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 and Rachel B. Rudensky 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 and Rachel B. Rudensky 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 and Rachel B. Rudensky 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

Slogans As Marks: When Does a Slogan Function as a Mark

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

Slogans can, but do not always, function as trademarks. To be sure, the United States Patent and Trademark Office (“USPTO”) frequently allows slogans such as JUST DO IT! or QUALITY THROUGH CRAFTSMANSHIP, among many others, to be registered as trademarks. However, the USPTO’s recent trend has been to deny registration to slogans on the ground they fail to function as a mark, because they are informational. On October 29, 2020, the USPTO Trademark Trial and Appeal Board (the “Board” or “TTAB”) issued a precedential decision on this issue, denying registration of a term it deemed to be “a widely used concept or sentiment.” In re Texas With Love, LLC,  Serial No. 87/793,802 (October 29, 2020).

Applicant Texas With Love, LLC applied to register the trademark TEXAS LOVE for hats and shirts. The application included the requisite specimens of trademark use, in this case, the applicant’s online store displaying the trademark TEXAS LOVE in close association with the goods. Continue Reading

Lehman Brothers is Gone but Not Abandoned

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

On September 30, 2020, the Trademark Trial and Appeal Board ruled in favor of the assignee of the famous LEHMAN BROTHERS trademark against the registration that mark as a brand name for beer, spirits, and bar and restaurant services, finding that the LEHMAN BROTHERS mark had not been abandoned.  Barclays Capital, Inc. v. Tiger Lily Ventures, Ltd. (TTAB, September 30, 2020, non-precedential).

Background

In 2008, Lehman Brothers was the fourth largest investment bank in the United States, with hundreds of billions of dollars of assets under management and over 25,000 employees in offices worldwide when it filed for protection under the U.S. bankruptcy laws, the largest bankruptcy in U.S. history.  As part of the bankruptcy, Lehman Brothers sold its trademarks, including its LEHMAN BROTHERS trademark, to Barclays Capital. Barclays licensed the LEHMAN BROTHERS trademark back to what remained of Lehman Brothers for a term of two years. That entity used the licensed trademark in the general winding down of its business.  Continue Reading

Genericness is in the Eye of the Beholder, i.e., the Public: BOOKING.COM is a Protectable Trademark

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

On June 30, 2020, the U.S. Supreme Court (the “Court”), in an 8-1 decision, affirmed the Fourth Circuit’s holding that “BOOKING.COM” is a protectable trademark, thereby rejecting a sweeping rule that a protectable trademark cannot be created by adding “.com” to an otherwise generic term.

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After Almost 20 Years of Litigation, “Lucky” Finally Gets Lucky

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

On May 14, 2020, the United States Supreme Court held in Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., that a party is not precluded from raising new defenses, when a subsequent lawsuit between the same parties challenges different conduct and raises different claims.

As explained in our previous posts, Lucky Brand Dungarees Inc. and related companies (collectively, “Lucky”) and Marcel Fashion Group Inc. (“Marcel”) both use the word “Lucky” as part of their marks on jeans and other apparel. Marcel received a trademark registration for the phrase “GET LUCKY,” and Lucky uses the registered trademark “LUCKY BRAND” and other “Lucky” formative marks. This has led to almost 20 years of litigation, proceeding in three rounds. The first round resulted in a 2003 settlement agreement (“2003 Settlement Agreement”) in which Lucky agreed to stop using the phrase “GET LUCKY,” and Marcel agreed to release “any and all claims arising out of” Lucky’s right to the trademark “LUCKY BRAND” as of the date of the agreement in exchange for $650,000. Continue Reading

The Parameters of Generic Marks: Booking.com before the Supreme Court

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

The Lanham Act (“Act”) makes it clear that generic terms cannot be registered as trademarks. But can an online business create a protectable trademark by adding a generic top-level domain (e.g., “.com”) to an otherwise generic term? The Supreme Court will answer this question in USPTO v. Booking.com, No. 19-46.

The legal battle between Booking.com and the U.S. Patent and Trademark Office (“USPTO”) began almost a decade ago. In 2011 and 2012, Booking.com, a leading hotel accommodations company, filed four trademark applications for BOOKING.COM. Booking.com sought to register both the word mark and stylized versions of the mark. The USPTO examiner rejected these applications, finding the marks generic. Alternatively, the examiner concluded that the marks were descriptive and Booking.com had not shown that the marks had acquired secondary meaning, and the marks were merely descriptive. Continue Reading

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