Unauthorized use of a trademark on the Internet occurs often and in many forms, usually involving the profiting, whether intentionally or unintentionally, from the goodwill associated with a trademark belonging to someone...more
As we reported in our July 7, 2020 blog post on the USPTO v. Booking.com B.V decision, the U.S. Supreme Court ruled that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like...more
10/29/2020
/ Acquired Distinctiveness ,
Booking.com ,
Domain Name Registration ,
Generic Marks ,
Goods or Services ,
SCOTUS ,
Trademark Act ,
Trademark Examination Guide ,
Trademark Registration ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO
In a landmark decision, United States Patent and Trademark Office v. Booking.com B.V., the Supreme Court of the United States, by an 8-1 vote, affirmed the lower court’s determination that Booking.com could register...more
7/7/2020
/ Acquired Distinctiveness ,
Appeals ,
Booking.com ,
Domain Name Registration ,
Domain Names ,
Generic Marks ,
Lanham Act ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO
In a recent decision from the Southern District of New York, Judge George B. Daniels held that the strong First Amendment interests in protecting free artistic expression warranted summary judgment that Activision Blizzard’s...more
In a unanimous decision, the US Supreme Court held that a trademark owner need not prove willful infringement in order to seek lost profits from a trademark infringer. The case, Romag Fasteners Inc. v. Fossil Inc. et al.,...more
4/24/2020
/ § 1125(a) ,
§ 1125(c) ,
Appeals ,
Burden of Proof ,
Charge-Filing Preconditions ,
Compensatory Awards ,
Corporate Counsel ,
Dilution ,
Lanham Act ,
Lost Profits ,
Remand ,
Remedies ,
Romag Fasteners v Fossil ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Vacated ,
Willful Infringement
Trademark due diligence is the process of analyzing information concerning a company's trademark portfolio and assessing the risks, exposures, and benefits associated with a proposed transaction. In an acquisition, both the...more
Trademark rights in the US are based on use of a mark not on registration. Failure to use your mark on a product or to offer a service to the public can result in an abandonment of your trademark rights and an inability to...more
Since 1949, a green jacket has been awarded to the winner of the Masters Tournament, one of golf’s four major championships. Although Augusta National, Inc. had successfully registered the word mark GREEN JACKET as a...more
This past May, in a highly-anticipated decision, the Supreme Court held in Mission Product Holdings, Inc. v. Tempnology, LLC that a debtor’s rejection of an executory contract under Section 365 of the Bankruptcy Code has the...more
7/8/2019
/ Bankruptcy Appellate Panel (BAP) ,
Bankruptcy Code ,
Breach of Contract ,
Chapter 11 ,
Commercial Bankruptcy ,
Debtors ,
Exclusions ,
Executory Contracts ,
IP License ,
Mission Product Holdings Inc v Tempnology LLC ,
Rescission ,
Reversal ,
SCOTUS ,
Section 365 ,
Split of Authority ,
Trademark Licenses ,
Trademarks ,
Trustees
The U.S. Supreme Court, in a split decision, held that the federal ban on registering “scandalous” and “immoral” trademarks is an unconstitutional violation of free speech under the First Amendment of the US Constitution. The...more
6/27/2019
/ Appeals ,
Constitutional Challenges ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Lanham Act ,
Reaffirmation ,
Reversal ,
Scandalous/Immoral Marks ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
USPTO ,
Viewpoint Discrimination
Legalizing “hemp” under the Agricultural Improvement Act of 2018 (2018 Farm Bill) has triggered an important change for the examination of federal trademark applications concerning cannabis and cannabis-derived goods and...more
6/12/2019
/ Agribusiness ,
Cannabidiol (CBD) oil ,
Controlled Substances Act ,
Corporate Counsel ,
Farm Bill ,
Federal Food Drug and Cosmetic Act (FFDCA) ,
Goods or Services ,
Hemp ,
Marijuana ,
Marijuana Related Businesses ,
Marijuana-Infused Edibles ,
New Regulations ,
Trademark Application ,
Trademark Examination ,
Trademark Examination Guide ,
Trademark Registration ,
Trademarks ,
USPTO
The constitutionality of yet another portion of Section 2(a) of the Lanham Act will soon be determined. Following in the footsteps of the blockbuster decision in Matal v. Tam, 137 S. Ct. 1744 (2017) (“Tam”), the U.S. Supreme...more
3/15/2019
/ Appeals ,
Certiorari ,
Constitutional Challenges ,
Disparagement ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Lanham Act ,
Matal v Tam ,
Scandalous/Immoral Marks ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
USPTO ,
Vulgar or Offensive Marks
Two incredible things happened in 1992 for the NFL football team Washington Redskins. It won the Super Bowl and applied to register a trademark Washington Redskins. It has not been so lucky ever since. It has not won another...more
1/30/2018
/ Commercial Speech ,
Constitutional Challenges ,
Disparagement ,
First Amendment ,
Free Speech ,
Lanham Act ,
Matal v Tam ,
NFL ,
Redskins ,
SCOTUS ,
The Slants ,
Trademark Registration ,
Trademarks ,
USPTO
Selecting and protecting your “brand” should begin from the very moment a business is in the process of being formed, whether that business is a sole proprietorship, partnership, corporation, limited liability company, or...more
In a unanimous decision handed down on June 19th, the U.S. Supreme Court struck down as unconstitutional a long-standing prohibition against federal registration of “disparaging” trademarks, finding that the this provision of...more
6/21/2017
/ Constitutional Challenges ,
Disparagement ,
First Amendment ,
Football ,
Free Speech ,
Lanham Act ,
Matal v Tam ,
Music Industry ,
NFL ,
Redskins ,
SCOTUS ,
The Slants ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
Although most people will recognize the ubiquitous PIZZA! PIZZA! slogan mark owned by the pizza chain Little Caesar’s, the company’s collection of repeated term marks does not rise to the level of a “family of marks”...more
As we reported to you last September, the U.S. Supreme Court agreed to hear the case involving the constitutionality of the provisions of the Lanham Act upon which the U.S. Trademark Office relied to deny registration of the...more
In a non-precedential opinion, the U.S. Trademark Trial and Appeal Board cancelled two US trademark registrations for the mark PORTON, finding it to be confusingly similar to the mark PATRON. Patron Spirits International AG...more
Well, a lot has happened since we last reported on the District Court’s decision in the FLANAX trademark dispute. As you may recall, the Trademark Trial and Appeal Board granted Bayer’s Petition and cancelled the FLANAX...more
Further to our post last Friday on the SLANTS trademark case, the U.S. Supreme Court today, without comment, refused the Redskins’ Petition to join the SLANTS case challenging the U.S. Trademark Office’s ban on “offensive”...more
The U.S. Supreme Court announced today that it will review whether the U.S. Trademark Office can deny registration of offensive trademarks or whether such prohibition violates the First Amendment. The dispute affects the...more
Trademark dilution is a concept not easily understood. Although, we have written about this topic in previous posts, a recent decision by the Trademark Trial and Appeal Board, ESRT Empire State Building, L. L. C. v. Michael...more
The Federal Circuit has upheld the findings of the Trademark Trial and Appeal Board that use of the marks MAYA and MAYARI on wine is not likely to cause confusion. Oakville Hills Cellar, Inc. vs. Georgallis Holdings, LLC,...more
The US Trademark Trial and Appeal Board has, again, explained how and when surnames may function as trademarks. In re Enumclaw Farms LLC, Application Serial No. 85942195 (TTAB June 24, 2016). ...more
What do Washington D.C.’s NFL team, the Redskins, and Mr. Tam’s rock band, The Slants, have in common? Both have enjoyed unexpected victories recently and both have been called “disparaging” by the Patent and Trademark Office...more