The Federal Circuit recently sustained the Trademark Trial and Appeal Board’s (“TTAB” or the “Board”) refusal to register Louis Vuitton Malletier’s (“LVM”) trademark APOGÉE for perfumes, a decision that will concern trademark prosecution attorneys who seek to distinguish trademarks in United States Patent & Trademark Office (“USPTO”) likelihood of confusion refusals. Continue Reading
Will Lucky Get Lucky This Time Around?
Posted in Supreme Court, TrademarksOn Friday, June 28, 2019, the U.S. Supreme Court agreed to consider whether, in cases where a plaintiff asserts new claims, federal preclusion principles bar a defendant from raising defenses that were not actually litigated and resolved in any prior case between the parties. Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., No. 18-1086. Continue Reading
Supreme Court Will Decide When Trademark Infringers May Be Ordered to Forfeit Profits
Posted in IP Litigation, Supreme Court, TrademarksOn Friday, June 28, 2019, the U.S. Supreme Court agreed to decide the circumstances necessary to support an award of a trademark infringer’s profits under section 35 of the Lanham Act, 15 U.S.C. § 1117(a). Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233. The ruling hopefully will resolve a long-standing circuit split over whether willfulness is a required element of proof and create a roadmap for profit awards in trademark cases. Continue Reading
Supreme Court Holds Ban on Immoral or Scandalous Trademarks Unconstitutional
Posted in Supreme Court, TrademarksOn June 24, 2019, the United States Supreme Court, in Iancu v. Brunetti, reviewing the trademark application for “FUCT”, held that the Lanham’s Act’s provision, prohibiting the registration of “immoral[] or scandalous” trademarks, 15 U.S.C. 1052(a)(1), violated the First Amendment to the United States Constitution. This blog has followed the evolving judicial views concerning “disparaging” trademarks, culminating in the Supreme Court’s decision in Matal v. Tam, 137 S. Ct 1744 (June 19,2017) (our coverage can be found here) and the related issue of “immoral or scandalous” trademarks as last addressed by the Federal Circuit in In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017)(here), and as to which the United States Supreme Court granted certiorari. Continue Reading
Supreme Court to Rule on Copyright Protection of State Annotated Legal Codes
Posted in Copyrights, Supreme CourtOn June 24, 2019, the U.S. Supreme Court granted certiorari to decide whether states can claim copyright protection in annotated codes. State of Georgia v. Public.Resource.Org, Inc., No. 18-1150. Annotated codes, in addition to the text of the statute, include summaries of judicial opinions, regulations, and attorney general opinions related to the statute. Georgia, like many states, offers a free version of the statute but charges a fee for the annotated version.
Rejection (In Bankruptcy) Does Not Spurn Trademark Licensees
Posted in Supreme Court, TrademarksThe United States Supreme Court in Mission Product Holdings, Inc. v. Tempnology, LLC (No. 17-1657) (May 20, 2019) resolved a deep circuit split and held that a licensees’ rights under trademark licenses survive a debtor-licensor’s rejection in bankruptcy, resolving an ambiguity presented in the intersection of intellectual property law and bankruptcy law that has plagued courts for decades. Continue Reading
Marks For Hemp and Cannabis
Posted in Trademarks, Uncategorized, USPTOThe United States Patent and Trademark Office recently issued a new Examination Guide relating to trademarks for cannabis and cannabis-related goods and services.
This much-anticipated guide comes after the December 20, 2018 enactment of the Farm Bill. Continue Reading
Copyright Doubleheader At The Supreme Court
Posted in Copyrights, Supreme CourtThe Supreme Court unanimously decided two Copyright Act cases on March 4, 2019.
- In Rimini Street, Inc. v. Oracle USA, Inc., the Court held that the provision in the Copyright Act that gives federal district courts discretion to award “full costs” to a party in copyright litigation, 17 U. S. C. §505, covers only the six categories specified in the general costs statute, 28 U. S. C. §§1821, 1920.
- In Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, the Court explained that 17 U. S. C. §411(a) direction that “no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title” bars commencement of an infringement suit, until the Copyright Office registers a copyright. Upon registration of the copyright, however, a copyright owner can recover for infringement that occurred both before and after registration.
Disparaging, Immoral and Scandalous Trademarks in the Supreme Court: Beyond Tam to Brunetti
Posted in Supreme Court, TrademarksThis blog has followed the evolving judicial views concerning disparaging trademarks, culminating in the Supreme Court’s decision in in Matal v. Tam, 137 S. Ct. 1744 (June 19, 2017). Our extensive coverage can be found here. We have also followed the closely related issue of the “immoral or scandalous” clause presented in In re Brunetti, 877 F.3d 1330 (Fed. Cir. Dec. 15, 2017) here, where the Federal Circuit followed its earlier instincts that that the “immoral . . . or scandalous” clause is an unconstitutional violation of the First Amendment’s free speech clause. On September 7, 2018, the government filed a petition for writ of certiorari in the case, which is now captioned Iancu v. Brunetti, No. 18-302. On January 4, 2019, the Supreme Court granted the petition for review. Continue Reading
Rapunzel May Be Released From Trademark Monopoly Tower
Posted in Trademarks, TTABRapunzel potentially was released from the trademark monopoly tower, not by her hair, but by trademark opposer and law professor Rebecca Curtin. In a decision issued on December 28, 2018, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) denied trademark applicant United Trademark Holdings, Inc.’s (“Applicant”) motion to dismiss Prof. Curtin’s opposition to registration for lack of standing. Continue Reading
