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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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

After A Long Climb, Led Zeppelin Prevails In The Stairway To Heaven Copyright Battle

By Ira S. Sacks and Evelina Gentry on Posted in Copyrights
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 … Continue Reading

Lanham Act Preemption of State Law Where Cannabis Trademarks Are At Issue

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB
As 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 … Continue Reading

Prior Use Under the Pan-American Convention

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB
The 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 … Continue Reading

The Joint is Just a Music Joint, Not a Trademark

By Ira S. Sacks and Rachel B. Rudensky on 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 … Continue Reading

Royal Palm Properties’ Trademark Gets Royal Treatment At The 11th Circuit

By Ira S. Sacks and Evelina Gentry on Posted in Trademarks
This 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 … Continue Reading

When Abandonment Isn’t Abandonment: Use of an “Abandoned” Mark by a Subsidiary

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

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 … 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, … 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. … 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 … 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 … 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. … 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 … Continue Reading

Cannabis Trademarks Redux

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB, USPTO
In a case affecting the fast-growing legal cannabis industry, the Trademark Trial and Appeal Board (“TTAB” or “Board”) affirmed the United States Patent and Trademark Office’s (“USPTO”) refusal to register two trademarks for smokeless cannabis vaporizers because the goods were seen as unlawful drug paraphernalia under federal law.  In re Canopy Growth Corporation by assignment … Continue Reading

APOGEE at its Nadir for Louis Vuitton at Federal Circuit

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

Supreme Court Will Decide When Trademark Infringers May Be Ordered to Forfeit Profits

By Ira S. Sacks and Evelina Gentry on Posted in IP Litigation, Supreme Court, Trademarks
On 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 … Continue Reading
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