Addressing copyright fair use in the wake of the Supreme Court’s recent guidance in Warhol, the US Court of Appeals for the Tenth Circuit partially reversed the district court’s grant of summary judgment in favor of the...more
4/11/2024
/ Andy Warhol Foundation for the Visual Arts Inc v Goldsmith ,
Appeals ,
Copyright ,
Copyright Litigation ,
Derivative Works ,
Fair Use ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Remand ,
SCOTUS ,
The Copyright Act ,
Work-For-Hire
Addressing the subpoena power of district courts to compel evidence for use in US Patent & Trademark Office (PTO) proceedings, the US Court of Appeals for the Fourth Circuit upheld a district court’s decision (albeit on...more
Addressing errors in the Trademark Trial & Appeal Board’s likelihood of confusion analysis in a cancellation action, the US Court of Appeals for the Federal Circuit vacated and remanded, holding that the Board erred by...more
Addressing the issue of analogous trademark use, the Trademark Trial & Appeal Board designated precedential a September 6, 2022, decision in which the Board cancelled a registration for CAPTAIN CANNABIS based on the...more
Addressing the elements of contributory copyright infringement, the US Court of Appeals for the Tenth Circuit found that a plaintiff had plausibly alleged contributory copyright infringement when he alleged that the...more
11/10/2023
/ Appeals ,
Contributory Infringement ,
Copyright ,
Copyright Infringement ,
Copyright Litigation ,
Dismissals ,
Intellectual Property Protection ,
Remand ,
Reversal ,
The Copyright Act ,
Vicarious Liability
Addressing the issue for the first time, the US Court of Appeals for the District of Columbia found that the Copyright Act of 1976’s requirement to deposit two copies of a work with the Library of Congress within three months...more
9/7/2023
/ Appeals ,
Copyright ,
Copyright Litigation ,
Copyright Office ,
Fifth Amendment ,
Intellectual Property Protection ,
Remand ,
Summary Judgment ,
Takings Clause ,
The Copyright Act ,
USPTO
Addressing the symmetrical fee-shifting provision of the Copyright Act and whether a prevailing defendant was entitled to fees even when the plaintiff moved to dismiss the case in response to a change in law, the US Court of...more
The US Patent & Trademark Office Trademark Trial & Appeal Board found that a consumer did not have standing to oppose an application for registration because the consumer failed to establish a commercial interest and injury...more
The Supreme Court of the United States affirmed the US Court of Appeals for the Second Circuit’s decision, holding that the first factor in the fair use analysis favored photographer Lynn Goldsmith because the “purpose and...more
Addressing a refusal to register for failure to function as a trademark, the Trademark Trial & Appeal Board (Board) reversed, finding that the evidence of consumer perception of “100% THAT BITCH” did not demonstrate that the...more
Three interesting intellectual property cases are on the Supreme Court of the United States’ docket in 2023. The Supreme Court’s opinions in these cases could have significant implications for trademark and copyright disputes...more
2/17/2023
/ Copyright ,
Corporate Counsel ,
First Amendment ,
Intellectual Property Protection ,
Lanham Act ,
Parody ,
Petition for Writ of Certiorari ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
The Trademark Trial & Appeal Board (Board) addressed, for the first time, whether the deletion of goods and services as a result of a post-registration audit during a cancellation proceeding triggers Trademark Rule 2.134 and...more
The Supreme Court of the United States has agreed to consider the scope of protection afforded by the First Amendment to commercial parody products that feature the unauthorized use of another party’s trademark(s). Jack...more
As consumer-facing product and service companies go head-to-head in an increasingly competitive marketplace, the risks of doing business are higher than ever before. Whether marketing your products to generate the highest...more
11/3/2022
/ Advertising ,
Best Practices ,
Class Action ,
Competition ,
Complex Litigation ,
Consumer Product Companies ,
Consumer Protection Laws ,
Continuing Legal Education ,
Corporate Counsel ,
Defense Strategies ,
Enforcement Actions ,
Events ,
Government Investigations ,
Marketing
The US Patent & Trademark Office (PTO) recently issued Examination Guide 1-22, Clarification of Examination Evidentiary Standard for Marks Refused as Generic (Guide 1-22), which amends the PTO’s stance on the appropriate...more
Addressing laches and progressive encroachment, the US Court of Appeals for the Eighth Circuit reversed and remanded a district court’s grant of summary judgment based on laches because the district court failed to “conduct a...more
KEY TAKEAWAYS AND OUTLOOK FOR 2022 -
While Gen Z taught us all on TikTok how not to be “cheugy,” or out of touch with pop culture, similarly, trademark law in 2021 ushered in new and changed regulations, provided further...more
Addressing a dispute between a bridal designer and her former employer regarding the use of the designer’s name and control of various social media accounts, the US Court of Appeals for the Second Circuit affirmed the...more
As part of its initiative to “protect the integrity of the U.S. trademark register,” the US Patent and Trademark Office (PTO) issued a Federal Register notice outlining a new administrative process to address fraudulent or...more
The US Patent and Trademark Office (PTO) recently published its final rules implementing provisions of the Trademark Modernization Act of 2020 (TMA). Most changes are effective as of December 18, 2021, but certain changes...more
12/2/2021
/ Corporate Counsel ,
Ex Parte ,
Ex Partes Reexamination ,
Expungement ,
Final Rules ,
Trademark Litigation ,
Trademark Modernization Act (TMA) ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
Addressing for the first time whether the Supreme Court of the United States’ recent decision in United States v. Arthrex, Inc. also applied to the Trademark Trial and Appeal Board (TTAB), the US Court of Appeals for the...more
9/16/2021
/ Appeals ,
Appointments Clause ,
Corporate Counsel ,
False Association ,
Lanham Act ,
SCOTUS ,
Trademark Cancellation ,
Trademark Litigation ,
Trademark Modernization Act (TMA) ,
Trademark Trial and Appeal Board ,
Trademarks ,
United States v Arthrex Inc
Addressing the tension between the First Amendment and the right to privacy under New York law, the New York Supreme Court Appellate Division, Third Department, unanimously held that despite being partially fictionalized, a...more
Addressing for the second time whether the design of a chocolate-dipped, stick-shaped cookie was eligible for trade dress protection, the US Court of Appeals for the Third Circuit held again that the product configuration was...more
2020 was a year like no other, so you’d be forgiven if the year’s biggest headlines in trademark law didn’t quite catch your attention. In 2020, the US Supreme Court shaped trademark jurisprudence through a trio of notable...more
1/22/2021
/ Coronavirus/COVID-19 ,
Counterfeiting ,
Economic Stimulus ,
Electronic Filing ,
Enforcement ,
Fraud ,
Injunctive Relief ,
Lanham Act ,
New Legislation ,
Online Marketplace ,
SCOTUS ,
Trademark Ownership ,
Trademark Registration ,
Trademarks ,
USPTO
Addressing the assessment and application of the DuPont likelihood of confusion factors, the US Court of Appeals for the Federal Circuit upheld the Trademark Trial and Appeal Board’s finding of no likelihood of confusion...more