossil ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Vacated ,
Willful Infringement