Trademarks

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.

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.

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.

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.

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.

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.

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.

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.