Stimulus Legislation Brings Substantial Changes to Trademark and Copyright Law

Congress tucked major trademark and copyright legislation into the almost 6,000 page COVID-relief stimulus package it passed in the waning days of 2020. Overall, these changes will make it easier for rightsholders to pursue infringement claims going forward.

On the trademark front, the stimulus bill contained the “Trademark Modernization Act of 2020.” The TMA formalizes the ability of third parties to submit relevant evidence regarding the registrability of a proposed trademark to the PTO via a Letter of Protest, and establishes an ex parte process for expunging trademark registrations when the mark is not actually used with the recited goods or services any time following the third-year anniversary of registration. The TMA now allows the Patent and Trademark Office to shorten the time for responding to an office action to as little as 60 days. The TMA also reaffirms that a “rebuttable presumption of irreparable harm” arises once trademark infringement is otherwise shown, which will make it easier for marks holders to obtain preliminary and permanent injunctions. This changes the prevailing law in the Ninth Circuit, and resolves a growing circuit split on whether that presumption remained good law after the Supreme Court’s Ebay decision (discussed previously here). Continue Reading

Text Message Marketing Can Cost You Millions

Does your cannabis company use text message marketing to build customer relationships through a loyalty program? That common practice could bankrupt your company.

It is a shock to many that text message marketing can expose you to staggering damages claims for failing to comply with a federal law called the Telephone Consumer Protection Act (TCPA) and similar state laws like Washington’s Commercial Electronic Mail Act (CEMA). There is currently an onslaught of plaintiffs’ attorneys bringing class-action lawsuits against cannabis companies that fail to comply with the specific text-marketing requirements of the TCPA. These lawsuits have raked in millions in damages and settlements in 2020 and will continue to do so in 2021.

Many cannabis companies that receive a TCPA complaint initially believe that these are nuisance or “troll” lawsuits. Unfortunately, damages can range from $500 to $1500 per text or call made in violation of the law. If you think about how many marketing texts you send out per day, and how many people you text, damages could be enough to put your company out of business. Continue Reading

Supreme Court Denies Cert in Jack Daniel’s Dog Toy Case

The United States Supreme Court has denied Jack Daniel’s distillery’s petition for a writ of certiorari from a Ninth Circuit decision holding that a dog toy seller’s use of the Jack Daniel’s trademarks and label design is expression protected by the First Amendment.

VIP Products had released a dog toy that resembled the well-known Jack Daniel’s bottle, changing the wording of the familiar label to include blunt jokes and word-plays on the messier aspects of having a dog in the house. Jack Daniel’s demanded that VIP cease all further sales of the toy. VIP filed suit seeking a declaration of non-infringement, of non-dilution, and that Jack Daniels was not entitled to trademark protection for its trade dress and bottle design. Jack Daniel’s counterclaimed, alleging trademark infringement and dilution by tarnishment. The district court agreed with Jack Daniel’s, rejecting VIP’s nominative fair use and First Amendment defenses. The court found trademark infringement and dilution by tarnishment, enjoining any future sales of the dog toy. Continue Reading

Can Patent Assignors Challenge Patent Validity? U.S. Supreme Court to Decide

On Friday, January 8, 2021, the U.S. Supreme Court granted a writ of certiorari filed by Minerva Surgical Inc. in a dispute with Hologic Inc. The question presented by Minerva is “whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.” The U.S. Supreme Court took no action on a cross-petition from Hologic, which argued that assignor estoppel should apply not only in district court, but also in inter partes reviews at the Patent Trial and Appeal Board (PTAB). Continue Reading

Senators Send Letter to USPTO Requesting Action to Remedy Gender Gap in Patent Bar

On December 11, 2020, Sens. Mazie K. Hirono, D-Hawaii, Thom Tillis, R-N.C., and Christopher Coons, D-Del. sent a letter to Andrei Iancu, Under Secretary of Commerce for Intellectual Property & Director the United States Patent and Trademark Office (USPTO), regarding the gender gap that has long been present in the make-up of the patent bar.

In the letter, the senators state that “[i]n today’s increasingly competitive global economy, we must leverage the creativity and talents of all Americans – including women, minorities, and people from low-income or other disadvantaged communities – to maintain the United States’ place as the world’s leading innovator.”  The letter goes on to state that the senators recognize that the USPTO has made efforts in recent years to recognize and start addressing the gender gap of inventors, but that they “fear that the USPTO’s efforts will be undercut by an apparent gender gap among patent practitioners.” Continue Reading