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
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
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
The Federal Circuit in In re JC Hospitality LLC recently affirmed the United States Patent and Trademark Office, Trademark Trial and Appeal Board’s refusal to register the service mark THE JOINT for a venue offering...more
3/11/2020
/ Acquired Distinctiveness ,
Appeals ,
Corporate Branding ,
Descriptive Trademarks ,
Generic Marks ,
Intellectual Property Protection ,
Music ,
Restaurant Industry ,
Trademark Application ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
In June 2019, the United States Supreme Court granted certiorari in Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., No. 18-1086. As set forth in our prior blog posts, Lucky Brand Dungarees Inc. and related...more
10/29/2019
/ Appeals ,
Certiorari ,
Defense Strategies ,
Fashion Industry ,
Federal Rules of Civil Procedure ,
Inherently Distinctive ,
Intellectual Property Protection ,
Issue Preclusion ,
Release Agreements ,
Res Judicata ,
Reversal ,
SCOTUS ,
Settlement Agreements ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
The Federal Circuit upheld a Trademark Trial and Appeal Board (“Board”) decision refusing registration of an athletic apparel company’s trademark, holding that the trademark applicant waived its key arguments by not raising...more
9/9/2019
/ Appeals ,
Brand ,
Fashion Branding ,
Fashion Design ,
Intellectual Property Protection ,
Likelihood of Confusion ,
Motion for Reconsideration ,
Oral Argument ,
Sports Apparel ,
Trademark Application ,
Trademark Litigation ,
Trademark Trial and Appeal Board ,
Trademarks ,
Waiver of Rights
On Friday, June 28, 2019, the U.S. Supreme Court agreed to consider whether, in cases where a plaintiff asserts new claims, federal preclusion principles bar a defendant from raising defenses that were not actually litigated...more
7/9/2019
/ Amended Complaints ,
Appeals ,
Certiorari ,
Claim Preclusion ,
Collateral Estoppel ,
Issue Preclusion ,
Lanham Act ,
Res Judicata ,
SCOTUS ,
Settlement Agreements ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Unfair Competition
On June 24, 2019, the United States Supreme Court, in Iancu v. Brunetti, reviewing the trademark application for “FUCT”, held that the Lanham’s Act’s provision, prohibiting the registration of “immoral[] or scandalous”...more
7/1/2019
/ Appeals ,
Constitutional Challenges ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Lanham Act ,
Reaffirmation ,
Reversal ,
Scandalous/Immoral Marks ,
SCOTUS ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
Viewpoint Discrimination
The Supreme Court unanimously decided two Copyright Act cases on March 4, 2019.
In Rimini Street, Inc. v. Oracle USA, Inc., the Court held that the provision in the Copyright Act that gives federal district courts...more
3/5/2019
/ Appeals ,
Copyright Exhaustion ,
Copyright Infringement ,
Copyright Litigation ,
Damages ,
Fourth Estate Public Benefit Corp v Wall-Street.com LLC ,
Litigation Fees & Costs ,
Rimini Street Inc v Oracle USA Inc ,
SCOTUS ,
Solicitor General ,
Split of Authority ,
The Copyright Act ,
Uniformity
According to the Federal Circuit, the skinny on the term “Thins” is that it may be generic for thinly cut snack crackers. Real Foods Pty Ltd. V. Frito-Lay North America, Inc., (October 4, 2018 Fed. Cir.)....more
10/16/2018
/ Acquired Distinctiveness ,
Appeals ,
Descriptive Trademarks ,
Food Manufacturers ,
Frito-Lay ,
Intellectual Property Protection ,
Trademark Application ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks
The Court of Appeals for the Federal Circuit recently extended First Amendment protections for trademark applications in In re Brunetti, No. 15-1109 (Fed. Cir. December 15, 2017), ruling that Section 2(a) of the Lanham Act’s...more
12/28/2017
/ Appeals ,
Constitutional Challenges ,
Disparagement ,
Fashion Design ,
Fashion Industry ,
First Amendment ,
Free Speech ,
Intellectual Property Protection ,
Lanham Act ,
Matal v Tam ,
Scandalous/Immoral Marks ,
Trademark Registration ,
Trademarks ,
USPTO
In a 54 page decision issued on September 6, 2017, the Trademark Trial and Appeal Board (the “Board”) ended (again) a long-standing dispute between snack food makers Frito-Lay, Inc. (“Frito”) and Princeton Vanguard, LLC...more
On December 20, 2016, the New York Court of Appeals (New York’s highest court) issued a landmark state copyright law decision, holding in response to a certified question from the Second Circuit in Flo & Eddie, Inc. v. Sirius...more
1/5/2017
/ Appeals ,
Copyright ,
Copyright Infringement ,
Copyright Litigation ,
Corporate Counsel ,
Internet Streaming ,
Music ,
Music Industry ,
Musical Sound Recordings ,
Public Performance Rights ,
Radio Broadcasting ,
SiriusXM ,
Sound Recording Copyrights ,
The Copyright Act ,
Unfair Competition
The First Circuit recently issued an important interpretation of bankruptcy law that directly impacts trademark licensing rights. In In re Tempnology LLC, 559 B.R. 809 (1st Cir. BAP 2016), the First Circuit Bankruptcy...more
12/14/2016
/ Appeals ,
Bankruptcy Code ,
Commercial Bankruptcy ,
Corporate Counsel ,
Cross-Licensing Agreement ,
Intellectual Property Protection ,
Inventions ,
Logos ,
Patents ,
Trade Secrets ,
Trademarks
We previously blogged on Judge Proctor’s (ND Ala.) order directing the United States Patent and Trademark Office (the “Board”) to comply with the Court’s prior order, approving a settlement agreement between the University of...more
In the most recent ruling in a lengthy and procedurally complex criminal case, a New York trial court dismissed a computer programmer’s criminal conviction under New York’s Unlawful Use of Secret Scientific Material law for...more
7/13/2015
/ Aleynikov ,
Appeals ,
Convictions ,
Corporate Counsel ,
Criminal Prosecution ,
Dismissals ,
Economic Espionage Act ,
Foreign Commerce ,
Goldman Sachs ,
High Frequency Trading ,
Source Code ,
US v Aleynikov ,
Young Lawyers
In Sorensen v. WD-40 Company, the Seventh Circuit affirmed the district court’s finding that the use of the term “inhibitor” for a rust-inhibitor product was not trademark infringement and constituted a descriptive fair use. ...more
The Fourth Circuit recently ruled that a Defendant’s online article entitled “NAACP: National Association for the Abortion of Colored People” did not violate the trademark rights of the NAACP, the National Association for the...more
The Second Circuit recently vacated a contempt order entered against the U.S. Polo Association for selling sunglasses with its logo depicting two mounted polo players vying for a ball. The Second Circuit found that the...more
In Home Legend, LLC v. Mannington Mills, Inc., the Eleventh Circuit recently reversed a grant of summary judgment and held that a two dimensional laminate flooring design was eligible for copyright protection because it...more
The Fourth Circuit recently ruled on several important issues regarding the scope of relief that may be granted for trademark infringement. The backdrop for the decision in Georgia Pacific Consumer Products LP v. Von Drehle...more