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The Intellectual Property Strategist
WTF? The Board Weighs In on Failure to Function Refusals
Christopher P. Bussert
Many trademark practitioners have noted the USPTO’s recent penchant for issuing refusals to register trademarks on the ground of failure to function as a trademark. The Trademark Trial and Appeal Board picked a colorful case to set precedent and provide some initial guidance on how it will evaluate failure-to-function refusals going forward.
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The Intellectual Property Strategist
IP News
Howard Shire and Stephanie Remy
Federal Circuit: Trade Dress Imitation In the Ninth Circuit
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Entertainment Law & Finance
Federal Judge Takes Aim at Legal Process for Targeting Counterfeit Merchandisers
Stan Soocher
The rebound in concert tours and ticket revenues as 2022 has unfolded gives the live events industry hope for a strong 2023, too. For many tours, though, it’s income from merchandise that makes the tour profitable. Thus, the rise in the number of artists touring also means a parallel resurgence in the activities of counterfeit-merchandise sellers and renewed efforts by the industry to battle its long-time problem with the sale of counterfeit merchandise near event venues.
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The Intellectual Property Strategist
IP Rights In the Metaverse
Dyan Finguerra-DuCharme and Abla Belhachmi
The metaverse, an immersive virtual experience building on the Internet and the physical world, has become a prominent force in branding and marketing for companies struggling to keep up in an ever so globalized economy. Parallel to this digital expansion has been a surge of intellectual property issues.
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The Bankruptcy Strategist
Protecting a Trademark Licensor’s Rights In a Bankruptcy Case
Alfred S. Lurey
A recent bankruptcy case from the District of Delaware underscores the need for a trademark licensor to be alert to filings made in its licensee’s bankruptcy case that may require prompt action by the licensor to protect its valuable rights under a license agreement.
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The Intellectual Property Strategist
Digital Advertising: Customer Confusion and Trademark Infringement
Stephen M. Kramarsky and John Millson
In the absence of a federal statutory scheme specifically aimed at digital advertising practices, the courts have focused on consumer-facing issues covered by existing law, such as privacy, transparency, and deceptive or misleading advertising practices. But digital advertising technology can also present new challenges in copyright and trademark protection.
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The Intellectual Property Strategist
Quebec’s Bill 96 and Trademarks: Product Packaging and Labelling
Jean-Philippe Mikus, Eliane Ellbogen, and Isabelle Kalar
The modifications brought by the Quebec's Bill 96 will have a far-reaching impact on how businesses use trademarks on product packaging, labelling, public signage and in commercial advertising. This article is Part One of a two-part series on Bill 96 and trademarks and covers the effects as they relate to product packaging and labelling and how best to comply with these new provisions.
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The Intellectual Property Strategist
Proper Notice of Trademark Rights: Using Trademark Symbols for Three-Dimensional Packaging and Product Designs
Stephen Lott and Lauren Gregory
Among the most common questions trademark attorneys are asked is what the differences are between the symbols ®, TM, and SM. When should such symbols should be used? Where should they appear? How frequently? Do they even need to be used at all?
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Marketing The Law Firm
Brands In the Metaverse: What You Need to Know
Brandon Leahy and Chloe Delehanty
While it is still unknown how the metaverse will take shape, lawyers advising brands should familiarize themselves with the opportunities it presents, the risks involved, and strategies to consider for enhancing and protecting a client’s brand.
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Entertainment Law & Finance
Trademark Oppositions and Coexistence Agreements
Ben Thompson and Robert Moorman
There are frequent battles over trademark rights in the entertainment industry. Trademark publication can be an anxious part of the federal application process, with fear of aggressive opposition and costly proceedings looming in the background. But many trademark oppositions, whether they are only threatened or actually filed, afford the applicant a discussion with an opposer that can ultimately be helpful in nonobvious ways.
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The Intellectual Property Strategist
Trademark Coexistence May Become a Necessity As Market for Trademarks Grows
Ben Thompson and Robert Moorman
Trademark publication can be an anxious part of the application process, with fear of aggressive opposition and costly proceedings looming in the background. But many oppositions, whether they are only threatened or actually filed, afford the applicant a discussion with the opposer that can ultimately be helpful in nonobvious ways.
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The Intellectual Property Strategist
Due Diligence Can Mitigate Trademark Risk
Jared A. Stark
How can one launching a new trademark mitigate the risk of rejection or infringement on the basis of likelihood of confusion with an existing mark? The primary strategy is trademark searching.
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The Intellectual Property Strategist
Reckless Disregard for the Truth of a Material Statement Made to the USPTO Is Sufficient for Proving the Intent to Deceive
Li-Jen Shen, Cory Smith and George C. Chen
The Trademark Trial and Appeal Board (TTAB) has finally filled a gap left by the U.S. Court of Appeals for the Federal Circuit in the standard for finding deceptive intent when trying to prove fraud on the USPTO.
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The Intellectual Property Strategist
Trademarks Making Advertising Claims Create Sticky Situations
Kyle-Beth Hilfer
The SharkNinja case as well as other well-established precedents serve as powerful reminders to advertisers of certain best-practices in choosing their trademarks or evaluating whether to challenge their competitors’ trademarks.
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The Intellectual Property Strategist
Eighth Circuit Permits Recovery for ‘Initial-Interest Confusion’ In Trademark Cases
Eric Alan Stone and Catherine Nyarady
The likelihood of confusion analysis is often focused on confusion at the time of purchase, but the U.S. Court of Appeals for the Second, Third, Fifth, Sixth, Seventh, Ninth, Tenth and Federal Circuits permit mark holders to allege infringement based on presale, initial-interest confusion. Earlier this year, the Eighth Circuit joined the majority of circuits in permitting recovery for initial-interest confusion in certain circumstances.
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The Intellectual Property Strategist
Tenth Circuit Adds to Split on Lanham Act’s International Applicability
Christopher Jackson and Jessica Smith
the Tenth Circuit held that the Lanham Act can have extraterritorial application, if certain conditions are met. In doing so, the appellate court recognized — and further deepened — an ongoing circuit split.
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The Intellectual Property Strategist
IP News
Howard Shire and Jóna Mays
Nike Seeks $150 Million In Sanctions from Six Chinese Banks, and Loses
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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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