American musician and rapper Lizzo recently scored a victory in the Trademark Trial and Appeal Board (the “Board”), reversing the Trademark Office’s refusal to register the “100% THAT BITCH” mark for “clothing, namely,...more
The European Union Trademark (EUTM) is possibly the most widely used vehicle worldwide to protect trademark rights. As the possibility of a so-called “no deal” Brexit becomes ever more likely, many of our clients wonder what...more
You’ve created a great product and built a valued brand. You’ve devoted countless hours to building relationships with key distributors and retailers, designing attractive packaging, and forging a social media presence. But...more
4/17/2018
/ Brand ,
Data Security ,
Food and Drug Administration (FDA) ,
Food Safety ,
Intellectual Property Protection ,
Labeling ,
Popular ,
Recipes ,
Supply Chain ,
USPTO ,
Value Maximization
8 Ways To Avoid Inter Partes Review Estoppel -
Inter partes review has become an enormously popular method of challenging patents. One important downside of filing for IPR, however, is that, if the petitioner loses, it...more
Applicants and registrants of trademarks are inundated with offers to perform potentially unnecessary services. These solicitations often come in the form of invoices, with prominent and false “due dates.” Other times, they...more
Supreme Court Hits Reset on Patent Venue Law in TC Heartland -
In the recent TC Heartland LLC v. Kraft Foods Group Brands LLC decision, the Supreme Court reversed nearly thirty years of patent venue law and held that a...more
7/20/2017
/ Disparagement ,
First Amendment ,
Forum Shopping ,
Free Speech ,
Patent Exhaustion ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Personal Jurisdiction ,
Principal Place of Business ,
Right of Publicity ,
SCOTUS ,
State of Incorporation ,
TC Heartland LLC v Kraft Foods ,
The Slants ,
Trademarks ,
Unified Patent Court ,
Venue
The Supreme Court today brought closure to Simon Tam’s seven-year legal journey seeking to obtain a federal trademark registration for his band name, THE SLANTS. The Court held in Matal v. Tam that the Lanham Act’s ban on...more
6/20/2017
/ Disparagement ,
First Amendment ,
Free Speech ,
Lanham Act ,
Matal v Tam ,
Music Industry ,
SCOTUS ,
The Slants ,
Trademark Registration ,
Trademarks ,
USPTO
Supreme Court Restricts the Extraterritorial Reach of U.S. Patent Law for Exported Goods -
On February 22, 2017, the Supreme Court in a landmark decision held that the supply of a single component of a multicomponent...more
4/10/2017
/ Cheerleaders ,
Co-Ownership ,
Component Parts Doctrine ,
Copyright ,
Copyright Litigation ,
Copyrightable Subject Matter ,
Extraterritoriality Rules ,
Fashion Design ,
Foreign Corporations ,
Germany ,
Grace Period ,
Graphic Designs ,
Laches ,
Life Technologies Corp v Promega Corp ,
Patent Infringement ,
Patent Litigation ,
Patents ,
SCOTUS ,
Section 101 ,
Star Athletica v Varsity Brands ,
Statutory Damages ,
The Copyright Act ,
Uniforms
On March 22, 2017, the Supreme Court held in Star Athletica, LLC v. Varsity Brands, Inc. that design elements of cheerleading uniforms may be protected under the Copyright Act. The 6-2 decision, written by Justice Thomas,...more
3/28/2017
/ Cheerleaders ,
Copyright ,
Copyright Infringement ,
Fashion Design ,
Fashion Industry ,
Graphic Designs ,
SCOTUS ,
Separability ,
Sports Apparel ,
Star Athletica v Varsity Brands ,
The Copyright Act ,
Uniforms ,
Utilitarian Function
In late December, the Second Circuit issued a ruling in Louis Vuitton Malletier, S.A., v. My Other Bag, Inc., affirming the district court’s grant of summary judgment for claims of trademark infringement and dilution of a...more
1/26/2017
/ Fashion Branding ,
Fashion Design ,
Fashion Industry ,
Intellectual Property Protection ,
Lanham Act ,
Louis Vuitton ,
Retail Market ,
Summary Judgment ,
Trade Dress ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
Supreme Court Abolished Federal Circuit's Test for Willfulness -
On June 13, 2016, in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. ___ (2016), the Supreme Court unanimously abrogated the Federal Circuit’s...more
8/13/2016
/ Abuse of Discretion ,
Appeals ,
Attorney's Fees ,
Authorship ,
Books ,
Burden of Proof ,
Collaboration ,
Copyright ,
Copyright Infringement ,
Employee Mobility ,
Enhanced Damages ,
EU ,
European Union Intellectual Property Office (EUIPO) ,
European Union Trade Mark (EUTM) ,
Fee-Shifting ,
Film Industry ,
Halo v Pulse ,
Harmonization Rules ,
Kirtsaeng v. John Wiley & Sons ,
Objective Unreasonableness Standard ,
Patent Infringement ,
Patents ,
Preponderance of the Evidence ,
Prevailing Party ,
Remedies ,
SCOTUS ,
Screenplays ,
Seagate ,
Standard of Review ,
Trade Secrets ,
Trademark Registration ,
Trademarks ,
UK ,
UK Brexit ,
Unlawful Disclosure ,
Whistleblowers ,
Willful Infringement
The United Kingdom has voted by a narrow majority to leave the European Union (“Brexit”). But the process of Brexit will take time, and the implications for our clients’ businesses will also unfold over time. Our MoFo...more
On March 31, 2016, the Federal Circuit weighed in on the circuit split regarding whether a trademark plaintiff must prove willful infringement before it may recover profits in Romag Fasteners, Inc. v. Fossil, Inc., on appeal...more
The Survey Says: Tiffany Is Not Generic for A Ring Setting -
Last month, the Southern District of New York granted summary judgment to Tiffany & Co. on its trademark infringement claim against Costco Wholesale...more
10/8/2015
/ Abuse of Dominance ,
Abuse of Process ,
America Invents Act ,
Apple v Samsung ,
China ,
Costco ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
European Court of Justice (ECJ) ,
Fair Use ,
FRAND ,
Germany ,
Hedge Funds ,
Injunctive Relief ,
Inter Partes Review (IPR) Proceeding ,
IP License ,
Judicial Review ,
Microsoft ,
Monopolization ,
Motion for Sanctions ,
Motorola ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Penalties ,
SAIC ,
Standard Essential Patents ,
Summary Judgment ,
Tiffany and Company ,
USPTO ,
Versata
Last week, the Southern District of New York granted summary judgment to Tiffany & Co. on its trademark infringement claim against Costco Wholesale Corporation for selling rings advertised under the TIFFANY mark. Tiffany &...more
9/15/2015
/ Bad Faith ,
Costco ,
Fair Use ,
Generic ,
Likelihood of Confusion ,
Summary Judgment ,
Surveys ,
Tiffany and Company ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Young Lawyers
In This Issue:
- En Banc Federal Circuit Abandons “Strong” Presumption That a Limitation Is Not Subject to 35 U.S.C. § 112, Paragraph 6
- Supreme Court Rejects Belief of Invalidity Defense for Inducement in...more
7/8/2015
/ Cisco v CommilUSA ,
EU ,
European Patent Convention ,
European Patent Office ,
First Amendment ,
Free Speech ,
Induced Infringement ,
Inter Partes Review (IPR) Proceeding ,
Japan ,
Japan Patent Office ,
Lanham Act ,
Means-Plus-Function ,
Motion to Amend ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Oppositions ,
Patent Trial and Appeal Board ,
Patents ,
Redskins ,
SCOTUS ,
Unified Patent Court ,
Unitary Patent
In This Issue:
- Federal Circuit Affirms PTO in First Appeal of an Inter Partes Review Decision
- EU Copyright: No Resale of Digital Content Except for Software?
- Qualcomm Agrees to $975 Million Fine and...more
4/13/2015
/ Broadest Reasonable Interpretation Standard ,
China ,
Copyright ,
EU ,
Fraud ,
International Trade Commission (ITC) ,
Jurisdiction ,
Patent Trial and Appeal Board ,
Patents ,
Qualcomm ,
Standard Essential Patents ,
Trademarks
On Monday, the Federal Circuit issued its decision in Couture v. Playdom, clarifying that use in commerce for a service mark requires that the services be rendered before a registration can be granted. To obtain a federal...more
3/5/2015
Yesterday, the Supreme Court issued its opinion in Hana Financial, Inc. v. Hana Bank, No. 13-1211. The issue presented was whether the judge or the jury should determine whether two trademarks may be “tacked” for purposes of...more
Fraudulent solicitations and invoices for trademark services are on the rise, inundating trademark applicants and registrants with offers to perform potentially unnecessary services. These solicitations often come in the form...more
Last year, the Internet Corporation for Assigned Names and Numbers (ICANN) received over 1,900 applications for new generic top-level domains (gTLDs), including multiple applications for popular domains like .app, .inc, .art,...more
Last year, the Internet Corporation for Assigned Names and Numbers (ICANN) received over 1,900 applications for new generic top-level domains (gTLDs), including multiple applications for popular domains like .app, .inc, .art,...more