Ira S. Sacks

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Ira Sacks practices in the area of litigation with an emphasis on trademark and branding matters. He handles complex and high-profile cases involving trademark, copyright, and patent infringement issues, distribution disputes, false advertising, price fixing, dealer termination, monopolization and unfair competition, unfair trade practices, and trade secrets. Ira’s clients include fragrance and fashion companies as well as national scientific laboratories, real estate developers, and financial institutions.

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SCOTUS Oral Arguments in Abitron v. Hetronic: Extraterritorial Reach of Lanham Act

By Ira S. Sacks and Evelina Gentry on Posted in IP Litigation, Supreme Court, Trademarks
On March 31, 2023, the Supreme Court heard arguments in Abitron Austria GmbH v. Hetronic International, Inc., where at issue is whether the Tenth Circuit erred in applying the Lanham Act extraterritorially to Abitron’s foreign sales, including purely foreign sales that never reached the United States, as more fully described in our previous blog.… Continue Reading

Cert. Granted in Abitron to Clarify Boundaries for Extraterritorial Application of Lanham Act

By Ira S. Sacks and Evelina Gentry on Posted in IP Litigation, Supreme Court, Trademarks
In Abitron Austria GmbH v. Hetronic International, Inc., Oklahoma-based Hetronic, maker of radio remote controls for heavy-duty construction equipment, sued its former distributor Abitron (from Austria) for selling copycat products, as illustrated below. The district court found that Abitron had willfully infringed the Hetronic mark. Despite the fact that 97% of the infringing sales were … Continue Reading

Does Anyone Here Have A Sense Of Humor, Redux: Jack Daniel’s v. VIP Oral Argument

By Ira S. Sacks and Victoria Doyle on Posted in IP Litigation, Supreme Court, Trademarks
On March 22, 2023, the Supreme Court heard oral argument in the trademark parody case captioned Jack Daniel’s Properties, Inc. v. VIP Products LLC. As we previously blogged, the issues presented in the care are: 1. Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s … Continue Reading

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 … Continue Reading

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 … Continue Reading

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 … 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 … 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 … 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 … 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.… Continue Reading

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), … 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 … Continue Reading

Lehman Brothers is Gone but Not Abandoned

By Ira S. Sacks 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 … 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.… Continue Reading

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 … 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 … Continue Reading

2(b) Prohibition On “Flag Marks” Bars Use of Flag as Part of a Mark

By Ira S. Sacks on Posted in Advertising, Trademarks, TTAB, USPTO
In a recent precedential decision concerning the rarely litigated or cited Section 2(b) of the Lanham Act, the Trademark Trial and Appeal Board affirmed a refusal to register the service mark: for tourism services on the ground that the mark includes a simulation of the American flag. In re Alabama Tourism Department, Serial No. 87599292 … Continue Reading

States Cannot Copyright Annotated Versions of Legal Codes

By Ira S. Sacks and Evelina Gentry on Posted in Copyrights, Supreme Court
On April 27, 2020, the United States Supreme Court held, in Georgia et al. v. Public.Resource.Org., Inc., in a 5-4 decision, that copyright law does not protect annotations contained in the official annotated compilation of Georgia statutes. As explained in our prior blog, Georgia, like many states, offers a free version of its official statute, but … Continue Reading

Willfulness Is Not Required for Awarding Profits in Trademark Cases

By Ira S. Sacks and Evelina Gentry on Posted in Supreme Court, Trademarks
On April 23, 2020, the United States Supreme Court held in Romag Fasteners, Inc. v. Fossil Group, Inc., FKA Fossil, Inc., et al., that under the Lanham Act, a plaintiff is not required to show that a defendant willfully violated plaintiff’s trademark rights as a precondition to a profits award. As explained in our previous blog, … Continue Reading

Federal Circuit Colors Outside the Lines with a New Shade of Multi-Color Trademarks Protectability

By Ira S. Sacks and Evelina Gentry on Posted in Trademarks, TTAB, USPTO
On April 8, 2020, the Federal Circuit Court of Appeals (the “Federal Circuit”), in In Re Forney Industries Inc reversed the Trademark Trial and Appeal Board (the “Board”) and held that multicolor designs may be inherently distinctive when used on product packaging. The court further held that multicolor designs need not be used within a well-defined … Continue Reading

Adjustments to Copyright Act Timing Provisions for Applicants Affected by COVID-19

By Ira S. Sacks and Blog Admin on Posted in Copyrights
On March 27, 2020, the President signed into law the Coronavirus Aid, Relief, and Economic Security (CARES) Act, which added § 710 to the Copyright Act. § 710 explains that if the Register of Copyrights determines that a declared national emergency “generally disrupts or suspends the ordinary functioning of the copyright system… or any component thereof,” … Continue Reading

The Final Revenge of Queen Anne’s Revenge: State’s Use of Photographs Is Not Piracy

By Ira S. Sacks and Evelina Gentry on Posted in Copyrights, IP Litigation, Supreme Court
On March 23, 2020, in Allen v. Cooper, the Supreme Court held that Allen, who spent over two decades, photographing the shipwreck of Queen Anne’s Revenge, better known as the flagship for the pirate Blackbeard, cannot sue the State of North Carolina (“State”) for copyright infringement of his photographs. The Court’s decision was based on its … Continue Reading
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