Foreign Trademark Applicants – Breaking Down Section 44: How Foreign Trademark Applicants Can Obtain U.S. Trademark Protection Section 44 of the U.S. Trademark Act, also known as the Lanham Act, provides an important and convenient avenue for foreign trademark owners to apply for trademark registration in the United States. Foreign trademark applicants have two options…
Introduction: The Future of Derivative Works and Copyright Law Under Warhol v. Goldsmith Transformative Use and Infringing Derivatives Derivative Works – On October 12, 2022, the United States Supreme Court heard oral arguments in Andy Warhol Foundation for the Visual Arts v. Goldsmith, a case that has the potential to drastically alter the landscape of…
Gruyere cheese, But Not Gruyere cheese – Can U.S. dairy retailers label cheese as “Gruyere” even if it is not produced in the Gruyère region of Switzerland and France? According to a recent decision from a Virginia federal court, the answer is yes — at least for now. The Virginia Court upheld an administrative decision…
The Billion-Dollar Industry of College Sports & NIL: Name Image Likeness Name Image Likeness (NIL) – Taking Unfair Advantage of Student Athletes. College sports is a billion-dollar game. In fact, the U.S. Department of Education estimates that college sports generate more than $14 billion dollars of revenue each year from ticket sales, TV deals, and…
Fan Art & Fair Use – Many fans enjoy creating original artwork based on their favorite books, TV shows, movies, musicians, and musicals. This might include drawings, t-shirt designs, posters, jewelry, and other items featuring popular characters, figures, costumes, or scenery whose copyright is owned by someone else. While fans may think that their creations…
Landscape Design Copyright Protection – Thanks to California’s sunny climate and culture of outdoor living, many California residents enlist landscape designers to create the perfect outdoor space. These outdoor living amenities are often widely shared on social media sites like Instagram, Pinterest, and Facebook, and publicized in magazines and advertising circulars. Thus, landscape designers should…
Reposting social media content – Learn about copyright infringement risks when reposting social media content. Get tips on asking for permission, giving credit, using repost apps, and understanding fair use. Infringement in the Reposting: Copyright Lawsuits from Reposted Social Media Content What’s in this article… Ask For Permission Give Credit To The Copyright Owner Use…
The Accidental Franchise: Trademark Licensing and the Dangers of Overreach What’s in this article… When Might A Franchise Be Formed? What’s The Difference? Why Does The Franchise Vs. License Distinction Matter? How Is A Franchise Created? How Can A Franchise Be Avoided? How to Avoid Creating an Accidental Franchise Accidental franchise? Franchise law is complex…
Copyright Infringement Claims in the Realm of Arbitration Copyright registration – In order to bring a copyright infringement claim in arbitration, the copyright owner must first register their work with the U.S. Copyright Office. Without registration, the copyright owner may not be able to recover statutory damages or attorney’s fees. Copyright Claims in Arbitration: Don’t…
Trademark a plant? Trademarks have helped create value for all sorts of products. However, may a living thing such as a plant variety that you have bred and created be trademarked? A Rose By Any Other Name … But Likely Not a Trademark What’s in this article… Can You Trademark A Plant? Real World Trademark…
Trademark Modernization Act of 2020: Increasing Protective Measures What’s in this article… Fighting Fraudulent Applications Through The Trademark Modernization Act of 2020 The Trademark Modernization Act of 2020 Strengthens Legitimate Trademark The Trademark Modernization Act of 2020 Could Shorten Deadlines What is the Trademark Modernization Act of 2020? The COVID-19 pandemic has brought about significant…
No Damages, Big Problem: Infringement Claims Lacking Cognizable Injury What’s in this article… No Damages, No Case? Proving Loss Of Profits As Loss Of Good Will Can Also Qualify As Damages No Damages, No Case? The Importance of Cognizable Damages in Trademark Infringement Claims In a highly competitive marketplace, established companies sometimes use a variety…
In a world of bustling creativity and a thriving technology industry, it is essential for businesses and startup companies to be wary of copyright issues. Generally, copyright protection is automatic and provides the author exclusive rights to reproduce and distribute the work. However, copyright owners are only entitled to bring a claim for infringement against…
Copyright After Death Copyright after death – In general, copyright protection exists during the lifetime of the creator and for a certain period of time after their death. The duration of this posthumous protection may vary depending on the country and the type of work, but it typically lasts for several decades. During this time,…
LLC Withdrawal and the Operating Agreement – The limited liability company (“LLC”) has become one of the most desired forms of a closely held business organization. As an unincorporated business entity, the LLC is favored because of its pass-through tax treatment as well as its maximum operating flexibility. However, an LLC also demands a well-written…
Understanding Brand Bullies On top of today’s extremely competitive market, small businesses may be also dealing with a “brand bully.” Also known as a trademark bully, a brand bully is a company that resorts to litigation and uses its trademark rights to harass and intimidate another business without a sound legal basis. These companies often…
Why You Need to Maximize Your Copyright Protection Early Copyright is a form of protection grounded in the U.S. Constitution granted for original works fixed in a tangible medium of expression and therefore exists the moment your work is created. 17 U.S.C. Code § 102. But you also have the option of registering the copyright…
Trademark and Copyright Issues to Consider With Sales of Athletic Goods and Apparel When can a generic design rise to an infringement of intellectual property rights? A common and growing occurrence comes when one takes an attribute of a famous athlete (like a number), puts it with that athlete’s team color scheme, and the next…
SCOTUS Ruling In USPTO v. Booking.com Opens The Door For Generic Domain Owners To Register Their Trademark The U.S. Patent and Trademark Office (USPTO) has believed that “generic.com” domain names were almost always generic and therefore not registrable under trademark law. However, the Supreme Court’s nearly unanimous decision in USPTO v. Booking.com (2020) 591 U.S.…
Trademark Ornamental Refusals – What to Consider Sometimes, the USPTO will issue eccentric and unusual refusals to a trademark application. One such refusal is called an ornamental refusal. If you receive a trademark ornamental refusals, it means your registration of your applied-for mark has been refused because your mark is essentially merely decorative. That is,…
Pitfalls & Benefits of Owning a Supplemental Registration it you are an Online Retailer. Supplemental Registration – The United States has two trademark registers: the Principal Register and the Supplemental Register. Online retailers, most notably Amazon’s brand registry, have primarily given preference to the Principal Register. This is because registration on the Principal Register affords…
LEGAL CONSIDERATIONS DURING COVID-19 PANDEMIC: CONTRACTUAL AGREEMENTS AND FORCE MAJEURE With the onset of the COVID-19 pandemic, there is increasing disruption to supply chains for buyers and sellers of goods. From unpaid invoices to the inability to fulfill an order, your business may be dealing with issues that are increasingly becoming more common. It is…
REJECTED CUSTOM GOODS & SELLER’S REMEDIES Rejected Order? In a time when you can sell or purchase products from virtually anywhere in the world, there are many potential problems you can run in to as a seller, especially when you produce customized products. For example, let’s say you’re a seller of custom goods. You don’t…
Renewing Your Trademark-Excusable Non-Use Renewing Your Trademark – Even after you have successfully registered a mark with the US Patent and Trademark Office, you are not done in ensuring your mark stays registered and protected. Your trademark application must be renewed 5-6 years after your first registration in order to maintain that registration. You must…
The ‘Deceptively Misdescriptiveness’ Rejection Deceptively Misdescriptiveness – There are many reasons your trademark application may be denied. One of the more unique reasons is something called “deceptively misdescriptiveness.” Your first question is probably “what does that even mean?” A mark is considered deceptively misdescriptive if it describes an ingredient, quality, characteristic, function, or feature of…
The Primarily Merely a Surname Rejection Primarily Merely a Surname – You’ve submitted a trademark application and after many months, you finally receive news from the USPTO—but it’s an Office Action. There are several reasons you may receive a rejection from the USPTO for a trademark application, the most popular one being a Section 2d—“likelihood…
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TV-Streaming Service Provider May Seek Compulsory Copyright Licenses TV-Streaming Service Provider May Seek Compulsory Copyright Licenses – In what may be considered a surprise decision, a federal judge ruled that online television streaming service, FilmOn Air X, may be treated as a cable company by allowing it the same compulsory copyright licenses that broadcast companies…
Amazon Faces Trademark Infringement Claim Amazon Faces Trademark Infringement Claim – The U.S. Court of Appeals for the Ninth Circuit found that internet-based retail giant Amazon.com could be misleading consumers by displaying a watchmaker’s competing products when users search for its watches (read the full opinion here). Multi Time Machine Inc. (“MTM”), a luxury, military style…
Justin Bieber & Usher Copyright Infringement Justin Bieber & Usher Copyright Infringement – Pop stars Justin Bieber and Usher Raymond will be heading back to court after the Fourth Circuit for the U.S. Court of Appeals ruled that a reasonable jury may find they infringed copyrights in their 2010 hit song, “Somebody to Love.” (Read…
Reasonableness of Copyright Licensing Fees Reasonableness of Copyright Licensing Fees – A federal district court in New York ruled that Broadcast Media Inc. (“BMI”) may collect 2.5% of Pandora’s total revenue in exchange for licenses to publicly perform copyrighted music. (Read the full opinion here) BMI vs. Pandora BMI represents music copyright holders, and licenses…
A federal court of appeals reversed an earlier ruling that forced Google to remove a YouTube video portraying an actress making anti-Muslim statements.
The U.S. Court of Appeals for the Second Circuit ruled the Polo Association may sell sunglasses with a logo that is similar to the Ralph Lauren trademark.l
Copyright Protection for Recipes – Restaurateur Denied Copyright Protection Denied – A federal court ruled that an Ohio restaurateur’s recipes were not protectable under copyright laws. The court issued its ruling earlier this year on a motion for summary judgment, and the plaintiff has since filed her notice of appeal. (Read the full opinion here.)…
TTAB Decisions Have Preclusive Effect on Later Litigation TTAB Decisions – In yet another intellectual property-focused case, the Supreme Court has ruled that a decision by the Trademark Trial and Appeal Board (TTAB) may have a binding, preclusive effect on later litigation in a federal district court. The opinion came with a narrowed focus, allowing…
Oprah Wins Round Two – Trademark Infringement Case Oprah Winfrey claimed a second victory against motivational speaker Simone Kelly-Brown in a trademark battle over the phrase “Own Your Power.” Kelly-Brown and her company, Own Your Power Communications, claimed Winfrey, and other named Defendants infringed on her trademark under both federal and state laws, and included…
Graffiti Artists Copyright Infringement Case Moves Forward Graffiti Artists Copyright Infringement Case – Italian fashion house Roberto Cavalli will be heading to court after a federal judge overruled its motion to dismiss a copyright infringement case against it earlier this month. (Read the full memorandum here) The clothing and accessories company was sued by three…
SCOTUS Ushers in New Year with Trademark Ruling Trademark Ruling – With the New Year comes new decisions being handed down by the Supreme Court, and there have already been a handful related to intellectual property. You may remember our earlier case preview for Hana Financial v. Hana Bank in which the Supreme Court would…
Decreased Filing Fees & Increased Efficiency Promises USPTO Decreased Filing Fees – In what should come as great news to attorneys and their clients, the United States Patent and Trademark Office (USPTO) has amended several regulations that will increase electronic processing of trademark applications while reducing application fees. To achieve this, the USPTO will offer…
Grooveshark Loses Copyright Infringement Case to Record Label Giants Grooveshark Loses Copyright Infringement Case – Grooveshark became yet another file sharing website to face defeat against the recording industry for copyright infringement. It came shortly after Sirius XM Radio, Inc. lost to a 1960s band for its infringement of its music. (Read the full opinion here)…
Sherlock Holmes Copyrights Sherlock Holmes Copyrights – The Supreme Court declined to hear a case involving Sherlock Holmes copyrights, leaving almost all of the late author’s work within the public domain, i.e. they no longer have copyright protection. The case involved the Estate of Sir Arthur Conan Doyle, who originally created the famed characters, and…
Trademarking Food – Pizzeria Makes Case Pizzeria Makes its Case for Trademarking Food – A federal court in Texas ruled that flavors of a pizza chain’s food and its plating techniques lacked trademark and trade dress protection. The pizza chain, New York Pizzeria, Inc. (NYPI) alleged that Ryandir Syal, a restaurateur, along with other defendants,…
What began as a trademark infringement case, developed into a battle of possible “genericide” when two popular moving and storage companies went head-to-head in federal court. Back in 2012, PODS sued U-Haul for trademark infringement for its use of “pods” under both state and federal laws. U-Haul countered that it was not infringement, because pods has become a generic term and has lost its distinctiveness in the market.
Flo & Eddie Inc v. Sirius XM Radio Inc Flo & Eddie Inc v. Sirius XM Radio Inc – In a legal battle questioning copyright protection for the 1967 hit song, “Happy Together,” the U.S. District Court for the Central District of California held that sound recordings made before February 15, 1972, are granted exclusive…
Warner Brothers Trademark Infringement Case – Keeps Clean Slate Warner Brothers Trademark Infringement Case – In a case stemming from the 2012 box office hit, The Dark Knight Rises, the U.S. Court of Appeals for the 7th Circuit granted Warner Brothers’ motion to dismiss allegations of trademark infringement made against it for a fictional software program…
Intellectual Property Law – No Dull Moments Intellectual Property Law – With Labor Day quickly approaching, and Back-to-Work and Back-to-School mentality haunting many of our minds, it’s a good time to reflect on what’s transpired in the IP world so far this year. From the Trademark Trial and Appeal Board (TTAB) revoking the Redskins’ registered…
Protecting ‘Pig Sooie’ & Distinctive Sounds Through Trademark Earlier this summer, the University of Arkansas, home of the Razorbacks, secured trademark protection for its “Calling the Hogs” chant. Football and basketball fans may recognize the familiar “woo pig sooie!” cheer, which was granted trademark protection by the United States Patent and Trademark Office (USPTO), Registration Number…
What Would Jesus Do – TTAB Decides Trademark Battle What Would Jesus Do – After a six-year legal battle, Tyler Perry has officially won the trademark rights to “What Would Jesus Do.” Kimberly Kearney, a reality TV star, originally registered the mark in 2007 intending to use it for a reality show of her own.…
Aereo Inc Copyright Loss Leaves Much in the Clouds Aereo Inc’s Copyright Loss Leaves Much in the Clouds – The Supreme Court recently held that Aereo, Inc., infringed on copyrights belonging to cable broadcasters, producers, distributors, and marketers with its online cable streaming service. See opinion here. As part of its service, Aereo provides each…
Contributory Cybersquatting Contributory Cybersquatting – Does the Anticybersquatting Consumer Protection Act (ACPA) provide a basis of liability for a domain name registration service if one of its registrants is guilty of cybersquatting? The United States Court of Appeals for the Ninth Circuit upheld the district court’s opinion that the ACPA does not provide for so-called…
Charbucks – Trademark Dilution ? Trademark Dilution – Is the use of the term “Charbucks” by a coffee company trademark dilution of the famous “Starbucks” coffee mark? The United States District Court for the Southern District of New York said that the use of “Charbucks Blend” and “Mister Charbucks” marks by Black Bear (a coffee…
WIPO / ICANN Adjudication for Domain Name Disputes WIPO / ICANN Adjudication – After a great deal of hue and cry, the US government asked the World IP Organization (WIPO) to come up with a way to regulate internet domain name disputes. After much debate, the idea of a non-profit corporation with a mandate to…
International Trademark Protection – The Madrid Protocol The Madrid Protocol – There are multiple ways to protect your brand overseas, but the most commonly referenced method is the Madrid Protocol. The United States is a signatory to the Madrid Protocol, an international treaty that covers the mutual recognition of trademarks by its various member nations. In…
Trademark Abandonment Trademark Abandonment – Under section 45 of the Lanham Act a mark will be abandoned under certain circumstances: (1) When its use has been discontinued with intent not to resume such use. There are two parts to this element. “Intent” may be an actual statement, or implied by circumstances. What continues a discontinuation…
Trade Dress – Whiskey Bottle Showdown David Versus Goliath in Whiskey Bottle Showdown Trade Dress Showdown – One of the iconic, uniquely American products out there is Tennessee Whiskey. With rugged, outlaw roots stemming from the days of moonshining and prohibition but now accepted the world over as a highly sought after beverage, even the…
The Trademark Registration Process Part 3 Trademark Registration Process Part 3 – In Trademark Registration Part 2 of the trademark registration process we looked at the process for obtaining Federal registration of a mark. Today, in tademark registration process part 3, we conclude with some miscellaneous, but still important, issues in the trademark registration process.…
Can Government Entity Trademark Insignia? Government Entity Trademark Their Insignia? – Today we look at an interesting case, In Re City of Houston, before the United States Court of Appeals for the Federal Circuit. This case consolidated two cases, one brought by the city of Houston, Texas, and the other by the government of the District of…
Registration Process for Trademark Part 2 Registration Process – Part 2 – Once the use in commerce (or intent to use) requirement is satisfied by the aspiring trademark registrant, the next step is to file an application for Federal registration with the United States Patent and Trademark Office (“USPTO” or “Trademark Office”). The use requirement…
The Trademark Registration Process Trademark Registration Process – How does one go about registering a trademark? What are some of the requirements in order to obtain protection? There are many steps and several issues to consider, but overall the process is not arcane or excessively complicated (unlike, for instance, the steps necessary to obtain a…
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…
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…
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…
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…
Attorneys Fees Under the Lanham Act Attorneys Fees – Today we look at Aviva USA Corporation v. Vazirani, a case recently heard by the United States District Court for the District of Arizona. Interestingly, Arizona is located in the famous (or infamous) 9th Circuit of the United States, the largest circuit including areas as diverse as Alaska,…
When are Terms Merely Descriptive? Part I We have previously discussed trademark issues with descriptive terms. To recap, terms that are merely descriptive receive the least amount of trademark protection. A descriptive term, such as “Fish-Fry” – generally does not qualify for protection unless the term has acquired some form of secondary meaning in the perception of…
When is it Ok to Use Another’s Artwork? Use Another’s Artwork? – Today we take a look at the case of Seltzer v. Green Day and examine the circumstances under which one may use the creative works of another person. The major issue in the case was fair use of copyrighted material – in this…
Fair Use of Descriptive Marks Fair Use – Today we take a look at the fair use defense to allegations of trademark infringement. Beware! The fair use defense in trademarks is quite different from its more notorious cousin, the fair use defense in copyright actions. In a previous post we looked at Zatarain’s v. Oak Grove Smokehouse to…
Preliminary Injunctions for Trademark Infringement Preliminary Injunctions – When you accuse someone of infringing your valuable trademark, what actually happens? In American Rena International Corp v. Sis-Joyce International the United States Court of Appeals for the Ninth Circuit issued a ruling that very clearly articulated the standards for what is known as preliminary injunctions. Preliminary Injunctions, Generally…
Secondary Meaning – Zatarain’s v. Oak Grove Smokehouse Secondary Meaning – Terms that are merely descriptive are not usually protectable under the Lanham Act as trademarks. For example, one could not get a trademark on the term “FRIED CHICKEN” – because the term simply describes an entire class of product. If that was the end…
Trademark Trial Appeal Board & Infringement Lawsuits Trademark Trial Appeal Board (TTAB) – In B&B Hardware v. Hargis Industries the United States Court of Appeals for the Eighth Circuit ruled on a contentious case of trademark infringement litigation that had been going on for over fifteen years. One of the central issues was the very, very interesting…
Three Intellectual Property Protections – Navigating Different IP Protections Three Intellectual Property Protections – You now have a business and with it, a whole lot of ideas on how to brand it, market it, and make big waves in the industry. But how do you navigate the different types of intellectual property regimes to go…
Genericide: How Success May Cancel A Trademark Genericide Discussion – What do the terms “Thermos,” “Aspirin,” and “Yo-Yo” have in common? They are all very successful products that have actually lost their trademark protection under the Lanham Act due to a doctrine known as Genericide. In general, when accused of trademark infringement, one of the common defenses…
Voluntary Cessation and Loss of Standing Voluntary Cessation Case – Competitors should not be able to use trademark lawsuits as offensive weapons. This was the clear message issued by Justice Roberts for a unanimous Supreme Court in the case of Already LLC v. Nike Inc. In the case, also covered by Reuters, Nike sued Already (DBA Yum) for…
Gucci America Inc v. Guess Inc – When Imitation Exceeds Flattery Imitation is the sincerest form of flattery. Good artists borrow; great artists steal. Nowhere are these old adages more apt than the hidden focus groups and team meetings of the fashion industry. What’s trendy this season is often only good for the clearance rack…
Trade Dress Rights – Beyond Words & Logos Trade Dress Rights – Trade dress is a form of intellectual property. Trade dress is the visual element or aesthetics of a product or its packaging. Trade dress can be the visual appearance of a product or packaging that signify the entity behind the product to consumers.…
Supplemental Register & Descriptive Mark Supplemental Register & Your Descriptive Mark – The U.S. Patent and Trademark Office (USPTO) is aware that not every business owner or organization is going to seek to employ fanciful marks like “Kleenex.” More likely than not, marks are going to be considered descriptive with words that describe an ingredient,…
Degree of Protection & Spectrum of Distinctiveness Degree of Protection & Spectrum of Distinctiveness – So, you’ve got a mark in mind that you want to register, what do you do next? Find a trademark attorney, but before you do that, it’s important to understand how much protection your mark may receive or if it…
Federal Trademark Registration Benefits Trademark Registration Benefits – These days, it seems like everyone’s on the trademark registration train, but some might not even know why there are trademark registration benefits and how important those benefits are. Those folks who aren’t on the train question whether they should be on it. For owners of small…
