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
Category Archives: Trademark Law
Subscribe to Trademark Law RSS FeedEagles Ltd. v. Hotel California Baja, LLC: Any Time of Year, You Can Find Infringement Here
Posted in Copyright Law, Patent Law, Trademark LawRecently, 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
Is Marilyn Monroe Too Generic to Be Registered as a Trademark?
Posted in Trademark LawI’ve written on numerous occasions in the past about celebrities who registered their own names as trademarks with the United States Patent and Trademark Office. Just the other week, I wrote about how UFC superstar Conor McGregor had filed an application to register his name as a trademark, and in that same article, I mentioned… Continue Reading
Tavern on the Green Trademark Battle Round #2
Posted in Trademark LawThe 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
McGregor Files for Trademark for “Conor McGregor” and “The Notorious”
Posted in Copyright Law, Patent Law, Trademark LawWhether you like him or not, Conor McGregor’s business savvy cannot be disputed. The UFC superstar, in just over year, has become a household name known to people who may not even watch the sport. His quick rise to superstardom is no coincidence. He knows how to market himself and he knows how to sell… Continue Reading
Paramount and Star Trek Fan Film Producers Settle
Posted in Copyright Law, Entertainment Law, Patent Law, Trademark LawParamount 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 LawAlthough 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
COVERED BUSINESS METHODS PATENTS — NOT SO BROAD!
Posted in Patent Law, Trademark LawThe Federal Circuit Court of Appeals has reminded the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office in no uncertain terms that covered business method review has limits. In Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 2016 U.S. App. LEXIS 20764 (November 21, 2016), the court held that the… Continue Reading
From Rogue One to Forces of Destiny: A Star Wars Intellectual Property Story
Posted in Copyright Law, Cyberspace Law, Entertainment Law, Trademark LawWith last weekend’s release of Rogue One: A Star Wars Story, Star Wars is once again living and thriving. Rogue One opened with a most impressive $155 million opening in North America, and $290 million worldwide, making it the 12th largest opening in United States History. Now, this isn’t really related to intellectual property, but… Continue Reading
Holiday Horror Series: Part 4 – HO, HO, HO! AND FA-LA-LA-LA-LA! MORE CHRISTMAS PATENTS
Posted in Patent Law, Trademark LawThe last time I checked (which was a couple of years ago), I found over 900 U.S. patents in the U.S. Patent and Trademark Office’s database that had the word “Christmas” in the title. Every year at this time, I look at a few of the most interesting ones. Here’s one I really like: U.S…. Continue Reading
Federal Circuit Takes A Common Law Approach to “Abstract Idea” Determinations in Alice Cases
Posted in Copyright Law, Entertainment Law, Legal Info, Patent Law, Trademark Law, Web/TechBy: Eric Caligiuri In Amdocs (Israel) Ltd. v. Openet Telecom Inc. et al., the U.S. Court of Appeals for the Federal Circuit recently upheld four software patents against a patent-eligibility challenge, finding that the patents do not claim an “abstract idea.” The patent challenge was under the frame work set out by the U.S. Supreme… Continue Reading
Branding Buds – Still Illegal Under Federal Law
Posted in Patent Law, Trademark LawIf voters in California approve Proposition 64 which would legalize the possession and use of marijuana for recreational purposes, it is without question that the sunshine state will see a huge increase in the number of businesses within the cannabis industry. According to a November 7, 2016 Forbes article, the passage of Proposition 64 could… Continue Reading
Website Listing of Tequila Client Work Gets PR Firm a Trademark Shot
Posted in Copyright Law, Patent Law, Trademark LawCan the owner of renowned tequila brand Patrón prevent a former marketing and PR firm from listing it as a client on its website and discussing the services it provided? Patrón believes it can and has sued its former marketing firm, The Reindeer Group, for trademark infringement in Federal court in Texas. In 2009 Patrón… Continue Reading
Federal Circuit Rules the Patent Trial and Appeal Board Can Consider New Evidence During AIA Review Trial
Posted in Copyright Law, Legal Info, Patent Law, Trademark LawOn September 26, 2016, the U.S. Court of Appeals for the Federal Circuit declined to review in a unanimous en banc decision a panel Federal Circuit decision affirming that the Patent Trial and Appeal Board (the “Board”) at the Patent and Trademark Office (“USPTO”) could hear new evidence during a trial, evidence that was not… Continue Reading
Luxo Shuts the Lights Out on Disney’s and Pixar’s Merchandising of Luxo Jr.
Posted in Entertainment Law, Patent Law, Trademark LawIt is no secret; the Disney Corporation is a marketing and merchandising powerhouse. It has achieved that reputation by capitalizing on almost every marketing and merchandising opportunity that comes its way. If you have kids, the odds are you have been subjected to the Disney Corporation’s influence on more than one occasion. In fact, even… Continue Reading
The Seattle Seahawks’ 12th Man Flies Again
Posted in Trademark LawIf you regularly follow our publication, you may remember when I discussed the Seattle Seahawks and their use of the Texas A&M trademark “12TH MAN” over a year ago. If not, that’s okay too. In short, I discussed how the Seattle Seahawks have been utilizing the Texas A&M trademark without permission and were facing legal… Continue Reading
Small Burger Chain Has a Beef With Chipotle
Posted in Copyright Law, Patent Law, Trademark LawBy: Scott Hervey Chipotle’s entry into the burger business has a Boston based small burger chain up in arms. The Boston burger spot, which has been in operation since 2010 and goes by the name Tasty Burger, has a beef with the brand Chipotle has chosen for its restaurants, Tasty Made. Tasty Burger claims that Chipotle… Continue Reading
Trademark Assignability Laid Bare
Posted in IP Law Blog Lawyers In The News, Trademark LawCrazy Horse was a legendary Native American chief of the Oglala Lakota tribe who lived during the second half of the 1800s. Unfortunately today, his name may be more familiar as a brand for various products, such as motorcycle gear, whiskey, rifles and strip clubs. In Russell Road Food & Beverage, LLC v. Spencer, et… Continue Reading
The Supreme Court Rules the PTAB and District Courts Can Continue to Apply Different Standards for Interpreting Patent Claims
Posted in Copyright Law, Patent Law, Trademark LawPatent litigators and prosecutors have been waiting to hear whether the U.S. Supreme Court would require the United States Patent and Trademark Office (“USPTO”) to apply the same claim construction standard as the district courts. The answer is “No.” For over 100 years, the USPTO has used the “broadest reasonable construction” standard to interpret patent… Continue Reading
Supreme Court Battle Set Over Prohibition of Disparaging Trademarks
Posted in Patent Law, Trademark LawSection 2(a) of the Lanham act bars the registration of “scandalous, immoral or disparaging trademarks.” The USPTO has used this applied this provision to refuse the registration of marks such as F**K PROJECT, PORNO JESUS, ASSJACKED and NO $#!+. The USPTO also invoked this provision when it upheld an examiner’s refusal to register the mark… Continue Reading
Kylie Minogue v. Kylie Jenner: A TTAB Clash of Celebrities
Posted in Trademark LawKylie Jenner has finally decided to step out from behind her older sisters and get to work on her own independent ventures. In furtherance of this desire, Ms. Jenner filed numerous federal trademark applications in April and November 2015. The applications relate to Ms. Jenner’s first name, as well as her full name. As you… Continue Reading
Five IP Pitfalls That Start-Up (and Grown Up) Companies Can Easily Avoid
Posted in Copyright Law, Legal Info, Patent Law, Trade Secrets, Trademark LawIn business, there are numerous opportunities for pitfalls, mistakes and errors and they come up in all different legal areas – from basic formation issues to labor and employment to intellectual property. Mistakes and missteps involving intellectual property can be particularly problematic because IP is a company asset; it constitutes a part of (often a… Continue Reading
The Federal Circuit Breathes Life into the Redskins’ Appeal
Posted in Trademark LawIf you’re a fan of intellectual property or the National Football League, you may have heard about last July’s ruling in the United States District Court for the Eastern District of Virginia. There, Judge Gerald Bruce Lee affirmed the Trademark Trial and Appeal Board’s ruling that the team’s moniker is offensive to Native Americans, and… Continue Reading
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