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
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
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
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
9/13/2019
/ Abandonment ,
Motion for Reconsideration ,
Prior Express Consent ,
Settlement Agreements ,
Trademark Application ,
Trademark Opposition Proceedings ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO ,
Written Consent
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
8/24/2019
/ Artists ,
Copyright ,
Copyright Infringement ,
Copyright Litigation ,
Dismissals ,
Fair Use ,
Fine Art ,
Motion for Summary Judgment ,
Multi-Factor Test ,
Photographs ,
Transformative Use
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
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
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
3/26/2019
/ Attorney's Fees ,
Copyright Infringement ,
Dilution ,
Fashion Branding ,
Lanham Act ,
Louis Vuitton ,
Octane Fitness v. ICON ,
Parody ,
The Copyright Act ,
Trademark Bullying ,
Trademark Infringement
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
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
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
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
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
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
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
9/26/2018
/ Advertising ,
Chamber of Commerce ,
Federal Trade Commission (FTC) ,
Health Claims ,
Market Research ,
Marketing ,
NAD ,
Online Advertisements ,
Online Reviews ,
Social Networks ,
Technical Conference
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
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
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
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
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
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
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
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
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
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