With live events cancelled during the pandemic, content creators are increasingly dependent on merchandise sales. Creators from podcasters to YouTubers to musicians are reliant on merch to bolster their revenue and their brands. Subscribers stuck at home are watching more video and listening to more podcasts and music. Apart from advertising and sponsorships, merch is… Continue Reading
Category Archives: Trademark Law
Subscribe to Trademark Law RSS FeedDogs, Whiskey, and Intellectual Property: Need I Say More?
Posted in Intellectual Property Litigation, IP, Trademark LawJack Daniel’s Properties, Inc. has petitioned the Supreme Court of the United States for certiorari following an unfavorable ruling from the Ninth Circuit in the matter of VIP Products LLC v. Jack Daniel’s Properties, Inc. In that case, VIP Products sued Jack Daniel’s after receiving a cease-and-desist letter concerning its Bad Spaniels Silly Squeaker dog… Continue Reading
The Second Circuit Vacates Tiffany & Co.’s $21 Million Judgment for Trademark Infringement and Counterfeiting Against Costco
Posted in IP, Trademark LawAlmost five years ago, I wrote an article published in the Daily Recorder about a ruling in the Tiffany & Co. v. Costco Wholesale Corporation case filed in the United States District Court for the Southern District of New York. Specifically, I wrote about the Court granting Tiffany’s motion for summary judgment on liability, permitting… Continue Reading
Sushi Restaurants Battle for Control Over Hand Roll Trademark
Posted in IP, Trademark LawSushi Nozawa, LLC, owner of the popular sushi destination Sugarfish, is challenging the HRB Experience LLC over use of the term “Hand Roll Bar.” IP Attorneys Scott Hervey and Josh Escovedo discuss the lawsuit, including descriptive versus generic terms, secondary meaning, and the potential strategies of the parties.
You Must Prove Actual Damages if You Want Punitive Damages in an Infringement Action
Posted in IP, Trademark LawImagine litigating an infringement case for two years, and after a nine day jury trial, obtaining a jury’s verdict that says you’ve established infringement and awards your client $5,000,000. Then you realize that the jury has awarded your client $0 in actual damages, and the entire $5,000,000 sum is for punitive damages. The Ninth Circuit… Continue Reading
After Nearly 30 Years of Controversy, the Washington Redskins Will Retire the Redskins Team Name and Trademark
Posted in IP, Trademark LawWatch: Author Josh Escovedo and trademark law professor Alexandra Roberts delve into the issues around the Redskins name change. On Monday, July 13, 2020, the ownership group of the Washington Redskins (the “Team”) announced that it will abandon the Redskins team name after nearly 30 years of controversy. The decision, despite what the Team says,… Continue Reading
PTO Fast Tracks COVID-19 Patent and Trademark Applications
Posted in IP, Patent Law, Trademark LawThe United States Patent and Trademark Office has established a new program for prioritized examination for patent applications for inventions related to COVID-19 and for trademark applications for marks used for certain medical products and services used in connection with COVID-19. On May 7, 2020, the Director of the PTO announced the program for patent… Continue Reading
Navigating the Hazy Intersection of Federal and State Law on Cannabis and Advising Clients on Protecting Their Trademarks
Posted in IP, Trademark LawWhat was once illegal is now a thriving industry. That’s right—I’m talking about cannabis. But my initial statement isn’t entirely accurate. Although Alaska, California, Colorado, Illinois, Maine, Massachusetts, Michigan, Nevada, Oregon, Vermont, and Washington have legalized cannabis, the drug remains a Schedule I narcotic under the federal Controlled Substances Act. While buying, selling, and using… Continue Reading
The Ninth Circuit Affirms Ruling that COMIC-CON isn’t Generic for Comic Conventions
Posted in IP, Trademark LawThe battle started almost six years ago. A Utah-based company known as Dan Farr Productions (“DFP”) decided to use San Diego Comic Convention’s (“SDCC”) registered trademark COMIC-CON in conjunction with its own comic and popular arts convention, resulting in SDCC filing suit in the Southern District of California. SDCC alleged in its complaint that it… Continue Reading
SCOTUS Considers Whether Adding a Top-Level Domain Makes a Generic Term a Protectable Trademark
Posted in IP, Trademark LawOn Monday, May 4, 2020, the Supreme Court of the United States heard oral argument in United States Patent and Trademark Office v. Booking.com, B.V. For the first time in the history of the Court, the argument was live streamed via multiple outlets, including CNN, enabling us trademark junkies to listen to the argument in… Continue Reading
Trademark Infringers Beware – Willfulness Not Required for Disgorgement
Posted in IP, Trademark LawFor some time there has been a split among the Federal circuits as to whether evidence of willfulness is required in order to award disgorgement of profits for trademark infringement under Section 1125(a) of the Lanham Act. The split stems from how each Federal circuit interprets Section 1117(a) of the Lanham Act which was amended… Continue Reading
Patent, Trademark, and Copyright Deadlines Extended Due to COVID-19
Posted in Copyright Law, IP, Patent Law, Trademark LawOn March 31, 2020, the U.S. Patent and Trademark Office announced that, pursuant to the Coronavirus Aid, Relief, and Economic Security Act, certain deadlines for patent and trademark applications would be extended. The CARES Act authorizes the PTO to toll, waive, or modify any patent or trademark deadline in effect during the COVID-19 emergency. The… Continue Reading
Stay Away; No Trademark for Social Distancing and other Informational Terms
Posted in IP, Trademark LawCall me a pessimist, but it was surprising to me when I recently checked the USPTO trademark database that I did not find an application to register “Social Distancing” for some other novelty item. (It is also surprising that the tag #socialdistancing has only 159,000 uses on Instagram.) Nevertheless, I am sure some entrepreneurs will… Continue Reading
No Trademark Protection In Book or Movie Titles?!?
Posted in IP, Trademark LawGenerally, the title to a single motion picture is not entitled to trademark protection. This is the same for the title to single books, songs and other singular creative works. Most non-trademark attorneys are surprised when I tell them this. I am sure you may be scratching your head as well. The logic behind the… Continue Reading
OK, BOOMER: Fox Media Seeks Registration of the Viral Phrase From the USPTO
Posted in IP, Trademark LawIf you’re plugged into the digital world and its constantly emerging meme trends, you’ve probably encountered various “OK, Boomer” memes by now. If you’re unfamiliar with the trend, here is a brief synopsis. OK, Boomer is a phrase that is used in response to members of the baby-boomer generation who have, through their conduct, demonstrated… Continue Reading
What Happens When the Intellectual Property Laws Clash with the Antitrust Laws?
Posted in Copyright Law, IP, Patent Law, Trademark LawShould a company be required to license its patents to a competitor? That’s one question that arises when intellectual property law and antitrust law intersect. The Sherman Act, section 1, prohibits concerted action (agreements, combinations, or conspiracies) that restrain trade. Four types of conduct are per se unlawful; i.e., illegal regardless of the reason. They… Continue Reading
Counterculturalist Banksy to Defend His Intellectual Property in a European Cancellation Proceeding
Posted in Copyright Law, IP, Trademark LawIf you’re familiar with Banksy, you know he’s the epitome of counterculturalism. For those of you who aren’t familiar with Banksy, he is an anonymous England-based street artist, vandal, political activist, and film director who has been active since the 1990s. His satirical street art and subversive epigrams combine graffiti and dark, sometimes morbid, humor…. Continue Reading
Landlords – Watch out for Trademark-Infringing Tenants!
Posted in IP, Trademark LawLandlords whose tenants sell counterfeit goods can be liable for trademark infringement if they have knowledge of the infringing acts or are willfully blind to the infringement. In Luxottica Group v. Airport Mini Mall, LLC, 932 F.3d 1303 (11th Cir. August 2019), Oakley, Inc. and its parent Luxottica sued the owners of a shopping mall… Continue Reading
The USPTO Denies Tom Brady’s Application to Register TOM TERRIFIC
Posted in IP, Trademark LawThe USPTO recently refused legendary quarterback Tom Brady’s application to register the mark TOM TERRIFIC. If you’re like me, you’re wondering why Tom Brady would want to register such a trademark. Well, according to Brady, he wanted to obtain the rights to the mark to prevent people from referring to him by that nickname. But… Continue Reading
Rule Change Requires U.S. Counsel for Foreign-Domiciled Trademark Applicants
Posted in IP, Trademark LawThe United States Patent and Trademark Office (the “USPTO”) explains that “A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate… Continue Reading
Supreme Court Decision Will Have Huge Economic Impact on Trademark Infringement Damages
Posted in Intellectual Property Litigation, IP, Trademark LawThe Supreme Court has agreed to resolve a circuit split over when a court can order the payment of an infringer’s profits to a successful plaintiff as a measure of damages. The matter comes to the Supreme Court as an appeal from the Second Circuit decision in Romag Fasteners Inc. v. Fossil Inc. et al. … Continue Reading
Although the Battle of King’s Landing is Over and the Game of Thrones has Ended, the War to Protect HBO’s Intellectual Property Rages on
Posted in IP, Trademark LawIf your heart is beating and your lungs are taking in oxygen, you know that Game of Thrones recently reached its epic conclusion. It’s sad, but true. After eight glorious seasons, the most watched television series in history has ended. Even as I put the words to paper, or rather, this Word document, it doesn’t… Continue Reading
Allegiant Airlines Tips its Hand Regarding Las Vegas Stadium Rights
Posted in IP, Trademark LawIf you’re a fan of branding and sports, you may have wondered who will affix their name to the Raiders’ new stadium in Las Vegas. The construction is underway, but the team has yet to announce whose name the stadium will bear. However, we may have discovered a clue based upon a recent filing with… Continue Reading
SCOTUS to Decide if Trademark Licensees Lose Their Rights When the Licensor Becomes Insolvent
Posted in IP, Trademark LawThe Supreme Court has granted review in the matter known as Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, where it will decide whether a licensee loses its right to use a licensed trademark if the licensor files bankruptcy and the bankruptcy trustee chooses to reject the licensor’s license agreement. This decision could significantly… Continue Reading
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