Ira S. Sacks

Photo of Ira S. Sacks

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.

Subscribe to all posts by Ira S. Sacks

Ninth Circuit Extends Tam 1st Amendment Protections to Advertising

By Ira S. Sacks and Rachel B. Rudensky on Posted in Advertising, IP Litigation, Trademarks
The Ninth Circuit extended the First Amendment protections enunciated by the Supreme Court in Matal v. Tam, 137 S.Ct. 1744 (2017)[1] to advertising in American Freedom Defense Initiative, et al. v. King County (9th Cir. Sept. 27, 2018). Plaintiff American Freedom Defense Initiative is an organization co-founded by Pamela Geller and Robert Spencer, whose focus … Continue Reading

Hashtag Is Not Enough to Save Another will.i.am Trademark Application

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, USPTO
William Adams is a musical performer who is more famously known by his stage name, will.i.am. A recent ruling from the United States Patent and Trademark Office, Trademark Trial and Appeal Board, unfortunately makes him a two-time loser at the USPTO. The case, In re i.am.symbolic, llc, Serial No. 85916778 (TTAB, August 8, 2018) (precedential), … Continue Reading

The New Jersey Turnpike Authority Pays a Big Toll for Pizza

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB, USPTO
The New Jersey Turnpike Authority (“NJTA”) was forced to pay a big toll when the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”), dismissed its opposition to a pizza restaurant’s applied-for homage to the famous route to the Jersey shore.  In New Jersey Turnpike Authority v. Jersey Boardwalk Franchising Co., … Continue Reading

TTAB Guidance on Disclaimers and Acquired Distinctiveness: “Furniture Warehouse” Must Be Disclaimed, But “American” Need Not

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 (“TTAB” or the “Board”) affirmed a refusal to register the logo: absent a disclaimer of the term “AMERICAN FURNITURE WAREHOUSE.” However, the Board also held that the phrase can acquire distinctiveness as a part of the overall trademark. In … Continue Reading

Discovery Sanctions Affirmed Despite Dwarfing Potential Value of Entire Case

By Ira S. Sacks and Blog Admin on Posted in Attorneys' Fees, Discovery, IP Litigation, Trademarks
In Klipsch v. ePRO, the Second Circuit affirmed discovery sanctions commensurate with the costs incurred by the moving party in addressing the sanctionable conduct ($2.68 million), as well as security for the sanctions, potential damages and potential attorneys’ fees; and held that such sanctions are not unduly punitive even if the likely ultimate value of … Continue Reading

Tam Extended: Prohibition of “Immoral and Scandalous” Trademarks Unconstitutional

By Ira S. Sacks and Rachel B. Rudensky on Posted in IP Litigation, Trademarks, TTAB, USPTO
The Court of Appeals for the Federal Circuit recently extended First Amendment protections for trademark applications in In re Brunetti, No. 15-1109 (Fed. Cir. December 15, 2017), ruling that Section 2(a) of the Lanham Act’s prohibition against registration of “immoral and scandalous” matter violated free speech protections. This ruling comes as no surprise, in light … Continue Reading

B&B Hardware Precludes Defense To Likelihood Of Confusion In District Court

By Ira S. Sacks and Patricia M. Flanagan on Posted in IP Litigation, Trademarks, TTAB
In 2015, the Supreme Court, in its decision in B&B Hardware, Inc. v. Hargis Industries, Inc. (“B&B”), held that sometimes issue preclusion should apply to prior Trademark Trial and Appeal Board (“TTAB”) decisions. 135 S. Ct. 1293 (2015). Under this directive, if the TTAB decides the issue of “likelihood of confusion” when making a determination … Continue Reading

TTAB Seals Fate of Trade Dress Claims for Design Covered By Utility Patent

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB
It is natural for manufacturers to seek to widen their intellectual property protection. In the seminal case TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 US 23 (2001), the Supreme Court struck down the plaintiff’s attempt to expand the reach of its expired utility patents by claiming trade dress protection in those designs. The Supreme … Continue Reading

No Twist on Pretzel Crisps on Remand

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB
In a 54 page decision issued on September 6, 2017, the Trademark Trial and Appeal Board (the “Board”) ended (again) a long-standing dispute between snack food makers Frito-Lay, Inc. (“Frito”) and Princeton Vanguard, LLC (“Princeton Vanguard”) over the registrability of Princeton Vanguard’s PRETZEL CRISPS trademark. Frito claimed that “Pretzel Crisps” was a generic term that … Continue Reading

Supreme Court: Disparaging Speech Protected By First Amendment; Lanham Act Section 2(a) Unconstitutional: A Win for the Slants and the Skins

By Ira S. Sacks and Rachel B. Rudensky on Posted in Supreme Court, Trademarks, USPTO
In a unanimous (albeit fractured) decision written by Justice Alito, the United States Supreme struck down a provision of the Lanham (Trademark) Act barring registration of “disparaging” trademarks, handing a victory to Asian-American rock band The Slants. In Matal v. Tam, No. 15-1293 (June 19, 2017), the Court held that the Lanham Act’s prohibition on … Continue Reading

Application or Registration? Eleventh Circuit Widens Circuit Split

By Ira S. Sacks and Julia R. Lissner on Posted in Copyrights
The Eleventh Circuit has widened the circuit split on whether a copyright application or completed registration is required before filing a copyright infringement lawsuit. In Fourth Estate Public Benefit v. Wall-Street.com, the Eleventh Circuit held that a pending application to the Copyright Office is not sufficient. As a result, the Eleventh Circuit affirmed the Southern … Continue Reading

Supreme Court Affirms That Designs Of Cheerleading Uniforms Are Copyrightable

By Ira S. Sacks on Posted in Copyrights
As we previously blogged, the Sixth Circuit held in 2015, that the colors, stripes, chevrons, and similar graphic designs of the plaintiff’s cheerleading uniforms “are copyrightable pictorial, graphic, or sculptural works” and are “not uncopyrightable useful articles.” The Supreme Court, in Star Athletica, LLC v. Varsity Brands, Inc., Doc. No. 15-866, affirmed, 6-2, in an … Continue Reading

The Yellow Pages Live On

By Ira S. Sacks and Rachel B. Rudensky on Posted in Attorneys' Fees, Copyrights, IP Litigation
Calling the district court’s action an “abuse of discretion,” the 11th Circuit reversed a decision that cut by more than 90 percent a successful copyright infringement plaintiff’s request for attorney’s fees and costs. Yellow Pages Photos, Inc. v. Ziplocal, L.P., No. 16-11868 (January 24, 2017). This is the latest decision issued in the long-running dispute … Continue Reading

Making United States Consumer Safer For Tequila?

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB, USPTO
The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) recently dismissed Luxco, Inc.’s (“Luxco”) opposition to registration of the mark TEQUILA (in standard character format) by an official Mexican regulator as a certification mark for “distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant.” Luxco, … Continue Reading

The New Joint DOJ/FTC Antitrust Guidelines for the Licensing of Intellectual Property

By Ira S. Sacks and Alissa R. Pohlman on Posted in Antitrust, DOJ, FTC, IP Licensing
On January 12, 2017, the U.S. Department of Justice and the Federal Trade Commission released updated Antitrust Guidelines for the Licensing of Intellectual Property (the “Guidelines”). These Guidelines replaced those issued on April 6, 1995, and state the agencies’ policies regarding the licensing of patents, copyrights, trade secrets, and know-how; the Guidelines do not cover … Continue Reading

A Family Victory! Victory! Just Not for Little Caesars

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB
The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) modified its treatment of the “family of trademarks” doctrine in the recent case In re LC Trademarks, Inc., Serial No. 85890412 (December 29, 2016) [precedential]. All but breaking with its past decisions on the doctrine, the Board has now announced the … Continue Reading

NY Common Law Does Not Provide Creators With Control Over Public Performances of Pre-1972 Sound Recordings

By Ira S. Sacks and Patricia M. Flanagan on Posted in Copyrights
On December 20, 2016, the New York Court of Appeals (New York’s highest court) issued a landmark state copyright law decision, holding in response to a certified question from the Second Circuit in Flo & Eddie, Inc. v. Sirius XM Radio, Inc., that New York law does not recognize a right of public performance for … Continue Reading

First Circuit BAP Protects Trademark Licensees In Bankruptcy Despite Section 365(n)

By Ira S. Sacks and Julia R. Lissner on Posted in IP Licensing, Trademarks
The First Circuit recently issued an important interpretation of bankruptcy law that directly impacts trademark licensing rights. In In re Tempnology LLC, 559 B.R. 809 (1st Cir. BAP 2016), the First Circuit Bankruptcy Appellate Panel held that a debtor-licensor’s rejection of a trademark licensing agreement “did not vaporize” the licensee’s contractual right to use the … Continue Reading

Supreme Court Grants Cert. in USPTO Appeal of Slants Decision: Whether The Ban On Offensive Trademarks Violates The First Amendment

By Ira S. Sacks and Rachel B. Rudensky on Posted in Supreme Court, Trademarks, TTAB, USPTO
The Supreme Court granted the United States Patent and Trademark Office’s petition for certiorari in In re Tam, 117 USPQ2d 1101 (Fed. Cir. 2016), discussed here and here. In that case, the USPTO denied registration of an application to register the trademark THE SLANTS for a rock/dance on the grounds that it was offensive to … Continue Reading

Trade Dress Claim Based on Shoe’s Rectangular Metal Toe Plate Booted by SDNY

By Ira S. Sacks and Rachel B. Rudensky on Posted in IP Litigation, Trademarks
The Southern District of New York recently booted shoe manufacturer LVL XIII Brands, Inc.’s trade dress infringement suit against Louis Vuitton Malletier S.A. in LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.. At issue in this lawsuit was Plaintiff LVL XIII’s claim to exclusive trade dress rights in a rectangular metal toe plate on … Continue Reading
LexBlog