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

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 of the rulings in Matal v. Tam, 582 U.S. ___ (2017) (blogged here) and In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (blogged here).  Continue Reading

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

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 of trademark registrability in the context of an opposition or cancellation proceeding, such decision will, under certain circumstances, prevent further litigation of that issue in the future, including in a later federal court litigation. The practical effect of B&Bi.e, the circumstances under which issue preclusion will be applied – is still being refined. The Southern District of New York (“SDNY”) recently added to this refinement in Cesari S.R.L. v. Peju Province Winery, L.P (“Cesari”).

In Cesari, the SDNY applied B&B to hold that the TTAB’s finding, in an opposition proceeding, that a likelihood of confusion existed between Cesari’s trademark LIANO for wines and Peju Province’s trademark application LIANA for wines precluded Peju Province, but not its affiliates, from defending against Cesari’s federal court claim that confusion was likely for the same marks as applied on the parties’ goods in the marketplace.   Continue Reading

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

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 Court ruled that “functional” designs could never be protected trade dress.

The United States Patent and Trademark Office, Trademark Trial and Appeal Board (“TTAB” or the “Board”) last week provided further instruction in how to interpret trade dress claims in light of expired patents in Poly-America, L.P. v. Illinois Tool Works, Inc., Cancellation No. 92056833 (October 18, 2017). In this case, the Board cancelled a nearly fifty-year-old registration for the design of resealable plastic sandwich bags. Continue Reading

No Twist on Pretzel Crisps on Remand

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 all parties are entitled to use to describe pretzel-style chips. Continue Reading

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

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 registering federal trademarks that “disparage” any person violates the First Amendment. Continue Reading

Application or Registration? Eleventh Circuit Widens Circuit Split

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 District of Florida’s dismissal of the copyright infringement action for failure to plead compliance with the registration requirement of 17 U.S.C. § 411(a). The complaint of the plaintiff news organization had only alleged that it had filed applications to register its articles and did not allege that the Register of Copyrights had acted on its applications. Continue Reading

Laches Limited To Being An Equitable Defense In Patent Cases

Posted in IP Litigation

In SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, the Supreme Court made plain that laches is merely an equitable defense in patent cases, and will not bar a damage claim if brought within the six year statute of limitations of 35 U. S. C. §286, coming to the same conclusions as it had previously with respect to the laches defense in Copyright Act cases. Petrella v. Metro-Goldwyn-Mayer, Inc., Doc. No. 12-1315 (May 19, 2014). Continue Reading

Supreme Court Affirms That Designs Of Cheerleading Uniforms Are Copyrightable

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 opinion by Justice Thomas on March 22, 2017. Justice Ginsburg filed an opinion concurring in the judgment. Justice Breyer filed a dissenting opinion, in which Justice Kennedy joined. Continue Reading

The Yellow Pages Live 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 between Yellow Pages Photos, Inc. (YPPI) and Ziplocal, L.P. (Ziplocal) related to the layout and assembly of phonebook products. Continue Reading

Making United States Consumer Safer For Tequila?

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, Inc. v. Consejo Regulador del Tequila, A.C., Opposition No. 91190827 (January 23, 2017) [precedential]. As a result, Mexico’s “Consejo Regulador del Tequila A.C.” (meaning Tequila Regulatory Council, hereinafter “CRT”) can register the word TEQUILA as a certification mark and control its use. Continue Reading