How far does the Lanham Act’s reach extend? The Supreme Court gave us one answer in Abitron Austria GmbH et al. v. Hetronic International, Inc. and made it simple: not very far....more
6/30/2023
/ Abitron Austria GmbH v Hetronic International Inc ,
Extraterritoriality Rules ,
Foreign Sales ,
Intellectual Property Protection ,
Lanham Act ,
Likelihood of Confusion ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Use in Commerce
Humor matters, but it’s not the most important thing when considering a trademark infringement or dilution claim. In a decision with references to The Hangover Part II, Aqua’s song “Barbie Girl” (good luck not getting that...more
6/9/2023
/ Cease and Desist ,
Dilution ,
First Amendment ,
Intellectual Property Protection ,
Jack Daniels Properties Inc v VIP Products LLC ,
Lanham Act ,
Likelihood of Confusion ,
Parody ,
Rogers Test ,
SCOTUS ,
Trade Dress ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
Justices of the Supreme Court will soon put on their whiskey glasses to decide the proper tests for infringement and dilution claims involving humorous use of another’s trademark. The Court granted certiorari in November to...more
Technology is changing, but is copyright law keeping up? Stephen Thaler clearly believes it is not and has sued the U.S. Copyright Office over its refusal to register artwork created by his artificial intelligence software. ...more
Attention trademark practitioners: the finalized rules implementing the 2020 Trademark Modernization Act (“TMA”) go into effect this weekend, on December 18, 2021. Significantly, this marks the availability of three new...more
Roc-A-Fella Records (“RAF”) owners Jay-Z and Damon Dash are clashing over Dash’s plans to sell an NFT (“nun-fungible token”) representing either a 1/3 share of the copyright to Jay-Z’s album Reasonable Doubt (if you believe...more
The FTC recently reached deals with six CBD companies after it issued formal complaints against them in December 2020 over concerns about deceptive practices. The initial complaints (found here: In re Bionatrol Health, LLC,...more
Just in time to steal ComicMix’s Christmas, the Ninth Circuit recently held that the bookmaker’s mashup story Oh, the Places You’ll Boldly Go! (which combines elements of the Dr. Seuss book Oh, the Places You’ll Go! with Star...more
Last week we quickly pivoted from watching the 24/7 “Map Show” to spending our screen time learning at the ANA 2020 Marketing Law Conference. It was a great three days in Chicago in our pajamas of educational seminars....more
11/18/2020
/ Business Development ,
Cannabidiol (CBD) oil ,
Contests & Promotions ,
Coronavirus/COVID-19 ,
Digital Media ,
Drug & Alcohol Abuse ,
Food Labeling ,
Influencers ,
Marketing ,
Media ,
Online Reviews ,
Professional Conferences ,
Wine & Alcohol
In a precedential decision earlier this year, the Trademark Trial and Appeal Board thinned some of the haze surrounding the registrability of trademarks for hemp-derived CBD products. In line with the U.S. Patent and...more
10/27/2020
/ Cannabidiol (CBD) oil ,
Cannabis Products ,
Controlled Substances Act ,
Corporate Counsel ,
Dietary Supplements ,
Federal Food Drug and Cosmetic Act (FFDCA) ,
Food and Drug Administration (FDA) ,
Hemp ,
Trademark Application ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks
A federal district court has eliminated a cannabis company’s affirmative defense to federal trademark infringement claims based on the company’s prior use of a trademark that was legal under state law but not federal law. The...more
2/21/2020
/ Cannabis Products ,
Cannabis-Related Businesses (CRBs) ,
Corporate Counsel ,
Counterclaims ,
Defense Strategies ,
Lanham Act ,
Preemption ,
Prior Use ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
A dispute over the trademark KIVA involving use of the mark with health food and cannabis continues to smolder in the Northern District of California.
In late 2018, Kiva Health Brands (a national health food and...more
1/9/2020
/ Affirmative Defenses ,
Cannabis Products ,
Cannabis-Related Businesses (CRBs) ,
Common Law Claims ,
Counterclaims ,
Dietary Supplements ,
Federal Trademark Register ,
Laches ,
Motion for Summary Judgment ,
Preemption ,
Prior User Rights ,
Trademark Litigation ,
Trademarks
On November 25, 2019, the Food and Drug Administration sent a wave of warning letters to fifteen CBD companies claiming they are breaking federal food, drug, and cosmetic laws based on their current CBD product marketing and...more
And the new top level domain names just keep on coming. As our readers may know, ICANN, the organization that operates the internet domain name system, authorized the launch of the New gTLD Program – the largest expansion of...more
If you missed the 2019 Annual Meeting of the International Trademark Association in Boston, or if you were there but were spending time with colleagues and friends, the Dorsey trademark team is here to provide a brief...more
6/7/2019
/ Artificial Intelligence ,
Blockchain ,
Intellectual Property Protection ,
International Trademark Protection ,
Investigations ,
Professional Conferences ,
Trademark Litigation ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO ,
WIPO
The United States Patent and Trademark Office will now allow federal trademark registration for marks used on some hemp-based products, including those containing hemp-derived CBD, except for foods, beverages, dietary...more
American Airlines recently scored a major win by convincing the Copyright Office to reverse its refusal of an application to register the “American Airlines Flight Symbol.”
American Airlines reached its final destination...more
If you have encountered any issues accessing WHOIS information, the International Trademark Association (“INTA”) wants to hear from you.
Due to changes in privacy law brought on by the European Union’s General Data...more
If you didn’t make it to the 2018 Annual Meeting of the International Trademark Association in Seattle, or if you were there but were out enjoying the spectacular weather or spending time with colleagues and friends, the...more
5/31/2018
/ Contract Terms ,
Corporate Branding ,
Food Manufacturers ,
INTA ,
License Agreements ,
Marijuana ,
Morals Clauses ,
Product Placement ,
Professional Conferences ,
Trademark Registration ,
Trademarks ,
USPTO
Domain name registrars and registries might soon be changing their mantra from, “I think ICANN,” to, “Maybe ICANN’T,” when it comes to providing publicly available WHOIS information for domain name registrants. New potential...more
You might want to think twice before registering a domain name containing a competitor’s personal name or trademark. Three-time Tour de France winner Greg LeMond put his “pedal to the metal” recently, suing two Minnesota...more
We recently provided some commentary on Gene Simmons and his application to register the “devil horns” rock and roll hand symbol. Well, you can now KISS that application goodbye, as Mr. Simmons has expressly abandoned his...more
On June 9, 2017, Gene Simmons of Kiss rock band fame applied with the United States Patent and Trademark Office (“PTO”) to register the following mark for “Entertainment, namely, live performances by a musical artist;...more
Ask any fan of the American improvisatory rock band Phish to explain the significance of the following pattern and you will invariably receive the same answer:
It’s of course the pattern of drummer Jon...more
English pop musician Ed Sheeran once again finds himself in the crosshairs of a high-profile copyright infringement lawsuit, this time in the Southern District of New York over alleged similarities between his smash hit...more