Author Info for Mintz - Trademark & Copyright Viewpoints

Nicholas Armington

A Brief Synopsis of the Issues Confronting the Federal Circuit in the En Banc Rehearing of Suprema, Inc. v. ITC

On February 5, 2015 the en banc Federal Circuit will hear oral argument in the matter of Suprema, Inc. v. ITC.1 This rehearing reviews the controversial Federal Circuit opinion holding that “an exclusion order based on a…more

Direct Infringement, Induced Infringement, International Trade Commission (ITC), Oral Argument, Patent Infringement

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Paul Brockland

Second Circuit Declines to Decide if Human Skin Can Be a Tangible Medium of Expression under Copyright Law and Affirms Dismissal of Makeup Artist’s Lawsuit

In a recent decision from the Second Circuit, Judges Parker, Chin, and Carney side-stepped a novel question: whether human skin can be the kind of "tangible medium of expression" required for copyright protection. Instead, the…more

Artistic Works, Copyright, Copyright Infringement, Copyright Registration, Copyrightable Subject Matter

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Seth Davidson

Protecting Lawful Streaming Act Signed Into Law

One of the provisions included in the Consolidated Appropriations Act that President Trump signed into law on December 27, 2020 addresses the so-called “felony streaming” loophole in the Copyright Act and criminal code. …more

Copyright, Copyright Infringement, Criminal Code, Internet, Internet Streaming

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Williams Dixon

The Trademark Modernization Act Establishes New Trademark Cancellation Procedures

On December 27, 2020, the Trademark Modernization Act of 2020 (“the Act”) became law as part of the Consolidated Appropriations Act, 2021. Among other changes, the Act includes important amendments to the Lanham Act..…more

Consolidated Appropriations Act (CAA), Corporate Counsel, Ex Partes Reexamination, Intellectual Property Protection, Irreparable Harm

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Evelyn French

Second Circuit Provides Clarity on “Inherently Suspect” Standard, Overturns FTC’s Ruling on 1-800 Contacts Trademark Agreements

On June 11, 2021, the U.S. Court of Appeals for the Second Circuit dismissed the Federal Trade Commission’s (FTC) administrative order against 1-800 Contacts, Inc. The Second Circuit found that the online retailer’s trademark…more

Advertising, Anti-Competitive, Federal Trade Commission (FTC), Intellectual Property Protection, Settlement Agreements

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Richard Gervase, Jr.

Federal Circuit Says District Courts Should Freely Grant Stays When CBM Proceeding Instituted

On November 20, 2014, the Federal Circuit issued its decision in Versata Software, Inc. v. Callidus Software, Inc. reversing the district court’s denial of a motion to stay pending a Covered Business Method (“CBM”) review of the…more

Covered Business Method Proceedings, Inter Partes Review (IPR) Proceeding, Motion To Stay, Patent Litigation, Patent Trial and Appeal Board

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Michael Graif

The Trademark Modernization Act Establishes New Trademark Cancellation Procedures

On December 27, 2020, the Trademark Modernization Act of 2020 (“the Act”) became law as part of the Consolidated Appropriations Act, 2021. Among other changes, the Act includes important amendments to the Lanham Act..…more

Consolidated Appropriations Act (CAA), Corporate Counsel, Ex Partes Reexamination, Intellectual Property Protection, Irreparable Harm

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Rithika Kulathila

Significant 2018 Trademark Decisions

This year the Supreme Court, United States Court of Appeals for the Federal Circuit, and the Circuit Courts penned a number of opinions impacting trademark law. Here are some key takeaways from the past year..…more

Acquired Distinctiveness, Intellectual Property Protection, International Trade Commission (ITC), Irreparable Harm, Lanham Act

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Harold Laidlaw

First Amendment May Protect Use of Trademarks As Artistic Expression

In a recent decision from the Southern District of New York, Judge George B. Daniels held that the strong First Amendment interests in protecting free artistic expression warranted summary judgment that Activision Blizzard’s use…more

Artistic Works, First Amendment, Intellectual Property Protection, Lanham Act, Misappropriation

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Michael McNamara

Inter Partes Review Initial Filings of Paramount Importance: What Is Clear After Two Years of Inter Partes Review Under the AIA

September 16, 2014, marked the two year anniversary since certain provisions of the Leahy-Smith America Invents Act went into effect, including post-grant Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal…more

America Invents Act, Inter Partes Review (IPR) Proceeding, Patent Infringement, Patent Litigation, Patent Reform

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Joseph Miller

Second Circuit Provides Clarity on “Inherently Suspect” Standard, Overturns FTC’s Ruling on 1-800 Contacts Trademark Agreements

On June 11, 2021, the U.S. Court of Appeals for the Second Circuit dismissed the Federal Trade Commission’s (FTC) administrative order against 1-800 Contacts, Inc. The Second Circuit found that the online retailer’s trademark…more

Advertising, Anti-Competitive, Federal Trade Commission (FTC), Intellectual Property Protection, Settlement Agreements

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Michael Newman

Federal Circuit Affirms ITC Jurisdiction for Non-Practicing Entities

On January 10, 2013, the Federal Circuit reaffirmed broad ITC jurisdiction for non-practicing patent enforcement entities by denying Nokia Corp.’s petition for rehearing of InterDigital Commc’ns, LLC v. Int’l Trade Comm’n (2010-…more

International Trade Commission (ITC), Jurisdiction, License Agreements, Nokia, Non-Practicing Entities

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Michael Renaud

Computer Implementation Not Enough to Render Abstract Ideas Patent Eligible

The Supreme Court yesterday issued its long-awaited decision in Alice Corporation v. CLS Bank International addressing the patent eligibility of computer-implemented inventions under 35 USC §101. The Court’s unanimous decision…more

Alice Corporation, CLS Bank, CLS Bank v Alice Corp, Patent Infringement, Patent Litigation

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Adam Samansky

The FUCT Mark: Is the Prohibition on Scandalous Marks Unconstitutional?

The constitutionality of yet another portion of Section 2(a) of the Lanham Act will soon be determined. Following in the footsteps of the blockbuster decision in Matal v. Tam, 137 S. Ct. 1744 (2017) (“Tam”), the U.S. Supreme…more

Appeals, Certiorari, Constitutional Challenges, Disparagement, First Amendment

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Brad Scheller

Federal Circuit Clarifies What Constitutes Use “In Commerce” Under the Lanham Act

On November 14, 2016, the Federal Circuit clarified confusion regarding what is necessary to satisfy the registration requirement that a mark be used “in commerce.”…more

Adidas, Commerce Clause, Lanham Act, Registration Requirement, Trademark Trial and Appeal Board

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Aarti Shah

A Brief Synopsis of the Issues Confronting the Federal Circuit in the En Banc Rehearing of Suprema, Inc. v. ITC

On February 5, 2015 the en banc Federal Circuit will hear oral argument in the matter of Suprema, Inc. v. ITC.1 This rehearing reviews the controversial Federal Circuit opinion holding that “an exclusion order based on a…more

Direct Infringement, Induced Infringement, International Trade Commission (ITC), Oral Argument, Patent Infringement

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Terri Shieh-Newton, PhD

“Why, I declare” … Proper Use of Evidentiary Declarations under New (Post-AIA) Rule 37 C.F.R. 1.130

The Leahy-Smith America Invents Act (AIA) was signed into law on September 16, 2011. While the AIA alters U.S. patent practice in several ways, perhaps the most significant change brought about by the law is the switch from a…more

America Invents Act, Declaration, Evidence, Inventors, Patents

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Peter Snell

Patent Eligibility of Software Innovations After CLS Bank

The en banc Court of Appeals for the Federal Circuit recently could not agree on the proper approach for determining whether software-based inventions constitute patent eligible subject matter under § 101 of the patent statute…more

CLS Bank, CLS Bank v Alice Corp, Investors, Patent Applications, Patent-Eligible Subject Matter

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Serge Subach

The FUCT Mark: Is the Prohibition on Scandalous Marks Unconstitutional?

The constitutionality of yet another portion of Section 2(a) of the Lanham Act will soon be determined. Following in the footsteps of the blockbuster decision in Matal v. Tam, 137 S. Ct. 1744 (2017) (“Tam”), the U.S. Supreme…more

Appeals, Certiorari, Constitutional Challenges, Disparagement, First Amendment

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Michael Van Loy, PhD

USPTO Issues Interim Guidance on Patent Eligibility Under §101: Framework for Considering Whether Patents Are Eligible for US patent Protection Significantly Improved

The United States Patent and Trademark Office (USPTO) has issued revised guidance to its examiners relating to determination of patent eligibility under 35 U.S.C. §101. This “Interim Guidance” provides more specific advice for…more

AMP v Myriad, CLS Bank v Alice Corp, Guidance Update, Mayo v. Prometheus, Patent-Eligible Subject Matter

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Daniel Weinger

DJ Mark Ronson and Bruno Mars Get “Funked” With New Copyright Suit Over “Uptown Funk”

On Friday, October 28, 2016, musicians Mark Ronson and Bruno Mars were hit with a copyright infringement suit based on their wildly popular hit “Uptown Funk.” The plaintiffs, consisting of one living member and the estates of…more

Copyright, Copyright Infringement, Copyright Litigation, Music, Music Industry

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Susan Neuberger Weller

U.S. Trademark Office Issues Guide on How It Will Apply the Supreme Court’s Booking.com Decision to Examination of Relevant Applications

As we reported in our July 7, 2020 blog post on the USPTO v. Booking.com B.V decision, the U.S. Supreme Court ruled that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like…more

Acquired Distinctiveness, Booking.com, Domain Name Registration, Generic Marks, Goods or Services

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James Wodarski

International Trade Commission Takes Steps to Promote Early Adjudication of Dispositive Issues

On June 24, 2013, the International Trade Commission (“ITC”) announced a pilot program for early adjudication of potentially-dispositive issues in investigations. The pilot program is part of ongoing efforts by the ITC to…more

Adjudicatory Process, Copyright, International Trade Commission (ITC), Investigations, Judges

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Karen Won

FDA Issues New Guidance on Drug Naming

Last week, the Food and Drug Administration (“FDA”) issued a pair of Guidance for Industry documents outlining best practices for developing proprietary names (i.e. brand names) for prescription and nonprescription human drug…more

Best Practices, Biologics, Brand, Draft Guidance, Food and Drug Administration (FDA)

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Mintz - Trademark & Copyright Viewpoints

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