Cert. Roundup:

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

  • ABA (as amicus) Asks the Supreme Court to Adopt a Flexible Rule for Recapture of Profits in Trademark Cases

  • Intellectual Property Owners Association (as amicus) Argues That a Willfulness Requirement Is Consistent with the Statute and Principles of Equity

The American Bar Association (“ABA”) filed an amicus brief with the Supreme Court in support of the petitioner in Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233. The ABA’s brief urges the Court to interpret Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a), as not requiring proof of willfulness in determining whether to award recapture of a trademark infringer’s profits, but allowing willfulness to be considered among other equitable factors. The ABA asserts that such interpretation is supported by the statutory text of § 1117(a) and public policy. Continue Reading

Unitary Design Mark Rescues a Phrase Which Failed To Function As A Trademark

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, USPTO

In a recent decision on remand from the Federal Circuit, the Trademark Trial and Appeal Board (“Board”) rejected Petitioner adidas AG’s (“adidas”) claim that Respondent Christian Faith Fellowship Church (“CFFC”) abandoned its ADD A ZERO marks (both in standard character and design form), but agreed that the phrase, as used by CFFC in standard characters, fails to function as a trademark for apparel. The phrase rendered in standard character format was cancelled because it was an unregistrable informational phrase, but the design form of the mark used by CFFC was not. adidas AG v. Christian Faith Fellowship Church, Cancellation No. 92053314 (November 13, 2019) [not precedential]. Continue Reading

Cert. Roundup: Romag’s Opening Brief: Imposing a Willfulness Requirement to Recapture Profits is Inconsistent with Statute, Principles of Equity, and the Purposes of the Lanham Act

By Ira S. Sacks and Evelina Gentry on Posted in Patents, Supreme Court, Trademarks

In June 2019, the United States Supreme Court granted certiorari in Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233. As set forth in our previous blog post, Romag Fasteners Inc. (“Romag”) seeks to have the Court resolve a longstanding circuit split on the issue: “[w]hether, under section 35 of the Lanham Act, 15 U.S.C. § 1117(a), willful infringement is a prerequisite for an award of an infringer’s profits for a violation of section 43(a), id. § 1125(a).” Continue Reading

Lucky Opening Brief on Cert.: Second Circuit’s Novel “Defense Preclusion” Rule Turns a Blind Eye on Bedrock Preclusion Principles

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

In June 2019, the United States Supreme Court granted certiorari in Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., No. 18-1086.  As set forth in our prior blog posts, Lucky Brand Dungarees Inc. and related companies (collectively, “Lucky”) seek a reversal of the Second Circuit Court of Appeal’s ruling that Lucky was precluded by res judicata from asserting a release agreement defense, which was not previously litigated or resolved between Lucky and Marcel Fashion Group Inc. (“Marcel”). Specifically, the question presented is: “[w]hether, 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.” Continue Reading

Queen Anne’s Revenge?

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

In June 2019, the United States Supreme Court granted certiorari in Allen v. Cooper, No. 18-877.  The case presents a question “whether Congress validly abrogated state sovereign immunity via the Copyright Remedy Clarification Act … in providing remedies for authors of original expression whose federal copyrights are infringed by States.”  Plaintiffs filed their Opening Brief in August 2019. Continue Reading

Foreign Equivalents: Ricardo and Richard

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, USPTO

In a precedential decision involving the “doctrine of foreign equivalents,” the Board found no likelihood of confusion between the mark RICHARD MAGAZINE for a website in the field of fashion and lifestyle and the mark RICARDO for goods and services, including publications, in the culinary field.  Ricardo Media Inc. v. Inventive Software, LLC, Opposition No. 91235063 (August 21, 2019) [precedential]

The doctrine of foreign equivalents directs the United States Patent and Trademark Office to translate marks in foreign languages into English to test for the statutory bars to registration.  The doctrine can be used to deny registration based on descriptiveness and likelihood of confusion.  When applying the doctrine of foreign equivalents, the key question is whether the ordinary American purchaser would “stop and translate” the mark in question. Continue Reading

Collective Membership And Preserving The Heritage of Pierce Arrow

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB

In a recent decision concerning the scope of protection for collective membership marks, the Trademark Trial and Appeal Board sustained The Pierce-Arrow Society’s opposition to registration of PIERCE-ARROW for “automobiles” by Applicant Spintek Filtration, Inc. The Pierce-Arrow Society v. Spintek Filtration, Inc., Opposition No. 91224343 (August 12, 2019) [precedential]

A “collective membership” indicates that the user of the mark is a member of a particular organization. Fraternities often federally register their marks as collective membership marks. Collective membership marks are not trademarks or service marks in the ordinary sense; they are not used in business or trade, and they do not indicate commercial origin of goods or services. Registration of these marks fills the need of collective organizations who do not use the symbols of their organizations on goods or services, but who still wish to protect their marks from use by others. Continue Reading

How Many Types of Wines Are There: BIG SIX? Really?

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB

The Trademark Trial and Appeal Board recently affirmed the refusal to register a trademark application for BIG SIX for wine on the ground that the term is generic or descriptive of wines. In re Plata Wine Partners, LLC, Serial No. 87292254 (August 22, 2019) [not precedential]

Applicant filed an intent to use trademark application for BIG SIX for wine, which was initially refused on the ground that “Big Six” is a term of art in the wine industry referring to six common types of wine: Riesling, Sauvignon Blanc, Chardonnay, Pinot Noir, Merlot, and Cabernet Sauvignon. The Office Action further advised the Applicant that the mark may be generic for wine, which would mean that the Applicant could not argue that the mark acquired distinctiveness and could not register BIG SIX on the Supplemental Register. Continue Reading

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