Certiorari Granted to Jack Daniel’s with Respect to Parody Dog Toy: Does Anyone Here Have a Sense of Humor, and Does it Matter?

By Ira S. Sacks on Posted in IP Litigation, Supreme Court, Trademarks, TTAB

On November 21, 2022, the Supreme Court granted certiorari on the following questions described in Jack Daniel’s petition:

Respondent VIP Products LLC markets and sells dog toys that trade on the brand recognition of famous companies such as petitioner Jack Daniel’s Properties, Inc. The district court found that VIP’s use of Jack Daniel’s trademarks to sell poop-themed dog toys was likely to confuse consumers, infringed Jack Daniel’s marks, and tarnished Jack Daniel’s reputation. The Ninth Circuit, however, held that VIP’s First Amendment interest in using Jack Daniel’s trademarks as its own marks on funny dog toys conferred special protection from infringement claims and rendered VIP’s commercial dog toys “noncommercial” and thus exempt from dilution-by-tarnishment claims.

The questions presented are:

1. Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims.

2. Whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act (“TDRA”).

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TTAB Sustains WIRED Magazine’s § 2(d) Objection to Application to Register “WIRED” As A Mark for Clothing, But Not for Fitness Services

By Ira S. Sacks and Evelina Gentry on Posted in Trademarks, TTAB, USPTO

The Trademark Trial and Appeal Board (“TTAB”) sustained the objection of the publisher of the tech magazine WIRED (“Opposer”) to an Applicant’s (“Applicant”) bid to register the term “WIRED” for clothing but rejected its objection for fitness-related services.

The Applicant sought registration for “WIRED” marks for fitness-related services and athletic clothing. The Opposer opposed the registration under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s marks resembled Opposer’s WIRED marks for magazines and, thus, are likely to cause confusion. The Opposer relied on its 17 registrations for WIRED and WIRED-formative marks for magazines relating to the digital revolution, information services, and retail store services.

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TTAB Rains on ‘Purple Rain’ Energy Drink Trademark Application

By Ira S. Sacks and Evelina Gentry on Posted in Trademarks, TTAB, USPTO

On August 23, 2022, the Trademark Trial and Appeal Board (“TTAB”) rejected on summary judgment JHO Intellectual Property Holdings’ (“Applicant”) application to register the mark “PURPLE RAIN” for a variety of nutritional supplements, dietary drinks, and energy bars (collectively, “Applicant’s Goods”). The TTAB found that the proposed mark falsely suggested a connection with the famous musician Prince. Continue Reading

Municipal Takedown: TTAB Refuses to Register the County of Orange Logos

By Ira S. Sacks and Evelina Gentry on Posted in Trademarks, TTAB, USPTO

The Trademark Trial & Appeal Board (“TTAB”) affirmed the US Patent & Trademark Office’s (“PTO”) refusal to register two different logo marks filed by California’s County of Orange (“County”) on the ground that they constitute insignia of a municipality.

In 2017, the County applied to register two logo marks. The application described one mark as “a circle with the image of three oranges in front of an orange grove and . . . mountains with the words ‘COUNTY OF ORANGE’ . . . and . . . ‘CALIFORNIA’ . . . Continue Reading

If Warhol Isn’t Transformative, Redux, In The Supreme Court

By Ira S. Sacks and Evelina Gentry on Posted in Copyrights, IP Litigation, Supreme Court

On March 25, 2022, the Supreme Court agreed to consider whether Andy Warhol’s “Prince Series” sufficiently transforms Lynn Goldsmith’s 1981 photograph of Prince (the “Photograph”) to qualify for the Copyright Act’s fair use defense.

As discussed in detail in our prior blog, at issue in this case is a series of silkscreen prints created by Andy Warhol based on Lynn Goldsmith’s Photograph, in which she holds a registered copyright. In 2017, The Andy Warhol Foundation for the Visual Arts, Inc. (“AWF”) sued Goldsmith for a declaratory judgment that the Prince Series works were non-infringing or, in the alternative, that they made fair use of the Photograph. The district court ruled in favor of the AWF on its assertion of fair use. In 2021, the Second Circuit reversed the district court’s ruling and held that the Prince Series was not transformative (and thus not fair use) because the Photograph “remain[ed] the recognizable foundation upon which the Prince Series is built.” The Second Circuit further explained that “the secondary work’s transformative purpose and character must, at a bare minimum, comprise something more than the imposition of another artist’s style on the primary work such that the secondary remains both recognizably deriving from, and retaining the essential elements of, its source material.” Continue Reading

The Third Circuit Limits Preclusive Effect of the TTAB Rulings

By Ira S. Sacks and Evelina Gentry on Posted in Trademarks, TTAB

On September 17, 2021, the Third Circuit held in Beasley v. Howard that trademark cancellation proceedings before the Trademark Trial and Appeal Board (“TTAB”) do not have claim preclusive effect against trademark infringement lawsuits in federal district courts because of the TTAB’s limited jurisdiction.

The case involves two musicians, David Beasley and William Howard, who have been involved in a long-running dispute over the rights to the band name “Ebonys.” The Ebonys were founded by Beasley in 1969 and achieved some commercial success in the 1970s. Howard joined the band in the mid-1990s and performed with it for several years. Continue Reading

If Warhol Isn’t Transformative, Who (or What) Is? The Second Circuit Finds Andy Warhol’s Prince Series Not Fair Use

By Ira S. Sacks and Evelina Gentry on Posted in Copyrights, IP Litigation

On March 26, 2021, the Second Circuit reversed a 2019 district court ruling and held that Andy Warhol’s “Prince Series” did not qualify as fair use of Lynn Goldsmith’s 1981 photograph of Prince (the “Photograph”).  The Court further concluded that the Prince Series works are substantially similar to the Goldsmith Photograph as a matter of law.

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What’s in a Name: SDNY Grants Preliminary Injunction Enforcing Contractual Bar Against Designer’s Use of Her Own Name

By Ira S. Sacks on Posted in IP Litigation, Trademarks

In a fifty-seven-page memorandum opinion and order, the United States District Court for the Southern District of New York granted a fashion brand its motion for a preliminary injunction preventing its lead designer from using her given name commercially and on her social media accounts. JLM Couture, Inc. v. Hayley Paige Gutman, 20-CV-10575-LTS-SLC (S.D.N.Y. 2021), enforcing the terms of an employment agreement. Continue Reading

Not All Domain Names Are Registrable, Even After Booking.com

By Ira S. Sacks on Posted in Supreme Court, Trademarks

The question of whether a generic term combined with the .com gTLD extension could serve as a trademark was settled last July, when the U.S. Supreme Court ruled that the proposed trademark <booking.com> could not automatically be deemed to be generic, but could be registrable if consumers perceived the mark as a source identifier. USPTO v. Booking.com B.V., ___ US ___, 141 S. Ct. 187, 207 L. Ed. 2d 1113 (2020)) (blogged here). Continue Reading

Proud to Be an American, God Bless The USA, But Not Functioning as A Trademark

By Ira S. Sacks on Posted in Trademarks, TTAB, USPTO

In a precedential decision, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) affirmed the refusal to register the trademark GOD BLESS THE USA for home decor items on the ground that it failed to function as a trademark.[1] Additionally, the Board affirmed the Trademark Examining Attorney’s refusal to accept the Applicant’s request to amend its trademark to THE LEE GREENWOOD COLLECTION GOD BLESS THE USA on the ground that it was a material alteration of the originally applied-for mark. Continue Reading

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