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
On June 24, 2019, the U.S. Supreme Court granted certiorari to decide whether states can claim copyright protection in annotated codes. State of Georgia v. Public.Resource.Org, Inc., No. 18-1150. ...more
6/28/2019
/ Annotated Case Law ,
Certiorari ,
Copyright ,
Copyrightable Subject Matter ,
Federal v State Law Application ,
Georgia v. Public.Resource.Org Inc ,
Petition for Writ of Certiorari ,
Public Domain ,
SCOTUS ,
Split of Authority ,
The Copyright Act
The United States Supreme Court in Mission Product Holdings, Inc. v. Tempnology, LLC (No. 17-1657) (May 20, 2019) resolved a deep circuit split and held that a licensees' rights under trademark licenses survive a...more
6/4/2019
/ Bankruptcy Appellate Panel (BAP) ,
Bankruptcy Code ,
Breach of Contract ,
Commercial Bankruptcy ,
Debtors ,
Exclusions ,
Executory Contracts ,
IP License ,
Mission Product Holdings Inc v Tempnology LLC ,
Reversal ,
SCOTUS ,
Section 365 ,
Split of Authority ,
Trademark Licenses ,
Trademarks ,
Trustees
The United States Supreme Court in Mission Product Holdings, Inc. v. Tempnology, LLC (No. 17-1657) (May 20, 2019) resolved a deep circuit split and held that a licensees’ rights under trademark licenses survive a...more
5/30/2019
/ Bankruptcy Appellate Panel (BAP) ,
Bankruptcy Code ,
Breach of Contract ,
Commercial Bankruptcy ,
Debtors ,
Exclusions ,
Executory Contracts ,
IP License ,
Mission Product Holdings Inc v Tempnology LLC ,
Popular ,
Rescission ,
Reversal ,
SCOTUS ,
Section 365 ,
Split of Authority ,
Trademark Licenses ,
Trademarks ,
Trustees
The United States Patent and Trademark Office recently issued a new Examination Guide relating to trademarks for cannabis and cannabis-related goods and services....more
5/10/2019
/ Cannabidiol (CBD) oil ,
Cannabis Products ,
Decriminalization of Marijuana ,
Examination Manual ,
Hemp ,
Intellectual Property Protection ,
Marijuana ,
Marijuana Related Businesses ,
Trademark Application ,
Trademarks ,
USPTO
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
This blog has followed the evolving judicial views concerning disparaging trademarks, culminating in the Supreme Court’s decision in in Matal v. Tam, 137 S. Ct. 1744 (June 19, 2017)....more
1/8/2019
/ Disparagement ,
Fashion Design ,
Fashion Industry ,
First Amendment ,
Free Speech ,
Lanham Act ,
Matal v Tam ,
Petition for Writ of Certiorari ,
Trademark Registration ,
Trademarks ,
USPTO
Rapunzel potentially was released from the trademark monopoly tower, not by her hair, but by trademark opposer and law professor Rebecca Curtin....more
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 Ninth Circuit extended the First Amendment protections enunciated by the Supreme Court in Matal v. Tam, 137 S.Ct. 1744 (2017) to advertising in American Freedom Defense Initiative, et al. v. King County (9th Cir. Sept....more
William Adams is a musical performer who is more famously known by his stage name, will.i.am. A recent ruling from the United States Patent and Trademark Office, Trademark Trial and Appeal Board, unfortunately makes him a...more
8/30/2018
/ Fashion Design ,
Fashion Industry ,
Hashtags ,
International Trademark Protection ,
Likelihood of Confusion ,
Musical Sound Recordings ,
Trademark Application ,
Trademark Infringement ,
Trademark Registration ,
Trademarks ,
USPTO
The New Jersey Turnpike Authority (“NJTA”) was forced to pay a big toll when the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”), dismissed its opposition to a pizza restaurant’s...more
5/30/2018
/ Intellectual Property Protection ,
Likelihood of Confusion ,
Logos ,
Restaurant Industry ,
Trademark Application ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
Transportation Industry
In a precedential decision, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (“TTAB” or the “Board”) affirmed a refusal to register the logo...more
In Klipsch v. ePRO, the Second Circuit affirmed discovery sanctions commensurate with the costs incurred by the moving party in addressing the sanctionable conduct ($2.68 million), as well as security for the sanctions,...more
2/12/2018
/ Counterfeit Goods Regulation ,
Discovery ,
Electronically Stored Information ,
Evidence ,
Injunctive Relief ,
Intellectual Property Protection ,
Legal Costs ,
Sanctions ,
Technology ,
Trademark Infringement ,
Trademark Litigation ,
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 2015, the Supreme Court, in its decision in B&B Hardware, Inc. v. Hargis Industries, Inc. (“B&B”), held that sometimes issue preclusion should apply to prior Trademark Trial and Appeal Board (“TTAB”) decisions. 135 S. Ct....more
Under certain circumstances, U.S. Copyright Law provides for “safe harbor” protection from liability for copyright infringement to entities (e.g., ISPs and website operators) hosting content provided by third parties. To...more
It is natural for manufacturers to seek to widen their intellectual property protection. In the seminal case TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 US 23 (2001), the Supreme Court struck down the plaintiff’s...more
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
In a unanimous (albeit fractured) decision written by Justice Alito, the United States Supreme struck down a provision of the Lanham (Trademark) Act barring registration of “disparaging” trademarks, handing a victory to...more
6/21/2017
/ Disparagement ,
First Amendment ,
Football ,
Free Speech ,
Lanham Act ,
Matal v Tam ,
Music Industry ,
NFL ,
Redskins ,
SCOTUS ,
Team Mascots ,
The Slants ,
Trademark Registration ,
Trademarks ,
USPTO
The Eleventh Circuit has widened the circuit split on whether a copyright application or completed registration is required before filing a copyright infringement lawsuit. In Fourth Estate Public Benefit v. Wall-Street.com,...more
In SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, the Supreme Court made plain that laches is merely an equitable defense in patent cases, and will not bar a damage claim if brought within the six year...more
3/28/2017
/ Damages ,
Defense Strategies ,
Laches ,
Patent Act ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Petrella v. MGM ,
SCA Hygiene Products Aktiebolag v First Quality Baby Products ,
SCOTUS ,
Statute of Limitations
As we previously blogged, the Sixth Circuit held in 2015, that the colors, stripes, chevrons, and similar graphic designs of the plaintiff’s cheerleading uniforms “are copyrightable pictorial, graphic, or sculptural works”...more
3/28/2017
/ Cheerleaders ,
Copyright ,
Copyrightable Subject Matter ,
Fashion Design ,
Graphic Designs ,
SCOTUS ,
Section 101 ,
Separability ,
Star Athletica v Varsity Brands ,
The Copyright Act ,
Uniforms
Calling the district court’s action an “abuse of discretion,” the 11th Circuit reversed a decision that cut by more than 90 percent a successful copyright infringement plaintiff’s request for attorney’s fees and costs. Yellow...more
The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) recently dismissed Luxco, Inc.’s (“Luxco”) opposition to registration of the mark TEQUILA (in standard character format) by an...more