Trademarks

The Supreme Court recently granted certiorari in RiseandShine Corp. v. PepsiCo, Inc., a trademark dispute that presents a question with potentially significant implications for trademark litigation: whether a trademark’s inherent strength is a question of fact for a jury or a question of law for a court.

Aldi’s shoppers know exactly what they are buying. Mondelez v. Aldi will test whether trademark law can see, and price, what a package borrows.

It is one of the more common questions a trademark practitioner fields at the start of a brand launch: “We found the name we want to use, but somebody else is already using it — and they never registered it. Are we blocked?” Surprisingly, the answer is oftentimes “not necessarily.”

The Trademark Trial and Appeal Board recently issued a precedential decision affirming an Examiner’s refusal to register WEMBY for athletic apparel. It is a rare precedential Trademark Trial and Appeal Board decision rendered under Sections 2(a) and 2(c) of the Lanham Act, which are not the frequent subjects of litigation.

A trademark infringement dispute between the outdoor apparel brand Patagonia and the drag queen Pattie Gonia may not make it to a jury after the U.S. District Court for the Central District of California referred the matter to mediation, but experts say there’s still a lot to learn from what the filing has to say about current trends in trademark enforcement.

In November, the USPTO refused Taylor Swift’s application to register The Life of a Showgirl. The mark was confusingly similar, the office wrote, to one already federally registered: “Confessions of a Showgirl,” owned since 2015 by a Las Vegas performer named Maren Wade. Wade had built her brand under that name for 12 years. A column in Las Vegas Weekly, a podcast, a touring cabaret. Swift’s merchandise operation continued anyway.

The United States Court of Appeals for the Eleventh Circuit recently held that a cease-and-desist letter can establish personal jurisdiction, finding that cease-and-desist letters sent to Floridian licensees that went beyond merely informing others of the sender’s intellectual property rights are sufficient to establish the minimum contacts necessary to exercise personal jurisdiction over nonresident defendants.

Certain substantive aspects of trademark law and practice are now meaningfully different between the UK and EU, and procedural differences that were already present are now more pronounced. These changes raise important considerations for entertainment businesses operating across Europe.