Should 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
Category Archives: Trademark Law
Subscribe to Trademark Law RSS FeedCounterculturalist 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
Unprotectable Generic Trademarks + Top-Level Domains = Protectable Trademarks
Posted in Trademark LawGeneric trademarks are those which, due to their popularity and/or common usage, have become synonymous with the products or services. Such trademarks include Kleenex, Band-Aid, Jeep, Aspirin, and Cellophane. Such marks, generally, cannot be federally registered or protected under the Lanham Act due to the marks direct reference to the class of product or service… Continue Reading
Consumers Have Standing to Challenge Trademark Registrations
Posted in Trademark LawThe Trademark Trial and Appeals Board recently issued an interesting decision regarding standing to oppose the registration of trademark applications. United Trademark Holdings, Inc. filed for registration of the mark RAPUNZEL for use in conjunction with dolls and toy figures. However, after the USPTO’s examining attorney published the mark for opposition, a law professor filed… Continue Reading
Amarillo Natives Hold San Diego Padres’ Double A Affiliate Team Name Hostage
Posted in IP, IP Law Blog Lawyers In The News, Trademark LawThe San Diego Padres recently took control of the Amarillo minor league baseball organization. The organization will serve at the Padres’ Double A affiliate. In the spirit of new beginnings, the organization recently held a public naming contest to determine its new mascot. After the contest had concluded, the Sod Poodles were selected as the… Continue Reading
TTAB’s Refusal To Register Trademark Reveals Important Lesson For Trademark Attorneys
Posted in IP, IP Law Blog Lawyers In The News, Trademark LawThe Trademark Trial and Appeals Board’s recent ruling in In re Productos Verde Valle, S.A. de C.V. upholding a trademark examiner’s refusal to register the mark SONIA for “sauces; chili sauce; hot sauce” holds a lesson for those of us that regularly advise clients on the registrability (and usability) of trademarks. Assuming Verde Valle conducted… Continue Reading
Trademark Registration and the Presumption of Secondary Meaning
Posted in IP, IP Law Blog Lawyers In The News, Trademark LawThe U.S. Court of Appeals for the Federal Circuit was recently tasked with reviewing determinations made by the International Trade Commission (“ITC”) relating to trade infringement claims brought by Converse, Inc. with regard to a number of imported shoes that it alleged infringed on one of its trademarks. Although Converse sneakers have had largely the… Continue Reading
Procter & Gamble Seeks to Register Text Message Lingo Such as LOL and WTF
Posted in IP, IP Law Blog Lawyers In The News, Trademark LawProcter & 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 LawChristopher 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 LawA 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 Lawadidas 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 LawAccording 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
Stone Brewing Fires the Shot Heard Round the Brewing World
Posted in Patent Law, Trademark LawThe fight between craft brewers and Big Beer (i.e. MillerCoors & Budweiser) has been ongoing for years. Ever since craft beer came to prominence in the late ‘90s, it has been stealing Big Beer’s share of the marketplace. In fact, craft beer has celebrated double-digit growth each year since then. In response, Big Beer has… Continue Reading
Ruling in Lawsuit Over Fox’s Use of “Empire” Extends Permitted Use of Third-Party Trademarks
Posted in Trademark LawBy 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 LawAuthor: 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 LawBrand 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
Patent Myths Corrected – Part Two
Posted in Copyright Law, Trademark LawMy last column was the first of two columns discussing some of the most common misconceptions or myths about patents. Here is the second part, starting with number five on my list. A Patent Does Not Give the Patent Owner the Right to Practice the Invention. Inventors and patent owners often assume that a patent… Continue Reading
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