BERTINI v. APPLE INC. Before Moore, Taranto and Chen. Appeal from the Patent Trial and Appeal Board. Summary: Tacking a mark for one good or service does not grant priority for every other good or service in the...more
One of the general principles for building a strong trademark is to use it consistently and often. That said, most brands undergo at least some updates throughout their lifetime, in an attempt to stay current – a process...more
In determining whether a laches defense applies to thwart a claim of patent infringement, courts must often shine a light upon murky and complicated factual scenarios. A Massachusetts court recently navigated such a scenario...more
On March 14, 2016, the Staff of the Division of Corporation Finance of the Securities and Exchange Commission (the “SEC”) issued interpretive guidance (the “Guidance”) affirming that, in a traditional UPREIT structure, the...more
On March 14, 2016, the SEC issued a no-action letter permitting holders of shares of common stock of a publicly traded REIT, or REIT shares, received in exchange for privately placed units of the REIT’s operating partnership,...more
2015 U.S. Trademark Developments Every Food and Beverage Lawyer Should Know - In 2015, U.S. courts provided trademark practitioners with several issues to discuss and debate. Identified and summarized below are the...more
The beginning of a new year is often the impetus for change. For companies, this may mean a rebranding initiative involving an update to a company's house mark or logo. In 2015 several companies, including Google, Facebook,...more
In 2015, U.S. courts provided trademark practitioners with several issues to discuss and debate. Identified and summarized below are the top five most discussed issues....more
Last week, the United States Court of Appeals for the Federal Circuit reviewed a TTAB decision that had refused outdoor apparel company Jack Wolfskin’s application to register its paw print logo. Jack Wolfskin Ausrustung fur...more
Copyrighting Player-Generated Content in Video Games - Last year, consumers spent more than $21 billion on the video game industry. The Entertainment Software Association reports that almost 60% of Americans—roughly...more
In This Issue: - Tips for Developing a Cost-Effective Foreign Patent Strategy - Supreme Court Holds that Trademark Tacking Should be Decided by a Jury in Hana Financial, Inc. v. Hana Bank - Amending...more
In a 9-0 decision authored by Justice Sotomayor, the Supreme Court held on January 21, 2015 that trademark tacking is a question of fact, which should be decided by a jury. The case, Hana Financial, Inc. v. Hana Bank, sought...more
Many commentators have weighed-in on the Supreme Court's recent Hana Financial decision, which involved two competing HANA-formative marks for financial services, including one that had been modified over the years to couple...more
The February issue of Sterne Kessler's MarkIt to MarketTM newsletter provides takeaways from the Supreme Court's Hana Financial decision, identifies a new anti-counterfeiting tool for owners of Canadian trademarks and...more
Jury Decides Whether Earlier Trademark Can Be Used For Priority - In HANA FINANCIAL, INC. v. HANA BANK, No. 13-1211, the Supreme Court held that whether two trademarks may be tacked for purposes of determining priority...more
The Supreme Court of the United States, in a unanimous decision stated that “because the tacking inquiry operates from the perspective of the ordinary purchaser or consumer, we hold that a jury should make this...more
On January 20, 2015, the U.S. Supreme Court, in a unanimous decision written by Justice Sonya Sotomayor, issued its first trademark ruling in more than a decade. The Court held that “trademark tacking” is a factual issue...more
The United States Supreme Court settles circuit split, ruling that juries determine if a party’s revisions to a trademark impart the same commercial impression to consumers. Trademark owners often update their marks...more
In a unanimous ruling, the Supreme Court upheld the Ninth Circuit Hana Financial v. Hana Bank and ruled that the question of “tacking” — whether a party’s prior version of its trademark is so closely similar to the current...more
Sheppard Mullin’s intellectual property group prevailed before the United States Supreme Court in the trademark matter entitled Hana Financial v. Hana Bank. 574 U.S. ___ (2015). Justice Sotomayor, writing for a unanimous...more
On January 21, 2015, the U.S. Supreme Court in Hana Financial, Inc. v. Hana Bank, held that whether two trademarks are "legal equivalents" and thus may be "tacked" together for purposes of determining priority is a question...more
DISTRICT COURT CASES - Akin Gump Wins Section 101 Motion to Dismiss, Invalidating 887 Patent Claims - Following Supreme Court precedent set forth in Alice Corp. Pty. Ltd. v. CLS Bank International, Judge Sleet...more
The Supreme Court issued its first substantive trademark decision of the current term yesterday in Hana Financial, Inc. v. Hana Bank. The district court had charged the jury with determining whether Hana Bank’s original mark,...more
On January 21, 2015, the United States Supreme Court in Hana Financial, Inc. v. Hana Bank, case number 13-1211, unanimously held that in cases (1) that go to a jury and (2) whose facts do not warrant either summary judgment...more
On January 21, 2015, the Supreme Court of the United States issued a unanimous decision in Hana Financial, Inc. vs. Hana Bank, et. al., pertaining to a substantive trademark matter, namely, whether a judge or jury should...more