A Family Victory! Victory! Just Not for Little Caesars

Posted in Trademarks, TTAB

The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) modified its treatment of the “family of trademarks” doctrine in the recent case In re LC Trademarks, Inc., Serial No. 85890412 (December 29, 2016) [precedential]. All but breaking with its past decisions on the doctrine, the Board has now announced the new rule that ex parte applicants may argue that a particular mark has acquired distinctiveness as part of a trademark family. Continue Reading

Making Tequila and Pisco Shots Safe From Confusion

Posted in Trademarks, TTAB

The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) cancelled the registration for the mark PORTÓN last week, finding it to be confusingly similar to the senior mark PATRÓN. Patrón Spirits International AG v. Pisco Portón, LLC, Cancellation No. 92059527 (January 4, 2017) (non-precedential). Continue Reading

NY Common Law Does Not Provide Creators With Control Over Public Performances of Pre-1972 Sound Recordings

Posted in Copyrights

On December 20, 2016, the New York Court of Appeals (New York’s highest court) issued a landmark state copyright law decision, holding in response to a certified question from the Second Circuit in Flo & Eddie, Inc. v. Sirius XM Radio, Inc., that New York law does not recognize a right of public performance for creators of sound recordings fixed before February 15, 1972. Continue Reading

First Circuit BAP Protects Trademark Licensees In Bankruptcy Despite Section 365(n)

Posted in IP Licensing, Trademarks

The First Circuit recently issued an important interpretation of bankruptcy law that directly impacts trademark licensing rights. In In re Tempnology LLC, 559 B.R. 809 (1st Cir. BAP 2016), the First Circuit Bankruptcy Appellate Panel held that a debtor-licensor’s rejection of a trademark licensing agreement “did not vaporize” the licensee’s contractual right to use the debtor’s mark and logo.  The court found that, while trademarks are “not encompassed in the categories of intellectual property entitled to special protections under § 365(n)” of the Bankruptcy Code, the licensee could still retain trademark rights under the terms of the parties’ co-marketing and distribution agreement (which contained the trademark licensing agreement) and applicable non-bankruptcy law. Continue Reading

Supreme Court Grants Cert. in USPTO Appeal of Slants Decision: Whether The Ban On Offensive Trademarks Violates The First Amendment

Posted in Supreme Court, Trademarks, TTAB, USPTO

The Supreme Court granted the United States Patent and Trademark Office’s petition for certiorari in In re Tam, 117 USPQ2d 1101 (Fed. Cir. 2016), discussed here and here. In that case, the USPTO denied registration of an application to register the trademark THE SLANTS for a rock/dance on the grounds that it was offensive to Asians or Asian-Americans. Continue Reading

Trade Dress Claim Based on Shoe’s Rectangular Metal Toe Plate Booted by SDNY

Posted in IP Litigation, Trademarks

The Southern District of New York recently booted shoe manufacturer LVL XIII Brands, Inc.’s trade dress infringement suit against Louis Vuitton Malletier S.A. in LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.. At issue in this lawsuit was Plaintiff LVL XIII’s claim to exclusive trade dress rights in a rectangular metal toe plate on its athletic shoe and its claim that Defendant Louis Vuitton’s own use of a metal toe plate on athletic shoes created “reverse confusion” in violation of the Lanham Act. Continue Reading

Ninth Circuit Revives Trader Joe’s Federal Trademark Claims Brought In Washington Against “Pirate Joe’s” Operating In Canada

Posted in IP Litigation, Trademarks

In Trader Joe’s Company v. Michael Norman Hallatt, the Ninth Circuit recently found that Trader Joe’s allegations of infringing conduct occurring within Canada supported a cognizable claim under the Lanham Act.

In particular, Trader Joe’s, a well-known American grocery store chain, filed suit in federal court in Washington State in 2013, alleging trademark and unfair competition claims under the Lanham Act and Washington law for infringement occurring in Canada. According to Trader Joe’s, a Canadian resident, Michael Norman Hallatt, was purchasing Trader Joe’s branded goods in Washington, taking them to Canada, and reselling them at inflated prices in a store named “Pirate Joe’s” which he designed to mimic a Trader Joe’s store. Hallatt is alleged to have advertised with Trader Joe’s trademarks and displayed an exterior sign at Pirate Joe’s in Canada that uses a font similar to the trademarked “Trader Joe’s” insignia.  Continue Reading

BMI Redux: BMI Seeks To Move To “Clarify” The DOJ Position On Partial Licenses

Posted in Copyrights, DOJ

As we have previously blogged, the Department of Justice (“DOJ”) rejected proposed modifications to the existing Broadcast Music, Inc. (“BMI”) and American Society of Composers, Authors and Publishers (“ASCAP”) consent decrees. Nor did the DOJ purport to change any of the existing interpretations of the decrees.

As we predicted, BMI and ASCAP are challenging the DOJ action. Continue Reading

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