Mark S. Lafayette

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Mark Lafayette focuses his practices in the areas of commercial and intellectual property litigation, real estate, and entertainment. He represents clients in cases involving trademarks, including counterfeit product and license related litigation, copyrights, and trade secrets. He also has extensive knowledge of business torts, construction, real estate, employment, and securities matters. Mark’s client base has included Fortune 500 companies, entertainers, authors, music publishers, entrepreneurs, and new technology ventures.?

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Will the COVID-19 Pandemic Impact Your Ability to Secure an “Incontestable” Trademark?

By Mark S. Lafayette and Evelina Gentry on Posted in Trademarks, USPTO
Section 15 of the Lanham Act, subject to certain specified exceptions, provides that the right of an owner “to use [a] registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is … Continue Reading

Supreme Court Holds Ban on Immoral or Scandalous Trademarks Unconstitutional

By Ira S. Sacks and Mark S. Lafayette on Posted in Supreme Court, Trademarks
On June 24, 2019, the United States Supreme Court, in Iancu v. Brunetti, reviewing the trademark application for “FUCT”, held that the Lanham’s Act’s provision, prohibiting the registration of “immoral[] or scandalous” trademarks, 15 U.S.C. 1052(a)(1), violated the First Amendment to the United States Constitution. This blog has followed the evolving judicial views concerning “disparaging” … Continue Reading

Second Circuit In Vimeo Narrows The Red Flag Knowledge and Willful Blindness Exceptions To DMCA Safe Harbors

By Ira S. Sacks, Mark S. Lafayette and Jamie B. Shyman on Posted in Copyrights, DMCA
The Second Circuit recently decided Capitol Records, LLC, et al. v. Vimeo, LLC (2d Cir. June 16, 2016) (“Vimeo”), a landmark decision concerning the interpretation of the Digital Millennium Copyright Act of 1998 (the “DMCA”).  The DMCA gives qualifying internet service providers a safe harbor (protection) from copyright liability with respect to user-posted material.  In … Continue Reading

Stolichnaya: Comity or Confiscation; and Is That For US Courts to Decide?

By Ira S. Sacks, Mark S. Lafayette and Rachel B. Rudensky on Posted in Trademarks
The Second Circuit recently issued its latest ruling in a long-running legal battle over the trademark rights to the STOLICHNAYA trademark. In this latest decision in the 12-year dispute, the Court ruled that an agency of the Russian Federation has standing to sue the record owners of the U.S. trademark registration and its distributors in … Continue Reading

Heinz Seeks “Smart” De Novo Review In Light Of B&B Hardware

By Ira S. Sacks, Mark S. Lafayette and Rachel B. Rudensky on Posted in Trademarks, TTAB, USPTO
H.J. Heinz Co. (“Heinz”) filed a federal lawsuit recently against Boulder Brands USA (“Boulder”) seeking to vacate and reverse a Trademark Trial and Appeal Board decision finding that Boulder’s SMART BALANCE trademark is not likely to be confused with Heinz’s SMART ONES trademark, and that the SMART ONES trademark is not famous.  H.J. Heinz Co. … Continue Reading

B&B Hardware: Sometimes, Not Always, Not Never

By Ira S. Sacks, Mark S. Lafayette and Rachel B. Rudensky on Posted in Trademarks, TTAB, USPTO
The Supreme Court issued its second trademark ruling of the term on Tuesday, ruling that federal court decisions on “likelihood of confusion” sometimes can be precluded by earlier rulings about trademark registrability issued from the Trademark Trial and Appeal Board (“TTAB” or “the Board”). Petitioner B&B Hardware, Inc. (“B&B”) and respondent Hargis Industries, Inc. (“Hargis”) both … Continue Reading

Is POM Wonderful?

By Ira S. Sacks, Mark S. Lafayette and Rachel B. Rudensky on Posted in False Advertising
Section 43(a) of the Lanham Act provides a private right of action for companies to sue their competitors for a wide variety of “false or misleading” commercial statements. Classic false advertising claims involve a defendant’s false or misleading statements either about its own or a competitor’s product when those statements lead to the plaintiff’s lost … Continue Reading

Volitional Acts and Control: Copyright Infringement Liability of Online Sellers

By Ira S. Sacks, Mark S. Lafayette and Rachel B. Rudensky on Posted in Copyrights
The issue of whether a party has engaged in a volitional act, or has the ability to control an infringer, sufficient to result in liability for copyright infringement, either as a direct infringer or through vicarious copyright infringement, has taken on new significance due to the rise of online sellers providing goods and services.  In … Continue Reading
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