Municipal Takedown: TTAB Refuses to Register the County of Orange Logos

By Ira S. Sacks and Evelina Gentry on Posted in Trademarks, TTAB, USPTO

The Trademark Trial & Appeal Board (“TTAB”) affirmed the US Patent & Trademark Office’s (“PTO”) refusal to register two different logo marks filed by California’s County of Orange (“County”) on the ground that they constitute insignia of a municipality.

In 2017, the County applied to register two logo marks. The application described one mark as “a circle with the image of three oranges in front of an orange grove and . . . mountains with the words ‘COUNTY OF ORANGE’ . . . and . . . ‘CALIFORNIA’ . . . Continue Reading

If Warhol Isn’t Transformative, Redux, In The Supreme Court

By Ira S. Sacks and Evelina Gentry on Posted in Copyrights, IP Litigation, Supreme Court

On March 25, 2022, the Supreme Court agreed to consider whether Andy Warhol’s “Prince Series” sufficiently transforms Lynn Goldsmith’s 1981 photograph of Prince (the “Photograph”) to qualify for the Copyright Act’s fair use defense.

As discussed in detail in our prior blog, at issue in this case is a series of silkscreen prints created by Andy Warhol based on Lynn Goldsmith’s Photograph, in which she holds a registered copyright. In 2017, The Andy Warhol Foundation for the Visual Arts, Inc. (“AWF”) sued Goldsmith for a declaratory judgment that the Prince Series works were non-infringing or, in the alternative, that they made fair use of the Photograph. The district court ruled in favor of the AWF on its assertion of fair use. In 2021, the Second Circuit reversed the district court’s ruling and held that the Prince Series was not transformative (and thus not fair use) because the Photograph “remain[ed] the recognizable foundation upon which the Prince Series is built.” The Second Circuit further explained that “the secondary work’s transformative purpose and character must, at a bare minimum, comprise something more than the imposition of another artist’s style on the primary work such that the secondary remains both recognizably deriving from, and retaining the essential elements of, its source material.” Continue Reading

The Third Circuit Limits Preclusive Effect of the TTAB Rulings

By Ira S. Sacks and Evelina Gentry on Posted in Trademarks, TTAB

On September 17, 2021, the Third Circuit held in Beasley v. Howard that trademark cancellation proceedings before the Trademark Trial and Appeal Board (“TTAB”) do not have claim preclusive effect against trademark infringement lawsuits in federal district courts because of the TTAB’s limited jurisdiction.

The case involves two musicians, David Beasley and William Howard, who have been involved in a long-running dispute over the rights to the band name “Ebonys.” The Ebonys were founded by Beasley in 1969 and achieved some commercial success in the 1970s. Howard joined the band in the mid-1990s and performed with it for several years. Continue Reading

If Warhol Isn’t Transformative, Who (or What) Is? The Second Circuit Finds Andy Warhol’s Prince Series Not Fair Use

By Ira S. Sacks and Evelina Gentry on Posted in Copyrights, IP Litigation

On March 26, 2021, the Second Circuit reversed a 2019 district court ruling and held that Andy Warhol’s “Prince Series” did not qualify as fair use of Lynn Goldsmith’s 1981 photograph of Prince (the “Photograph”).  The Court further concluded that the Prince Series works are substantially similar to the Goldsmith Photograph as a matter of law.

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What’s in a Name: SDNY Grants Preliminary Injunction Enforcing Contractual Bar Against Designer’s Use of Her Own Name

By Ira S. Sacks on Posted in IP Litigation, Trademarks

In a fifty-seven-page memorandum opinion and order, the United States District Court for the Southern District of New York granted a fashion brand its motion for a preliminary injunction preventing its lead designer from using her given name commercially and on her social media accounts. JLM Couture, Inc. v. Hayley Paige Gutman, 20-CV-10575-LTS-SLC (S.D.N.Y. 2021), enforcing the terms of an employment agreement. Continue Reading

Not All Domain Names Are Registrable, Even After Booking.com

By Ira S. Sacks on Posted in Supreme Court, Trademarks

The question of whether a generic term combined with the .com gTLD extension could serve as a trademark was settled last July, when the U.S. Supreme Court ruled that the proposed trademark <booking.com> could not automatically be deemed to be generic, but could be registrable if consumers perceived the mark as a source identifier. USPTO v. Booking.com B.V., ___ US ___, 141 S. Ct. 187, 207 L. Ed. 2d 1113 (2020)) (blogged here). Continue Reading

Proud to Be an American, God Bless The USA, But Not Functioning as A Trademark

By Ira S. Sacks on Posted in Trademarks, TTAB, USPTO

In a precedential decision, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) affirmed the refusal to register the trademark GOD BLESS THE USA for home decor items on the ground that it failed to function as a trademark.[1] Additionally, the Board affirmed the Trademark Examining Attorney’s refusal to accept the Applicant’s request to amend its trademark to THE LEE GREENWOOD COLLECTION GOD BLESS THE USA on the ground that it was a material alteration of the originally applied-for mark. Continue Reading

Slogans As Marks: When Does a Slogan Function as a Mark

By Ira S. Sacks on Posted in Trademarks, USPTO

Slogans can, but do not always, function as trademarks. To be sure, the United States Patent and Trademark Office (“USPTO”) frequently allows slogans such as JUST DO IT! or QUALITY THROUGH CRAFTSMANSHIP, among many others, to be registered as trademarks. However, the USPTO’s recent trend has been to deny registration to slogans on the ground they fail to function as a mark, because they are informational. On October 29, 2020, the USPTO Trademark Trial and Appeal Board (the “Board” or “TTAB”) issued a precedential decision on this issue, denying registration of a term it deemed to be “a widely used concept or sentiment.” In re Texas With Love, LLC,  Serial No. 87/793,802 (October 29, 2020).

Applicant Texas With Love, LLC applied to register the trademark TEXAS LOVE for hats and shirts. The application included the requisite specimens of trademark use, in this case, the applicant’s online store displaying the trademark TEXAS LOVE in close association with the goods. Continue Reading

Lehman Brothers is Gone but Not Abandoned

By Ira S. Sacks on Posted in Trademarks, TTAB

On September 30, 2020, the Trademark Trial and Appeal Board ruled in favor of the assignee of the famous LEHMAN BROTHERS trademark against the registration that mark as a brand name for beer, spirits, and bar and restaurant services, finding that the LEHMAN BROTHERS mark had not been abandoned.  Barclays Capital, Inc. v. Tiger Lily Ventures, Ltd. (TTAB, September 30, 2020, non-precedential).

Background

In 2008, Lehman Brothers was the fourth largest investment bank in the United States, with hundreds of billions of dollars of assets under management and over 25,000 employees in offices worldwide when it filed for protection under the U.S. bankruptcy laws, the largest bankruptcy in U.S. history.  As part of the bankruptcy, Lehman Brothers sold its trademarks, including its LEHMAN BROTHERS trademark, to Barclays Capital. Barclays licensed the LEHMAN BROTHERS trademark back to what remained of Lehman Brothers for a term of two years. That entity used the licensed trademark in the general winding down of its business.  Continue Reading

Genericness is in the Eye of the Beholder, i.e., the Public: BOOKING.COM is a Protectable Trademark

By Ira S. Sacks and Evelina Gentry on Posted in Supreme Court, Trademarks, USPTO

On June 30, 2020, the U.S. Supreme Court (the “Court”), in an 8-1 decision, affirmed the Fourth Circuit’s holding that “BOOKING.COM” is a protectable trademark, thereby rejecting a sweeping rule that a protectable trademark cannot be created by adding “.com” to an otherwise generic term.

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