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Category Archives: Trademark Law

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Procter & Gamble Seeks to Register Text Message Lingo Such as LOL and WTF

Posted in IP, IP Law Blog Lawyers In The News, Trademark Law

Procter & Gamble, the international consumer packaged goods conglomerate, recently filed a slew of trademark applications with the United States Patent and Trademark Office, seeking to register WTF, LOL, FML, and NBD for use in conjunction with certain consumer goods. Now, I suspect most of you are familiar with these acronyms, but if you aren’t,… Continue Reading

“Honey Badger Don’t Care”: The Rogers test and Trademark Infringement

Posted in IP, IP Law Blog Lawyers In The News, Trademark Law

Christopher Gordon is a comedian who created a viral video about the honey badger with the notable catch phrase, “Honey Badger Don’t Care,” among others.  He later trademarked that phrase and sued greeting card companies for trademark infringement for using that phrase, or a variation thereof, without his permission.  As a result, the Ninth Circuit… Continue Reading

The Process: Who Does it Really Belong to?

Posted in IP Law Blog Lawyers In The News, Trademark Law

A few years ago, before the 76ers returned to playoff glory, the NBA’s Philadelphia 76ers’ ownership and front office began utilizing the phrase “Trust the Process” to represent their journey back to the top. Finally, after years of absolutely horrendous basketball, which enabled the 76ers to draft stars such as Joel Embiid and Ben Simmons,… Continue Reading

Three-Stripes and the Burden of Irreparable Injury

Posted in IP Law Blog Lawyers In The News, Trademark Law

adidas and Skechers are athletic shoe and apparel manufacturers who have a long history of litigation between them arising out of claims that Skechers has repeatedly infringed upon adidas’ trademarks.  In Adidas America, Inc. v. Skechers USA, Inc. (decided May 10, 2018), the Ninth Circuit once again had to weigh in on Skechers’ alleged infringement… Continue Reading

LegalZoom Allegedly Engages in the Unauthorized Practice of Trademark Law

Posted in IP Law Blog Lawyers In The News, Trademark Law

According to a complaint filed in the United States District Court for the Northern District of California by California law firm LegalForce RAPC Worldwide, LegalZoom engages in the unauthorized practice of law when its non-attorneys instruct customers on how to register trademarks. The lawsuit names various other defendants, including the Patent and Trademark Office and… Continue Reading

Ruling in Lawsuit Over Fox’s Use of “Empire” Extends Permitted Use of Third-Party Trademarks

Posted in Trademark Law

By Scott Hervey Did you ever wonder why some movies use fictional names for companies or sports teams? TV and movie producers intentionally avoid using brand or company names in order to avoid any potential of an entanglement with a trademark owner.  Some studio lawyers insist that no third-party brands may be used under any… Continue Reading

With a great trademark comes great responsibility: San Diego Comic-Con v. Salt Lake Comic Con

Posted in Trademark Law

Author: David Baker Earlier this month, a jury in San Diego federal court was asked to decide if the use of the trademark “COMIC CON” by Daniel Farr, Bryan Brandenburg, and Dan Farr Productions for a comic book convention held in Salt Lake City constituted an infringement of the trademark “COMIC-CON” (note the distinguishing hyphen)… Continue Reading

Wine and Spirits Are not Always Confusingly Similar

Posted in Copyright Law, Patent Law, Trademark Law

  Brand litigation can be extreme in the consumer products space and even more so for alcoholic beverages (legal cannabis brand owners take note and start stockpiling your war chest).  It’s not uncommon for litigation to arise whenever an alcoholic beverage brand owner believes that another alcoholic beverage brand infringes.  Such was the case for… Continue Reading

California Finally Rolling Out Its Own Cannabis Trademark Laws

Posted in Legal Info, Patent Law, Trademark Law

California was the first state to legalize marijuana for medical use.  In 1996, California approved Proposition 215, the California Compassionate Use Act.  Two decades later, California voters approved  Proposition 64, the Control, Regulate and Tax Adult Use of Marijuana Act (AUMA).  Despite the fact that cannabis has been legal in California since 1996, you still… Continue Reading

Ninth Circuit Holds that “Reverse Confusion” Need Not Be Pled with Specificity

Posted in Trademark Law

A plaintiff seeking to prevail on a trademark infringement claim needs to establish that there is some likelihood of confusion between its mark and that of the defendant.  Generally, a plaintiff establishes that there is “forward” confusion by showing that customers believed they were doing business with plaintiff but because of a confusion in their… Continue Reading

Repeated Discovery Failures and Abusive Litigation Tactics Warrant Terminating Sanctions, Treble Damages, Attorney Fees and Permanent Injunction Against Defendant In Patent Litigation Case.

Posted in Trademark Law

By:  Eric Caligiuri In TASER International, Inc. v. PhaZZer Electronics, Inc. et al, 6-16-cv-00366 (FLMD July 21, 2017, Order), a Florida District Court took the drastic step of entering a default judgment in favor of Plaintiff Taser, along with an award of compensatory and treble damages, an award of reasonable attorneys’ fees and costs, and… Continue Reading

Offensive Trademarks Are Protected Free Speech Under the First Amendment

Posted in Trademark Law

Simon Tam is the lead singer of the rock group call “The Slants’, which is composed of Asian-Americans.  Tam applied for federal trademark registration of the band’s name.  While the term “slants” is a derogatory term for persons of Asian descent, Tam adopted the name “to ‘reclaim’ and ‘take ownership’ of stereotypes about people of… Continue Reading

Supreme Court Cuts Back Patent Owners’ Post-Sale Rights

Posted in Patent Law, Trademark Law

Patent owners can no longer restrict the use of their patented products after the products are sold.  Under the doctrine of patent exhaustion, a patent owner’s rights are “exhausted” once the patent owner sells the product.  In Impression Products v. Lexmark International, Inc., 2017 U.S. LEXIS 3397 (May 30, 2017), the Supreme Court expanded the… Continue Reading

Eagles Ltd. v. Hotel California Baja, LLC: Any Time of Year, You Can Find Infringement Here

Posted in Copyright Law, Patent Law, Trademark Law

Recently, Eagles Ltd. (the “Eagles”), the entity in control of legendary rock band The Eagles’ business affairs, filed a lawsuit against Hotel California Baja, LLC for trademark infringement. While I’m sure most of us are familiar with the Eagles’ song Hotel California, it may come as a surprise to most trademark aficionados that the Eagles… Continue Reading

Googling Google

Posted in Copyright Law, Cyberspace Law, Trademark Law, Web/Tech

“I googled it …” has become ubiquitous in every day conversation. Many of us refer to “googling” as the act of searching the internet regardless of whether we use the Google search engine to do so.  But has our everyday use of the verb “googling” rendered the Google trademark unprotectable?  “Nope,” said the Ninth Circuit… Continue Reading

Tavern on the Green Trademark Battle Round #2

Posted in Trademark Law

The City of New York has reignited the battle over the trademark TAVERN ON THE GREEN. Last month the City of New York filed a lawsuit for trademark infringement against Tavern on the Green International LLC, the successor-in-interest to Tavern on the Green operator, LeRoy Adventures, Inc. LeRoy Adventures operated Tavern on the Green from… Continue Reading

Paramount and Star Trek Fan Film Producers Settle

Posted in Copyright Law, Entertainment Law, Patent Law, Trademark Law

Paramount and Star Trek Fan Film Producers Settle The copyright infringement lawsuit between Star Trek fan film producer, Axanar Productions, and Paramount Pictures came to an end less than two weeks before trial.  The settlement was undoubtedly triggered by the court’s early January ruling that the fan fiction film, Prelude to Axanar, is not protected… Continue Reading

Federal Circuit Requires Standing to Appeal PTAB’s Final Decisions

Posted in Copyright Law, Patent Law, Trademark Law

Although arguably foreshadowed, some may be surprised to learn that a party with the right to challenge the validity of a patent at the United States Patent and Trademark Office (“USPTO”) may not have the right to appeal an unfavorable decision.  In Phigenix v. ImmunoGen, the Federal Circuit clarified that while there is no standing… Continue Reading