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Highlights Part II of the Trademark Modernization Act of 2020: Ex Parte Expungement, Ex Parte Reexamination, and Non-Use...

As we wrote in Part 1 of this series, the Trademark Modernization Act of 2020 (“TMA”) was signed into law on December 27, 2020, and contained several significant amendments to the Lanham Act. This post will cover three of the...more

FTC Announces Regulatory Review of Endorsement Guides – Changes and Enforcement Actions Will Likely Follow

The FTC recently announced a regulatory review of its Endorsement Guides, which provide guidance to marketers to ensure that endorsements and testimonials for products and services are not misleading, particularly as to...more

Wine Dispute Has No Legs: Trademark Opposition Alone Insufficient to Create a Justiciable Controversy for Declaratory Judgment...

Two recent decisions from the Western District of North Carolina in Winestore Holdings LLC v. Justin Vineyards & Winery LLC provide a tasting of the requirements for bringing a declaratory judgment action for non-infringement...more

Trademark Practice Tip: How to Settle a Trademark Opposition Proceeding and Obtain Judgment Against the Applicant After an...

Most opposition proceedings in the Trademark Trial and Appeal Board of the USPTO settle before final judgment, often based on a negotiated settlement agreement requiring the abandonment of the opposed application. In these...more

Andy Warhol's Prince Series Portraits Held Fair Use of Photograph

Earlier this summer, in The Andy Warhol Foundation for the Visual Arts v. Goldsmith, the federal district court for the Southern District of New York held that Andy Warhol’s artwork series depicting the late singer Prince was...more

Third Circuit Analyzes Work for Hire and Assignment Requirements and Explains Why the Distinction Matters

When a judicial opinion refers to a “bitter feud”, a plaintiff “beset by acrimony”, and a “rock star” banker who “faced his peripeteia” (we looked it up for you - it’s Greek for “reversal of fortune”), you know there’s gotta...more

Quirky Questions: Do All TTAB Deadlines Extend Through Weekends/Holidays? Practitioners Beware!

Many practitioners take for granted the fact that any TTAB deadlines that fall on a Saturday, Sunday or Federal holiday are automatically extended to the following business day. As it turns out, this isn’t always the case....more

Second Circuit Affirms Louis Vuitton Not Liable for Attorneys’ Fees in Parody Handbag Case

It’s been an annual tradition here at The TMCA to write about a trademark and copyright dispute between Louis Vuitton Malletier, S.A. and My Other Bag, Inc. (“MOB”) over a line of canvas tote bags that parodied Louis...more

Comparative Advertising Pitfalls – Consumers Shouldn’t Have To Do The Math

Comparative advertising can be an effective marketing tool to tout product benefits vs. competitors, but consumers shouldn’t need to read confusing fine print disclaimers and whip out their calculators to understand the ad...more

#COVFEFE – It’s a Thing, But Not a Trademark

On May 31, 2017, President Trump tweeted a half-formed message with a mystifying final word: “Despite the constant negative press covfefe”. The Twitterverse and other social media platforms went wild with re-tweets, memes and...more

TiVo Proves More than 15 Minutes of Fame to Succeed on Trademark Dilution Claim

Andy Warhol once famously commented that “In the future everybody will be world famous for fifteen minutes.” For trademarks, fifteen minutes of fame is not sufficient to assert a trademark dilution claim. ...more

Fine Print May Not Be Enough to Avoid False Advertising Liability

If you were shopping for snack crackers and saw Cheez-It packages that looked like the ones shown here, how much whole grain content would you think the crackers contain – a little, a lot, all of it? The Second Circuit...more

Registration of Color Trademarks on Product Packaging: The TTAB Lays Down Some Black and White Rules

Obtaining trademark registration for color trademarks can be a complicated undertaking. In a recent precedential opinion, the Trademark Trial and Appeal Board in In re Forney Industries, Inc. weighed in on the registrability...more

Update – Trump Place Sign to Be Removed from NYC Building After Successful DJ Lawsuit

We previously blogged about the licensing dispute between the building management of 200 Riverside Boulevard in New York City and DJT Holdings over whether management had the right to remove the Trump Place branding on the...more

#HonestAds : A Wrap Up from the 2018 NAD Conference

We are back from the 2018 National Advertising Division Annual Conference: The Truth About Advertising Law – Recent Developments and Best Practices that took place over two days in downtown New York. We heard from the NAD...more

Second Circuit Goes Rogue – Reverses District Court on Priority of Common Law Rights in ROGUE Brand Apparel

A recent Second Circuit decision in a case involving two companies using the ROGUE mark for apparel sets the record straight on what it means to have common law priority of rights in a mark for a category of goods in...more

NAD Enters the Spin Zone – Salad Spinner Superiority Claim Found Unsubstantiated

A recent NAD decision about salad spinners illustrates several principles generally applicable to product testing used to substantiate superiority claims: (1) the test conditions need to be relevant to how the product...more

7/9/2018  /  Advertising , NAD

WTF? USPTO to Continue Refusing Scandalous and Immoral Marks…For Now

In light of ongoing litigation over an applicant’s effort to register the mark FUCT for wearing apparel, the USPTO recently issued an Examination Guide concerning the review of trademark applications under Section 2(a) of the...more

Trump Brand Loses Trademark Licensing Dispute – Rules of Contract Law Prevail

Trademark licensing disputes can present thorny issues at the intersection of contract and trademark law. And when the dispute involves the Trump brand for residential buildings, the adjudication of rights and obligations...more

OG v. OB-GYN: Dr. Drai Drops the Mic on Dr. Dre

Stop me if you’ve heard this one before: an OB-GYN you probably don’t know named Dr. Drai applies to register his name as a trademark and ends up in a dispute with famous rapper Dr. Dre because the rapper fears there will be...more

Gidget Goes Abandoned (the trademark registrations, that is)

May 7 was no day at the beach for Multi-Media Tech. Ventures, Ltd., whose registrations for the mark GIDGET were cancelled in a precedential opinion by the Trademark Trial and Appeal Board. Yazhong Investing, Ltd. v....more

FTC Bugged by Unsubstantiated Mosquito Repellant Claims and Endorsements With Undisclosed Material Connections

The FTC announced an enforcement action last week that focused on two hot button issues – unsubstantiated health claims and failure to disclose material connections between endorsers and product marketers. In re Mikey & Momo,...more

“Fastest Growing Brand” – Don’t Mix and Match Ad Claim and Substantiation

We blogged last week about a recent National Advertising Division case involving a Kimberly-Clark ad campaign that illustrated the well-known NAD maxim: “an advertiser is responsible for all reasonable interpretations of its...more

Historical Fact or Creative Expression? Anastasia Copyright Dispute Proceeds to Trial

Winston Churchill famously commented in 1939 that Russia was “a riddle wrapped in a mystery inside an enigma.” The same could be said about Grand Duchess Anastasia Romanov, daughter of Russian Tsar Nicholas II, who was...more

Assembled in the USA – The FTC Confirms What’s Required

Deceptive “Made in USA” advertising and labeling claims have received a lot of attention from the FTC in recent years, reflecting the agency’s recognition that USA-origin claims are a persuasive selling point and should not...more

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