Nearly 40 years after Led Zeppelin released Stairway to Heaven – viewed by many as one of the greatest rock songs of all time – Led Zeppelin was sued for copyright infringement. The estate of guitarist Randy Wolfe, who composed Taurus in 1968, claimed that Led Zeppelin and its guitarist Jimmy Page and vocalist Robert Plant copied portions of it. After a six-year-long court battle, the en banc Ninth Circuit Court of Appeals (the “Court”) upheld a jury verdict in favor of Led Zeppelin finding that the two songs are not substantially similar. Additionally, in a decision that will broadly impact the music industry, the Court overturned the so-called “inverse ratio rule,” a precedent that has governed copyright cases in the Ninth Circuit for the last 43 years. Continue Reading
Lanham Act Preemption of State Law Where Cannabis Trademarks Are At Issue
Posted in Trademarks, TTABAs cannabis products become legal in more and more states, commercial interest grows in protecting the trademarks associated with those products. The United States Patent and Trademark Office has maintained its refusal to register trademarks for most cannabis-based products on the ground that use of those products is federally unlawful. But what about state or common law rights in trademarks for cannabis products? In a recent order denying summary judgment, the Northern District of California in Kiva Health Brands, Inc. v. Kiva Brands, Inc. held that a party’s state and common law trademark did not confer trademark priority in a trademark infringement suit based on the federal Lanham (Trademark) Act. Continue Reading
Prior Use Under the Pan-American Convention
Posted in Trademarks, TTABThe United States is a party to the General Inter-American Convention for Trade Mark and Commercial Protection of Washington, 1929 (“Pan-American Convention”), along with Colombia, Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay and Peru. The Pan-American Convention governs the treatment of trademarks, trade names, unfair competition, and false indications of geographical origin or source. It basically gives trademark owners in contracting states protection of their marks in other contracting states “where the mark was known to have been previously used in the region.” This confers unique benefits to trademark owners from these countries, because generally trademark rights are territorial — a trademark is protectable only where it is used or registered. Continue Reading
The Joint is Just a Music Joint, Not a Trademark
Posted in Trademarks, USPTO
The Federal Circuit in In re JC Hospitality LLC recently affirmed the United States Patent and Trademark Office, Trademark Trial and Appeal Board’s refusal to register the service mark THE JOINT for a venue offering entertainment and restaurant services. The Circuit affirmed the Board’s unusually high evidentiary standards for demonstrating that a trademark has acquired distinctiveness. Continue Reading
Royal Palm Properties’ Trademark Gets Royal Treatment At The 11th Circuit
Posted in TrademarksThis trademark litigation arises out of a contentious real-estate rivalry in a very wealthy residential community called Royal Palm Yacht & Country Club in Boca Raton, Florida. It presents a comprehensive overview of standards for trademark cancellation and for appeal from a judgment as a matter of law after a jury trial.
Plaintiff Royal Palm Properties, is a real-estate agency that focuses exclusively on the Royal Palm Yacht & Country Club community. In 2012, Royal Palm Properties acquired a federally registered service mark on the name “Royal Palm Properties,” asserting that it had “acquired distinctiveness” over time, even though the mark might not be “inherently distinctive.” See 15 U.S.C. § 1052(f). Continue Reading
When Abandonment Isn’t Abandonment: Use of an “Abandoned” Mark by a Subsidiary
Posted in Trademarks, TTABThe Trademark Trial and Appeal Board (the “Board”) recently held that AT&T Mobility, LLC (“AT&T”) had sufficient interest in its almost completely moribund CINGULAR name to oppose two pending trademark applications filed by an unrelated party. AT&T Mobility, LLC v. Mark Thomann and Dormitus Brands, LLC, Opposition No. 91218108 (TTAB February 10, 2020). Continue Reading
Cert. Roundup:
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
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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
Posted in Trademarks, USPTOIn 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
Posted in Patents, Supreme Court, TrademarksIn 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
Posted in Supreme Court, TrademarksIn 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
