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

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 shape or border to be eligible for protection. As a result, such designs may be registered without proof of acquired distinctiveness. Continue Reading

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

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,” then the Register may temporarily “toll, waive, adjust, or modify any timing provision… or procedural provision” in the Copyright Act. In exercising this authority, § 710 requires the Register to “consider the scope and severity of the particular national emergency, and its specific effect with respect to the particular provision” and to tailor any remedy accordingly. Continue Reading

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

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 prior decision in Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, 527 U. S. 627 (1999). According to the Court, that precedent made clear that Article 1, Section 8, Clause 8 of the Constitution (the “Intellectual Property Clause”) could not provide the basis for an abrogation of sovereign immunity and that Section 5 of the Fourteenth Amendment could not support an abrogation on a legislative record like the one at issue here. Continue Reading

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

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 Plant copied portions of it. After a six-year-long court battle, the en banc Ninth Circuit Court of Appeals (the “Court”) upheld a jury verdict in favor of Led Zeppelin finding that the two songs are not substantially similar. Additionally, in a decision that will broadly impact the music industry, the Court overturned the so-called “inverse ratio rule,” a precedent that has governed copyright cases in the Ninth Circuit for the last 43 years. Continue Reading

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

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 common law rights in trademarks for cannabis products?  In a recent order denying summary judgment, the Northern District of California in Kiva Health Brands, Inc. v. Kiva Brands, Inc.  held that a party’s state and common law trademark did not confer trademark priority in a trademark infringement suit based on the federal Lanham (Trademark) Act. Continue Reading

Prior Use Under the Pan-American Convention

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 gives trademark owners in contracting states protection of their marks in other contracting states “where the mark was known to have been previously used in the region.” This confers unique benefits to trademark owners from these countries, because generally trademark rights are territorial — a trademark is protectable only where it is used or registered. Continue Reading

The Joint is Just a Music Joint, Not a Trademark

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 acquired distinctiveness. Continue Reading

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

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 Properties, is a real-estate agency that focuses exclusively on the Royal Palm Yacht & Country Club community.  In 2012, Royal Palm Properties acquired a federally registered service mark on the name “Royal Palm Properties,” asserting that it had  “acquired distinctiveness” over time, even though the mark might not be “inherently distinctive.”  See 15 U.S.C. § 1052(f). Continue Reading

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

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:

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 the petitioner in Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233. The ABA’s brief urges the Court to interpret Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a), as not requiring proof of willfulness in determining whether to award recapture of a trademark infringer’s profits, but allowing willfulness to be considered among other equitable factors. The ABA asserts that such interpretation is supported by the statutory text of § 1117(a) and public policy. Continue Reading

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