In June 2019, the United States Supreme Court granted certiorari in Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233. As set forth in our previous blog post, Romag Fasteners Inc. (“Romag”) seeks to have the Court resolve a longstanding circuit split on the issue: “[w]hether, under section 35 of the Lanham Act, 15 U.S.C. § 1117(a), willful infringement is a prerequisite for an award of an infringer’s profits for a violation of section 43(a), id. § 1125(a).” Continue Reading
Lucky Opening Brief on Cert.: Second Circuit’s Novel “Defense Preclusion” Rule Turns a Blind Eye on Bedrock Preclusion Principles
Posted in Supreme Court, TrademarksIn June 2019, the United States Supreme Court granted certiorari in Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., No. 18-1086. As set forth in our prior blog posts, Lucky Brand Dungarees Inc. and related companies (collectively, “Lucky”) seek a reversal of the Second Circuit Court of Appeal’s ruling that Lucky was precluded by res judicata from asserting a release agreement defense, which was not previously litigated or resolved between Lucky and Marcel Fashion Group Inc. (“Marcel”). Specifically, the question presented is: “[w]hether, in cases where a plaintiff asserts new claims, federal preclusion principles bar a defendant from raising defenses that were not actually litigated and resolved in any prior case between the parties.” Continue Reading
Queen Anne’s Revenge?
Posted in Copyrights, Supreme CourtIn June 2019, the United States Supreme Court granted certiorari in Allen v. Cooper, No. 18-877. The case presents a question “whether Congress validly abrogated state sovereign immunity via the Copyright Remedy Clarification Act … in providing remedies for authors of original expression whose federal copyrights are infringed by States.” Plaintiffs filed their Opening Brief in August 2019. Continue Reading
Foreign Equivalents: Ricardo and Richard
Posted in Trademarks, USPTOIn a precedential decision involving the “doctrine of foreign equivalents,” the Board found no likelihood of confusion between the mark RICHARD MAGAZINE for a website in the field of fashion and lifestyle and the mark RICARDO for goods and services, including publications, in the culinary field. Ricardo Media Inc. v. Inventive Software, LLC, Opposition No. 91235063 (August 21, 2019) [precedential]
The doctrine of foreign equivalents directs the United States Patent and Trademark Office to translate marks in foreign languages into English to test for the statutory bars to registration. The doctrine can be used to deny registration based on descriptiveness and likelihood of confusion. When applying the doctrine of foreign equivalents, the key question is whether the ordinary American purchaser would “stop and translate” the mark in question. Continue Reading
A Cautionary Tale of Waiver!
Posted in Trademarks, TTAB, Uncategorized, USPTOThe Federal Circuit upheld a Trademark Trial and Appeal Board (“Board”) decision refusing registration of an athletic apparel company’s trademark, holding that the trademark applicant waived its key arguments by not raising them before the Board. Hylete LLC v. Hybrid Athletics, LLC (Fed. Cir. 2019) Continue Reading
Collective Membership And Preserving The Heritage of Pierce Arrow
Posted in Trademarks, TTABIn a recent decision concerning the scope of protection for collective membership marks, the Trademark Trial and Appeal Board sustained The Pierce-Arrow Society’s opposition to registration of PIERCE-ARROW for “automobiles” by Applicant Spintek Filtration, Inc. The Pierce-Arrow Society v. Spintek Filtration, Inc., Opposition No. 91224343 (August 12, 2019) [precedential]
A “collective membership” indicates that the user of the mark is a member of a particular organization. Fraternities often federally register their marks as collective membership marks. Collective membership marks are not trademarks or service marks in the ordinary sense; they are not used in business or trade, and they do not indicate commercial origin of goods or services. Registration of these marks fills the need of collective organizations who do not use the symbols of their organizations on goods or services, but who still wish to protect their marks from use by others. Continue Reading
How Many Types of Wines Are There: BIG SIX? Really?
Posted in Trademarks, TTABThe Trademark Trial and Appeal Board recently affirmed the refusal to register a trademark application for BIG SIX for wine on the ground that the term is generic or descriptive of wines. In re Plata Wine Partners, LLC, Serial No. 87292254 (August 22, 2019) [not precedential]
Applicant filed an intent to use trademark application for BIG SIX for wine, which was initially refused on the ground that “Big Six” is a term of art in the wine industry referring to six common types of wine: Riesling, Sauvignon Blanc, Chardonnay, Pinot Noir, Merlot, and Cabernet Sauvignon. The Office Action further advised the Applicant that the mark may be generic for wine, which would mean that the Applicant could not argue that the mark acquired distinctiveness and could not register BIG SIX on the Supplemental Register. Continue Reading
The Third Circuit Goes Bananas
Posted in Copyrights, IP LitigationIn Silvertop Associates, Inc. v. Kangaroo Manufacturing, Inc., the Third Circuit applied the two-part test set forth in the Supreme Court’s decision in Star Athletica, L.L.C. v. Varsity Brands, Inc., and held that a full-body banana costume qualified for copyright protection. Continue Reading
Cannabis Trademarks Redux
Posted in Trademarks, TTAB, USPTOIn a case affecting the fast-growing legal cannabis industry, the Trademark Trial and Appeal Board (“TTAB” or “Board”) affirmed the United States Patent and Trademark Office’s (“USPTO”) refusal to register two trademarks for smokeless cannabis vaporizers because the goods were seen as unlawful drug paraphernalia under federal law. In re Canopy Growth Corporation by assignment from JJ206, LLC, Serial Nos. 86475885 & 86475899 (TTAB, July 16, 2019). Continue Reading
APOGEE at its Nadir for Louis Vuitton at Federal Circuit
Posted in Trademarks, TTAB, USPTOThe Federal Circuit recently sustained the Trademark Trial and Appeal Board’s (“TTAB” or the “Board”) refusal to register Louis Vuitton Malletier’s (“LVM”) trademark APOGÉE for perfumes, a decision that will concern trademark prosecution attorneys who seek to distinguish trademarks in United States Patent & Trademark Office (“USPTO”) likelihood of confusion refusals. Continue Reading
