After Almost 20 Years of Litigation, “Lucky” Finally Gets Lucky

Posted in Supreme Court, Trademarks

On May 14, 2020, the United States Supreme Court held in Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., that a party is not precluded from raising new defenses, when a subsequent lawsuit between the same parties challenges different conduct and raises different claims.

As explained in our previous posts, Lucky Brand Dungarees Inc. and related companies (collectively, “Lucky”) and Marcel Fashion Group Inc. (“Marcel”) both use the word “Lucky” as part of their marks on jeans and other apparel. Marcel received a trademark registration for the phrase “GET LUCKY,” and Lucky uses the registered trademark “LUCKY BRAND” and other “Lucky” formative marks. This has led to almost 20 years of litigation, proceeding in three rounds. The first round resulted in a 2003 settlement agreement (“2003 Settlement Agreement”) in which Lucky agreed to stop using the phrase “GET LUCKY,” and Marcel agreed to release “any and all claims arising out of” Lucky’s right to the trademark “LUCKY BRAND” as of the date of the agreement in exchange for $650,000. Continue Reading

The Parameters of Generic Marks: before the Supreme Court

Posted in Supreme Court, Trademarks, USPTO

The Lanham Act (“Act”) makes it clear that generic terms cannot be registered as trademarks. But can an online business create a protectable trademark by adding a generic top-level domain (e.g., “.com”) to an otherwise generic term? The Supreme Court will answer this question in USPTO v., No. 19-46.

The legal battle between and the U.S. Patent and Trademark Office (“USPTO”) began almost a decade ago. In 2011 and 2012,, a leading hotel accommodations company, filed four trademark applications for BOOKING.COM. sought to register both the word mark and stylized versions of the mark. The USPTO examiner rejected these applications, finding the marks generic. Alternatively, the examiner concluded that the marks were descriptive and had not shown that the marks had acquired secondary meaning, and the marks were merely descriptive. Continue Reading

2(b) Prohibition On “Flag Marks” Bars Use of Flag as Part of a Mark

Posted in Advertising, Trademarks, TTAB, USPTO

In a recent precedential decision concerning the rarely litigated or cited Section 2(b) of the Lanham Act, the Trademark Trial and Appeal Board affirmed a refusal to register the service mark:

for tourism services on the ground that the mark includes a simulation of the American flag. In re Alabama Tourism Department, Serial No. 87599292 (TTAB, May 6, 2020). Continue Reading

States Cannot Copyright Annotated Versions of Legal Codes

Posted in Copyrights, Supreme Court

On April 27, 2020, the United States Supreme Court held, in Georgia et al. v. Public.Resource.Org., Inc., in a 5-4 decision, that copyright law does not protect annotations contained in the official annotated compilation of Georgia statutes.

As explained in our prior blog, Georgia, like many states, offers a free version of its official statute, but charges a fee for the annotated version, Official Code of Georgia Annotated (“OCGA”). Annotated codes, in addition to the text of the statute, include summaries of judicial opinions, regulations, and attorney general opinions related to the statute. The annotations in the current OCGA were produced by Matthew Bender & Co., Inc., a division of the LexisNexis Group (“Lexis”), pursuant to a work-for-hire agreement with the Georgia Revision Commission (“Commission”), a state entity composed mostly of legislators. Under the agreement, Lexis drafts the annotations under the supervision of the Commission. The agreement also states that any copyright in the OCGA vests in the State of Georgia, acting through the Commission. Continue Reading

Willfulness Is Not Required for Awarding Profits in Trademark Cases

Posted in Supreme Court, Trademarks

On April 23, 2020, the United States Supreme Court held in Romag Fasteners, Inc. v. Fossil Group, Inc., FKA Fossil, Inc., et al., that under the Lanham Act, a plaintiff is not required to show that a defendant willfully violated plaintiff’s trademark rights as a precondition to a profits award.

As explained in our previous blog, Romag Fasteners Inc. (“Romag”) sells magnetic clips for purses and wallets under its registered trademark, ROMAG. Romag’s clips are also covered by the claims of a patent owned by Romag. Fossil Inc. (“Fossil”) is a fashion accessory company that designs, markets, and sells, among other things, small leather goods. In 2010, Romag sued Fossil (along with certain retailers of Fossil products) for patent and trademark infringement in the District of Connecticut. Romag alleged that Fossil was selling handbags using counterfeit ROMAG clips. In 2014, a jury found Fossil liable for both patent and trademark infringement. The jury awarded Fossil’s $6.7 million in profits to Romag to deter infringement. However, because the jury found that Fossil’s infringement was not willful, the Federal Circuit concluded that Romag was not entitled to an award of Fossil’s profits. The Supreme Court, in a unanimous decision, disagreed. In the majority opinion, written by Justice Gorsuch, the Court confirmed that the plain language of the Lanham Act has never required a showing of willful infringement to obtain a profits award in a suit for trademark infringement under §1125(a). Continue Reading

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

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 still in use in commerce, shall be incontestable.” See 15 U.S.C. § 1065 (emphasis added). This affords the owner of a registered mark valuable benefits, including, subject to certain express exceptions, a bar on others challenging:

  1. The validity of the mark, including any challenge that the mark is defective on the grounds of mere descriptiveness. See Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 105 S. Ct. 658, 661 (1985).
  2. The registration of the mark.
  3. The ownership of the mark.
  4. The owner’s exclusive right to use the mark in connection with the registered goods and services.

See 15 U.S.C. § 1115(b). Continue Reading

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