September 2013

  • Nominative Fair Use – Swarovski Aktiengesellschaft v. Building No. 19

    Nominative Fair Use – Swarovski Aktiengesellschaft v. Building No. 19

    Anthony Cartee

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    Swarovski Aktiengesellschaft v. Building No. 19 – Nominative Fair Use Nominative Fair Use – This case highlighted the fact that trademark law is constantly evolving – the major issue was so-called “nominative” use of a trademark, i.e., use of a trademark to refer to the trademark holder’s own goods in an advertisement by a seller not affiliated with the trademark holder.  The United States Court of Appeals for the First Circuit recently decided the very interesting case of Swarovski Aktiengesellschaft v. Building No. 19.  As the First Circuit noted, different circuits of the United States have fashioned different rules for dealing with… Read More

  • Trade Dress – Does it Have to Have Secondary Meaning?

    Trade Dress – Does it Have to Have Secondary Meaning?

    Anthony Cartee

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    Trade Dress – Does it Have to Have Secondary Meaning? In a previous post we’ve touched on the idea of trade dress – the packaging of a product, and its “look and feel.”  The configuration of the product itself, such as the shape of a bottle, may also be considered trade dress.  Trade dress is protectable under the Lanham Act as something of value that may indicate the source or origin of a product.  Previously we mentioned two additional requirements: the trade dress cannot be functional, and it must be distinctive.  For example the color and shape of a bottle of Tide… Read More

  • Titles of Artistic Works – Implications of Dastar

    Titles of Artistic Works – Implications of Dastar

    Anthony Cartee

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    Titles of Artistic Works – Implications of Dastar Artistic Works – The United States Court of Appeals for the 7th Circuit recently decided the case of Eastland Music Group v. Lionsgate Entertainment.  This action for trademark infringement, and the court’s subsequent analysis helped settle an issue long weighed by courts and commentators – to what extent may the title of an artistic work infringe the trademark of another?  The case also developed the implications of the famous (or infamous) case of Dastar Corp. v. Twentieth Century Fox, one of the most important trademark decisions of the 21st century to date. Background of… Read More

  • When Terms are Merely Descriptive Part 2

    When Terms are Merely Descriptive Part 2

    Anthony Cartee

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    When Terms are Merely Descriptive Part 2 Merely Descriptive Part 2 – Today we continue our discussion of certain interesting topics within the larger question of when certain terms are classified as merely descriptive.  The classification of a term as a descriptive mark carries with it the consequence that the mark receives no protection whatsoever unless secondary meaning can be demonstrated. We previously discussed the merits of foreign words and personal names as potential trademarks and concluded that they are subject to some special rules and tests by the USPTO and the judicial system.  Today we continue our discussion with the examination of… Read More