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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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The Intellectual Property Strategist
Matal v. Tam and Viewpoint-Discriminatory Prohibitions Against Federal Registration
Theodore H. Davis Jr. and Samuel T. Kilb
In Matal v. Tam, the SCOTUS held that a portion of Section 2(a) of the Lanham Act, 15 U.S.C. §1052(a), prohibiting the federal registration of potentially disparaging trademarks and service marks, violated the Free Speech Clause of the First Amendment.
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The Intellectual Property Strategist
Manufacturers vs. Exclusive Distributors: Who Owns the Trademarks?
Kyle-Beth Hilfer
The Third Circuit has adopted McCarthy's "ownership" test in determining whether a manufacturer or distributor owns a trademark in the absence of an express agreement between the parties.
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Entertainment Law & Finance
Bit Parts
Stan Soocher
Consumers' Digital Music Price-Fixing Suit Ruled No "Class" Act
Marshall Tucker Band's Former Manager Loses Bid for Attorney Fees After Prevailing in Trademark Action Brought Against It By the Band
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Entertainment Law & Finance
Supreme Court News
‘Disparaging’ Trademarks Decision
High Court Declines Takedown Notice/Fair Use Case
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Entertainment Law & Finance
Bit Parts
Stan Soocher
Mash-Up of Dr. Seuss/Star Trek Components Is a Fair Use
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Internet Law & Strategy
"'Google' It" Is a Protected Trademark
Ross Todd
Consumers might use "Google" as a verb, but that doesn't mean Google's trademark for its search engine is generic.
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Entertainment Law & Finance
New York Court Sees No Fair Use in Star-Trek Inspired Fan Film
Neil J. Rosini and Michael I. Rudell
The creative story-telling that fueled the passion of fans inspired a number of them to expand the Star Trek universe on their own through "fan films," which can challenge the property owners' efforts to maintain the integrity and appeal of their franchise. If unchecked, unauthorized derivatives could lead to an eventual loss of the copyright and trademark rights that underlie the value of the property.
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Entertainment Law & Finance
Implications of U.S. Supreme Court Justices' Comments During 'Slants' Trademark Dispute Oral Arguments
Tony Mauro and Scott Graham
Nearly 70 years after it became law, the U.S. Supreme Court heard arguments in January on whether §2(a) of the Lanham Act violates the First Amendment. The case, Lee v. Tam, focuses on the provision that forbids registration of trademarks that "disparage" people, institutions, beliefs or national symbols.
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Entertainment Law & Finance
New Hockey Team's Trademark Dispute Nothing New
Elio F. Martinez Jr.
What happens in Vegas does not necessarily stay in Vegas. Such was the recent ruling by the USPTO that denied registration of the trademarks "Las Vegas Golden Knights" and "Vegas Golden Knights" to the newest NHL franchise, due to their similarity to Golden Knights of the College of Saint Rose, a mark owned by a small college in Albany, NY.
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Entertainment Law & Finance
Trademark Board Amends Its Rules of Practice
Scott Harper
Entertainment and intellectual property practitioners and businesses should take note of these changes, as they directly inform the manner in which these matters will be handled moving forward and could potentially affect outcomes.
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