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The Intellectual Property Strategist
USPTO Looking to Beef Up Its Own Trademark Protection
Scott Graham
The agency announced that the Department of Commerce has applied to register the USPTO’s marks in a bid to crack down on scammers who are impersonating the agency.
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Entertainment Law & Finance
New Report Finds Declines In Copyright, Trademark Suits
Tom McParland
Copyright lawsuit filings declined significantly over the last two years, according to a new report by Lex Machina, which found that overall cases had dipped from a 2018 peak that was driven primarily by surges in file-sharing litigation.
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The Intellectual Property Strategist
Counterfeiting vs. Infringement: Second Circuit Weighs In
Eric Alan Stone and Catherine Nyarady
In two recent cases, the Second Circuit provided guidance as to the circumstances that may give rise to liability for counterfeiting, as distinct from mere infringement, and addressed liability for contributory infringement for counterfeiting.
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The Intellectual Property Strategist
Not Your Property, Your Business: When Customized Products Become the Business of Rights Holders and Courts
Chidera Anyanwu and Chloe Delehanty
In some instances the appearance of third-party intellectual property on items purchased, owned and customized by the purchaser may be legal under the doctrines of first sale and fair use.
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The Intellectual Property Strategist
New COVID Relief Bill Brings Changes to Trademark and Copyright Practice
Eugene Y. Mar, Nate A. Garhart and Ashleigh Nickerson
The new, more than 5,000-page spending bill, which includes the latest COVID-19 relief, had a few surprises under its cover. Two of those surprises focus directly on intellectual property and amount to sea changes in the trademark and copyright infringement realms.
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The Intellectual Property Strategist
Unseating Inelegant Notions of Product Design Functionality
Jonathan E Moskin
In Blumenthal Distributing, Inc. v. Herman Miller, Inc., the 9th Circuit considered whether or not the or not the best-selling piece of furniture ever is functional.
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Entertainment Law & Finance
Global Perspective On Filing Trademark Registrations
Peter E. Nussbaum and Neha Bhalani
The entertainment industry is a global business, but many U.S. brand owners do not realize that their valuable trademark rights stop at the U.S. border.
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The Intellectual Property Strategist
Deciphering the USPTO’s Material Alteration Standard for Amending Marks
Chris Bussert
As brands mature over time, their owners often seek to update marks that are subject to a federal registration or registration application. In some cases, the impetus for the amendment may be deliberately to freshen, tweak, or otherwise modernize the subject mark. In other cases, brand owners may recognize after the fact that their current usage of a mark does not match the mark as originally registered or applied for.
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The Intellectual Property Strategist
Testing for Genericness After USPTO v. Booking.com
Alex Simonson
In the recent U.S. Supreme Court case of USPTO v. Booking.com, the U.S. Supreme Court held that the term Booking.com is not necessarily generic merely because it is composed of two components, each itself generic. In so deciding, Justice Ginsburg averred that there is an appropriate metric to determine if such a term is indeed generic, that of consumer perception.
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Entertainment Law & Finance
Methods for Trademark Valuations
Stacey C. Kalamaras and Henry Kaskov
Valuations of trademarks, such as those in the entertainment industry, are most commonly performed in relation to a sale or licensing transaction or for lending and collateral purposes.
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The Intellectual Property Strategist
What’s Your Trademark Worth? Determining the Value of Trademarks For Collateral, Sale or Licensing
Stacey C. Kalamaras and Henry Kaskov
This article explores the options available to a client to value its trademarks during a financial crisis, to ensure one of the most valuable assets it owns can continue to work for the company and see it through the lean times.
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Entertainment Law & Finance
Damages In Trademark Infringement Litigations
Mark A. Salky and Jessica Johnson Fishfeld
During a time when online marketing, virtual shopping and electronic communication are more widely used than ever, it is critically important for entertainment industry businesses to be highly aware of how they are using trademarks, the scope of a trademark owner’s rights and the consequences of infringing them.
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The Intellectual Property Strategist
The Russian Vodka Saga
Jared Looper
Federal Treasury Enterprise Sojuzplodoimport v. Spirits International BV
What do the fall of the Soviet Union, a heist of trademark rights, and Stolichnaya vodka have in common? They are all key components of the Russian Federation’s efforts to reclaim its trademarks in Stolichnaya vodka.
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The Intellectual Property Strategist
What’s in a Name? Booking.com and Consumer Perception Evidence
David H. Bernstein and Jared I. Kagan
In the first case in U.S. Supreme Court history argued by telephone, the Court ruled 8-1 in favor of Booking.com, holding that it could register as a trademark its eponymous domain name BOOKING.COM.
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Cybersecurity Law & Strategy
What’s In a Name? Booking.com and Consumer Perception Evidence
David H. Bernstein and Jared I. Kagan
In the first case in U.S. Supreme Court history argued by telephone, the Court on June 30, 2020 ruled 8-1 in favor of Booking.com holding that it could register as a trademark its eponymous domain name BOOKING.COM.
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Entertainment Law & Finance
Defense Counsel Discuss Outcome in Dance Steps Case
Jenna Greene
Kirkland & Ellis has notched a win in cutting-edge litigation that questions the protectability of dance steps, what constitutes choreography and the relationship between copyright, and right of publicity and trademark law.
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The Intellectual Property Strategist
Eliminating Willfulness as a Prerequisite to Recovering an Infringer’s Damages in Dilution Cases
Sarah Benowich
Romag Fasteners, Inc. v. Fossil, Inc.
The Supreme Court, settling a circuit split, held that, although highly important, willfulness is not a prerequisite for a trademark infringement plaintiff to obtain a profits award.
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The Intellectual Property Strategist
U.S. Supreme Court Rejects ‘Defense Preclusion’ in Trademark Suit
Anthony J. Dreyer
On May 14, 2020, the U.S. Supreme Court resolved a circuit split, finding that any preclusion of litigation defenses must comply with traditional res judicata principles, and ruling that Lucky Brand was not precluded from asserting its defenses in its long-standing trademark litigation against Marcel Fashions Group
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Entertainment Law & Finance
TRO Bid in Arts Case Results in COVID-19 Rebuke from Judge
Jenna Greene
At this moment in COVID-19 time, if your case involved stopping the sale of counterfeit unicorn products on the Internet, sorry, that wouldn’t be an emergency. That was the message from U.S. District Judge Steven C. Seeger, in a decision denying a request for a temporary restraining order filed on behalf of Art Ask Agency, the exclusive licensee for the fantasy art of British artist Anne Stokes, who is popular among the Dungeons and Dragons crowd.
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The Intellectual Property Strategist
The Trademark That Got His Goat
Mary A. Donovan
In a recent trademark cancellation case that has drawn “human interest” attention in the news, the plaintiff appealed an adverse decision to the Federal Circuit. The plaintiff was not “kidding” when he expressed his opinion that the registered mark, described as “goats on a roof of grass,” is demeaning to goats which, in turn, is offensive to him.
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The Intellectual Property Strategist
When Are Short Phrases in Songs Protectable?
Robert W. Clarida and Robert J. Bernstein
It’s a common fact pattern: A songwriter alleges that another songwriter has infringed the lyrics of Song A by using a similar short phrase, frequently a current slang phrase, in the lyrics of Song B. Claims like this do not often succeed because “words and short phrases such as names, titles, and slogans” are “not subject to copyright.”
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The Intellectual Property Strategist
IP News
Anthony H. Cataldo
U.S. Supreme Court to Hear Booking.com Trademark Case
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The Intellectual Property Strategist
Exploring the Nebulous Boundaries of Trade Dress
Nicole D. Galli
Now that we are in the digital age, questions have been raised about the trade dress of websites and apps.
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The Intellectual Property Strategist
IP News
Howard Shire and Christine Weller
Penn State Files Trademark Lawsuit against Sports Beer Brewing Company
Can OSU Trademark the Word “The”?
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The Intellectual Property Strategist
Seeing Green: Protecting Brands In the Cannabis Industry
David S. Gold
Branding is not a new concept, nor are the various intellectual property laws that protect brands. What is new to most is how this burgeoning industry can take advantage of those laws within the context of state and federal restrictions.
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The Intellectual Property Strategist
SCOTUS to Address Whether Lanham Act Requires Willful Infringement for Profit Disgorgement
Norman C. Simon and Patrick J. Campbell
The decision in Romag Fasteners v. Fossil will bring welcome uniformity, ending the status quo where eligibility to recover profits under the Lanham Act depends on which court is deciding the dispute
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Entertainment Law & Finance
Limit in Supreme Court Striking Down Ban On ‘Scandalous’ Trademarks
Brian R. Michalek
In the U.S. Supreme Court’s ruling in Iancu v. Brunetti, Justice Sonia Sotomayor’s dissent cautioned that the decision is likely to pave a path to a “coming rush to register [vulgar, profane, or obscene] trademarks.” The reasoning stems from the court’s majority finding that a portion of 15 U.S.C. §1052 — which had previously prohibited the registering of “immoral” or “scandalous” trademarks — is unconstitutional. Practically speaking, however, this “coming rush” will likely not be the case, even via the entertainment industry.
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The Bankruptcy Strategist
Supreme Court Rules Rejection of Trademark License Does Not Rescind Rights of Licensee
Mark Page
Mission Product Holdings, Inc. v. Tempnology, LLC
The question is whether a debtor’s rejection of its agreement granting a license “terminates rights of the licensee that would survive the licensor’s breach under applicable nonbankruptcy law.”
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The Intellectual Property Strategist
Supreme Court Holds Bar Against Registration of Immoral or Scandalous Marks Violates the First Amendment
Peter Kidd
Iancu v. Brunetti
The Supreme Court held the bar against registration of immoral or scandalous marks “collided” with well-established free speech doctrine, namely, that laws disadvantaging speech based on the views expressed thereby violate the First Amendment.
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Entertainment Law & Finance
Bit Parts
Stan Soocher
Rick Ross Defeats Trademark Suit over Mastermind Album
TV Host’s Course of Conduct During Life Bars Estate From Getting His IP and Publicity Rights
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The Intellectual Property Strategist
SCOTUS Agrees to Hear Case Determining Federal Registrability of Immoral and Scandalous Trademarks
Dana Justus and Monica Riva Talley
This case should determine the availability of federal trademark registration for “immoral” and “scandalous” marks – in this case, the acronym “FUCT” for a clothing line.
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The Intellectual Property Strategist
An Overview of Recovering Trademark Infringement Damages
Marcus Harris and Ryan Burandt
This article discusses recovering damages for trademark infringement and various strategies for establishing those damages.
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The Intellectual Property Strategist
IP News
Christine E. Weller
Converse v. ITC
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Entertainment Law & Finance
Litigation over ‘Ultra Music’ Licensing Raises International Trademark Issues
Zach Schlein
A Miami, FL, federal jury ruled in favor of a Croatia-based production company in their trademark dispute with a titan of concerts, Ultra Music Festival.
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Entertainment Law & Finance
How Entertainment and Media Brand Owners Can Prepare for Brexit Scenarios
William Stroever
Following the “Brexit” vote by the United Kingdom signaling its intent to leave the European Union, there was a rush of speculation and guesswork about how EU trademark and design rights would be treated. What progress has been made and what obstacles remain to a smooth transition?
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Entertainment Law & Finance
'Star Wars' Sabacc Game Lawsuit Is Resolved
Ross Todd
Lucasfilm Ltd. won a dispute over the rights to the card game that plays a pivotal, if small, role in the greater Star Wars galaxy.
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Entertainment Law & Finance
Prince’s Estate Files NJ Lawsuit over prince.com
Charles Toutant
A dealer in Internet domain names is accused in a cybersquatting suit of an illegal attempt to seize on the posthumous popularity of Prince.
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Entertainment Law & Finance
Disney Claims over Party Characters Partially Dismissed
Jenna Greene
Disney Enterprises has been handed a setback in an ill-conceived lawsuit: Going after people who dress up as Disney-owned characters like Elsa from Frozen or Chewbacca from Star Wars to perform at children's birthday parties.
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The Intellectual Property Strategist
Trademark ‘Theft’ With AdWords Keyword Bidding
Aaron Cohn
Many Courts Have Determined that AdWords Bidding Alone Does Not Create Sufficient Consumer Confusion to Support Trademark Infringement Claims
As Internet searching continues its rapid migration to mobile and inadvertent infringement becomes inevitable, the courts are likely to see an increase of litigation in this area.
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The Intellectual Property Strategist
Brexit and IP: Finally Some Real News, and What It Means for Attorneys
Mark Holah
Much has been written about what will happen to EU-wide IP rights after Brexit — and whether, and how, the protection given by those rights will be maintained in the UK. Finally, we have some clarity about what is going to happen.
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Entertainment Law & Finance
Bankruptcy Impact on Trademarks, Distribution Rights
Shmuel Vasser and Yehuda Goor
It’s not uncommon for rights licensees in the entertainment industry to find themselves in a rights dispute when a licensor files for bankruptcy.
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The Bankruptcy Strategist
The Ripple Effect of Rejecting Trademark Licenses
Mark W. Page
The First Circuit Widens the Controversy
In In re Tempnology, the First Circuit held that the debtor’s rejection of a trademark license strips the nondebtor licensee of any right to continue to use the trademarks. In so doing, the court takes the same approach as the Fourth Circuit and rejects the approaches advocated by the Third and Seventh Circuits.
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Entertainment Law & Finance
Trademark Board’s Precedential Ruling on Use in Commerce
Howard J. Shire and Jeremy S. Boczko
In a nearly 50-page precedential opinion in a ruling of great significance to the entertainment industry, a TTAB panel of judges recently underscored the need to prove actual use in commerce in order to register a trademark, regardless of how low the standard for use under the Lanham Act has recently become.
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The Intellectual Property Strategist
Federal Circuit Holds Scandalous or Immoral Marks Entitled to Registration
Stacey C. Kalamaras
Refusal Is an Unconstitutional Violation of Free Speech
On Dec. 15, 2017, a unanimous Court of Appeals for the Federal Circuit held that despite Appellant’s mark comprising “immoral or scandalous” matter, the PTO could no longer refuse federal registration of such marks on the grounds that this refusal violated the free speech clause of the First Amendment of the U.S. Constitution.
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The Intellectual Property Strategist
TTAB: Trademark Use Must be Proven
Howard J. Shire and Jeremy S. Boczko
Board Says It Doesn’t Matter Whether Use Is By a Trademark Owner Or a Third Party
In a nearly 50-page precedential opinion, the Trademark Trial and Appeal Board (TTAB) panel of Judges Adlin, Heasely, and Lynch, underscored the need to prove actual use in commerce in order to register a trademark, regardless of how low the standard for use under the Lanham Act has recently become. Tao Licensing, LLC, v. Bender Consulting d/b/a Asia Pacific Beverages.
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The Intellectual Property Strategist
The Case for Use of Accelerated Case Resolution in TTAB Proceedings
Chris Bussert and Harris Henderson
This article outlines the available options under the Trademark Trial and Appeal Board's ACR rules and discusses the strategic considerations in determining whether ACR might be advantageous, particularly in light of increasing pressure from clients to reduce costs and expedite the decision-making process.
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Entertainment Law & Finance
Decision of Note
Empire TV Show Doesn't Infringe Hip-Hop Label Trademark
Stan Soocher
The U.S. Court of Appeals for the Ninth Circuit decided that the Fox TV show Empire didn't violate federal Lanham Act or California trademark rights of the urban music record label Empire Distribution.
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The Intellectual Property Strategist
Protecting Product Packaging and Product Configuration
Marcus S. Harris
Registering and protecting product designs is challenging. Preliminarily, trade dress cannot be registered or protected as a trademark if it is functional — if it is “essential to the use or purpose of the article or it affects the cost or quality of the article.”
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Entertainment Law & Finance
Bit Parts
Stan Soocher
No Trademark Protection for Dirty Dancing Phrase Used in Financial Services Ad
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Entertainment Law & Finance
What Will Impact Be of Supreme Court's Tam Decision?
Theodore H. Davis Jr. and Samuel T. Kilb
In Matal v. Tam, the trademark case involving the name of the Asian-American rock band The Slants, the SCOTUS held that the portion of §2(a) of the Lanham Act, 15 U.S.C. §1052(a), that prohibits the federal registration of potentially disparaging trademarks and service marks, violated the Free Speech Clause of the First Amendment.
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