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 … Continue Reading
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 … Continue Reading
In the recent Booking.com case (see the IP Law Trends article here discussing that case), the U.S. Supreme Court held that a trademark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is not automatically generic. In addition, such terms are not automatically non-generic either. Prior to the Booking.com … Continue Reading
Given the favorable environment in China and in some other foreign countries, many U.S.-based companies elect to have products manufactured abroad for eventual sale in the United States. If, however, the products are branded with a trademark during the manufacturing process, the U.S.-based company may wish to take additional steps to ensure they are not … Continue Reading
The United States Supreme Court issued a decision on June 30, 2020, holding that “Booking.com” can be registered as a trademark. The decision, United States Patent and Trademark Office, et al, vs. Booking.com B. V., reverses longstanding Trademark Office policy and should significantly expand the number of Internet domain names that can be registered as … Continue Reading
As a further update to our earlier posts (U.S. Patent and Trademark Office Increases Extensions to Deadlines under the CARES Act; How the USPTO is Responding to the Coronavirus Outbreak; and USPTO and Copyright Office Announce Extensions to Deadlines Under the CARES Act) regarding actions taken by the United States Patent and Trademark Office (USPTO) … Continue Reading
As an update to our earlier blog post, Judge Preska asked the defendant Performance Supply why she should not make the temporary restraining order permanent and ordered them to appear before her in person on May 4, 2020. They failed to show up, and the temporary restraining order is now a preliminary injunction. 3M has … Continue Reading
In early April, 3M filed a lawsuit against Performance Supply LLC of New Jersey for violating trademark law because they were reselling N95 masks they had purchased from 3M at more than a 500% markup (3M Co. v. Performance Supply LLC, SDNY No. 1:20-cv-0249, 04/10/20.) Normally, when someone buys products from a manufacturer, they can … Continue Reading
As a further update to earlier posts (“How the USPTO is Responding to the Coronavirus Outbreak” and “USPTO and Copyright Office Announces Extensions to Deadlines”) regarding recent actions taken by the United States Patent and Trademark Office (USPTO) due to the COVID-19 pandemic, the USPTO announced this week an increased extension of time for the … Continue Reading
Under the Lanham Act, a trademark owner can recover damages (i.e., the owners lost sales because of infringement), but also is entitled to disgorgement of the infringer’s profits from the infringement. But typically (at least in the Ninth Circuit), if damages are awarded, the plaintiff recovers damages only for lost sales (which are very hard … Continue Reading
Trademarks protect against consumer confusion. But the First Amendment protects speech even when it may result in some confusion. When these two principles intersect, trademark holders may be surprised to find that the First Amendment often wins. In three March 31 decisions, courts sided with First Amendment freedom of expression over commercial claims alleging violation … Continue Reading
By Miller Nash Graham & Dunn LLP on Posted in Trademarks
Over the past few weeks, many entrepreneurially-minded people have filed trademark registration applications with the U.S. Patent & Trademark Office in apparent attempts to cash in on the current global health crisis. Example marks from this influx of applications include: I HEART COVID-19, COVID-19 INFECTED, #CORONAVIRUS, WARNING MY RIDE IS SICKER THAN THE CORONAVIRUS, and … Continue Reading
As an update to our earlier post regarding deadlines and operation of the United States Patent and Trademark Office (USPTO) during the ongoing COVID-19 situation, the USPTO under the authority of the CARES Act announced extensions to the time allowed to file certain patent and trademark-related documents and to pay certain required fees. While the … Continue Reading
On Friday, November 8, 2019, the Supreme Court granted certiorari in United States Patent and Trademark Office et al. v. Booking.com BV, to decide whether “the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” The case involves the travel website Booking.com, which … Continue Reading
Earlier this year, the United States Patent and Trademark Office (USPTO) held a groundbreaking conference on the impact of artificial intelligence on the development of intellectual property. This week, the USPTO issued a follow-up notice, requesting comments on the copyright, trademark, and other intellectual property rights issues that may be impacted by the rise of … Continue Reading
Among the latest entries in the quickly expanding catalogue of blockbuster movies about comic book characters are Marvel’s Captain Marvel and DC’s Shazam!, both of which have generated hundreds of millions of dollars at the box office this year. Given the present financial success of these characters, it may come as a surprise to fans … Continue Reading
By Miller Nash Graham & Dunn LLP on Posted in Trademarks
A New York District Court recently denied a preliminary injunction to stop use of the mark WOODSTOCK in association with cannabis and cannabis-related products, in part because cannabis and cannabis-related products were found not to be in the “zone of expansion” of the movant, despite movant’s federal registrations of WOODSTOCK for smoker articles. Woodstock Ventures … Continue Reading
Continuing to feed its appetite for trademark rulings, the U.S. Supreme Court has recently granted petitions for certiorari of two Second Circuit decisions implicating trademark law. The first case could change the burden of proof for recovering an infringer’s profits as damages in trademark disputes, while the second case may limit a defendant’s ability to … Continue Reading
The U.S. Supreme Court has ruled that the U.S. Trademark Act’s section 2(a) provision precluding registration of “immoral” or “scandalous” trademarks violates the First Amendment of the U.S. Constitution. The ruling came in the case of Iancu v. Brunetti, an appeal from the U.S. Trademark Office’s refusal to register the trademark F.U.C.T. for a line … Continue Reading
By Miller Nash Graham & Dunn LLP on Posted in Trademarks
The newly released Examination Guide for trademark examiners at the US Patent and Trademark Office (“USPTO”) entitled “Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill” clarifies that applications for hemp and hemp derived products, including CBD, filed after Dec. 20, 2018 as either intent-to-use or having … Continue Reading
The U.S. Supreme Court has agreed to hear arguments in the case of Iancu v. Brunetti. This, as you may recall, is an appeal regarding the constitutionality of the Lanham Trademark Act’s section 2(a) provision precluding registration of “immoral” or “scandalous” trademarks. In the wake of the much-discussed 2017 Supreme Court decision in Matal v. … Continue Reading
In my September 11 blog post, Give Me Liberty, or Give Me Death?, I noted that the First Circuit’s decision in Tempnology—that rejection of a trademark license in bankruptcy divested the nondebtor licensee of its right to use the trademark—was subject to the licensee’s pending petition for certiorari. On October 26, 2018, the United States Supreme … Continue Reading
The Federal Circuit ruled on October 30 that the International Trade Commission had applied the wrong analysis in adjudicating plaintiff Converse’s trademark claims against Skechers and New Balance arising from the design of an athletic shoe. The holding remands the case and keeps Converse’s suit against its competitors alive. But more usefully, the opinion offers … Continue Reading
It might sound odd to the ears of an intellectual property lawyer, but trademarks are not intellectual property—as defined in Section 101(35A) of the Bankruptcy Code, anyway. The significance of the omission of trademarks from this definition is that it is unclear what happens to the rights of a licensee of a trademark when a … Continue Reading
