The 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
Tag Archives: Trademark Law
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
Hidden Trademark Landmines in Comparative and Compatibility Advertisements
Posted in Intellectual Property Litigation, IPNespresso has filed a lawsuit against Jones Brothers Coffee Distribution Company alleging trademark and trade dress infringement. In support of its trademark infringement claim, Nespresso alleges that Jones Brothers’ use of the words “Nespresso Compatible” in connection with its coffee capsules will cause consumers to believe that the Jones Brothers product is endorsed and/or sponsored… 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
IP Law Blog Contributor Josh Escovedo Recognized as a Top Trademarks Author in JD Supra 2019 Readers’ Choice Awards
Posted in IP Law Blog Lawyers In The NewsIntellectual Property Law Blog contributor Josh Escovedo was recognized this week as a Top Author for the topic of trademarks in the JD Supra 2019 Reader’s Choice Awards. Josh Escovedo practices in Weintraub’s Litigation and Intellectual Property sections. He counsels and advises clients in a variety of litigation matters with an emphasis on intellectual property, commercial, and… 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
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
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
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
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
Pacifico Defends its Trademark Rights on Canadian Soil
Posted in Trademark LawAnother intellectual property dispute has arisen in the brewing industry. This time, however, the battle took place on Canadian soil. British Columbia based Pacific Western Brewing (“PWB”) sued renowned Mexican brewery Cerveceria del Pacifico (“CDP”), arguing the latter’s name was confusingly similar to PWB’s various brew-related trademarks. For those who do not know, Cerveceria del… Continue Reading
Does Trump Own “Make America Great Again?”
Posted in Trademark LawAs I frequently mention in my articles, trademark law is a much more prevalent part of the average person’s life than they realize. We are surrounded by the trademarks of numerous companies every time that we step outside, or even when we look around our own homes. However, we would not generally expect for trademark… Continue Reading
Tiffany & Company v. Costco Wholesale: Tiffany is far from Generic
Posted in Trademark LawOn September 9, 2015, the United States District Court for the Southern District of New York ruled that Costco was willfully infringing Tiffany & Co.’s trademarks by selling diamond engagement rings bearing the renowned jewelry retailer’s name. The suit started back in 2012 when a patron of Costco in Huntington Beach, California decided to reach… Continue Reading
California Homegrown: Protect Your Pot!
Posted in Trademark LawLet’s face it, we live in a progressive era. Many things that were once taboo in the eyes of the law have become not only socially acceptable, but legal. For example, twenty years ago, if a California state police officer saw you walking down the street smoking what he knew to be marijuana, you were… Continue Reading
Gallo Whines Its Way Into the Tequila Business
Posted in Trademark LawIn the not so distant past, E & J Gallo Winery (“Gallo”) decided that it was not satisfied with only being a player in the wine business. It decided to expand his horizons and venture into the tequila business, which is currently filled with such players as Patron, Don Julio, Jose Cuervo, and perhaps most… Continue Reading
Red Rothko: Confidentiality Agreements in the World of Big Art
Posted in Copyright Law, Patent Law, Privacy, Trademark LawBy: David R. Gabor I. The Art World Is No Longer A Quiet Place Decades ago, a former counsel for the Metropolitan Museum of Art in New York City commented that transactions in the art world are generally very "hush-hush" and have always been that way. See Gabor, Deaccessioning Fine Art Works, 36 UCLA L…. Continue Reading
The Long Lashes of the Law: The Federal Circuit Rejects Nation-wide Application of An Injunction Based on California Unfair Competition Statutes
Posted in Legal Info, Trademark LawBy:David Gabor On December 30, 2013, the Federal Court of Appeals, in Allergan, Inc. v. Athena Cosmetics, Inc., et al., an as-yet unpublished decision, affirmed a California District Court ruling that has the potential significantly to affect advertising law and the use of the California unfair competition statute at B&P Code §17200, et seq. to… Continue Reading
GoldieBlox v. Beastie Boys – “Girls To Bring A Lawsuit”
Posted in Copyright Law, Entertainment Law, Trademark LawBy: Scott Hervey From all appearances, it would have been a fight worth watching. In one corner was the Beastie Boys, the Brooklyn bread, 80s powerhouse rap group; they aggressively enforce their intellectual property rights and have never allowed their music to be used in advertisements. (This commitment was so important to the group that in his… Continue Reading
Weaving a Trademark
Posted in Copyright Law, Patent Law, Trademark LawBy: Lisa Y. Wang This month, the Trademark Trial and Appeals Board ruled that Bottega Veneta, a luxury Italian fashion brand, well known for its "weave design" handbags and accessories, could register a trademark for that specific design. Bottega Veneta handbags and accessories do not have obvious logos on the outside, signifying its origin. Instead, the weave… Continue Reading
Bad Domain Names
Posted in Trademark LawVery often one of a business’ most valuable assets is its internet domain name. Even in large, well-established companies, a portfolio of well-chosen domains amount to a significant set of assets, often driving sales and advertising. Yet many businesses often make poor choices in connection with these assets. As the World Wide Web began to mature into… Continue Reading
THE NINTH CIRCUIT THROWS A PENALTY FLAG AGAINST ELECTRONIC ARTS
Posted in Privacy, Trademark LawBy Dale C. Campbell On July 31, 2012, the Ninth Circuit issued its ruling protecting the right of privacy held by collegiate athletes against the use of their likeness in connection with video games. (Keller v. Electronic Arts, Inc. (2013) 9th Circuit Court of Appeals 10-15387. This decision joins the Third Circuit’s decision in Ryan Hart… Continue Reading
Keyword Advertising Quagmire
Posted in Trademark LawBy Scott Hervey “Everyone does it” exclaimed the IT staffer in charge of the company’s website. "Everyone uses their competitor’s brand as a keyword to trigger a paid advertisement." The company’s chief marketing officer remembers something her mother use to say about jumping off a bridge…but that’s not important right now. They received a letter from… Continue Reading
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