Trending Trademarks

The Brexit and Trademark Rights

Posted by Michael Palmisciano on June 24, 2016 at 5:19 PM

The United Kingdom has voted to leave the European Union (the Brexit). In the short term, the Brexit vote will not impact trademark rights in Europe. The Brexit will not affect national UK trademark registrations, and EUTM registrations will be valid in the UK for the foreseeable future. Moving forward, however, the UK will no longer be a member of the EU’s unitary trademark system, under which a single EUTM registration gives a registrant enforceable rights in each EU member country. UK legislators will need to decide whether existing EUTM registrations will remain valid in the UK or whether to establish a mechanism to convert EUTMs to national registrations. The Brexit could also impact the EUTM registration system and leave vulnerable to cancellation those registrations that are used primarily in the UK. Further, questions may arise from trademark license agreements that convey EUTM rights or are limited in scope to the EU. We will follow these developments and keep you informed.

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Topics: trademarks, EU, Brexit

Going Native - What You Need to Know about the FTC's Recent Guidance on Native Advertising

Posted by Mitchell Stein on May 6, 2016 at 5:02 PM

Digital advertisers innovate new techniques to reach customers at a speed that, for the most part, outstrips the ability of the US government to regulate. Every now and then, however, the Government lurches forward to provide truly useful guidance.

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Topics: advertising, FTC, native advertising

California Resale Royalty Act Claims Dismissed as Preempted by Copyright Law, Despite 1980 Ninth Circuit Holding to the Contrary

Posted by Nicholas O'Donnell on April 21, 2016 at 1:47 PM

Just three months after the Supreme Court denied certiorari review of last year’s Ninth Circuit decision finding California’s Resale Royalty Act unconstitutional under the Dormant Commerce Clause in part—but also valid in part—the U.S. District Court in Los Angeles has ruled the entire law invalid as preempted by copyright law. Critically, the opinion relies on last year’s Ninth Circuit ruling on the Commerce Clause issue to overrule a 1980 Ninth Circuit case that expressly rejected the idea that the law was preempted.

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Topics: California Resale Royalty Act, Copyright

Fowling Proprietor Gets Bonked -- Lessons in Avoiding Loss of Trademark Rights

Posted by Lawrence Robins on April 15, 2016 at 2:24 PM

Will Rogers once said “Letting the cat out of the bag is a whole lot easier than putting it back in.”  While he surely didn’t intend it that way, this is sage advice to incipient trademark owners. Consider, if you will, the “sport” of Fowling. 

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Topics: trademarks, Sports, USPTO

Panera and Great Harvest Argue over Tagline

Posted by Laura Stacey on April 13, 2016 at 3:08 PM

Panera Bread and the Great Harvest Bread Co. will not be breaking bread together anytime soon. To the contrary, Great Harvest recently filed a trademark lawsuit against Panera over Panera’s “food as it should be” campaign, which is meant to reflect Panera’s philosophy of clean ingredients and menus based on whole foods.   

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Topics: trademarks, USPTO

The Slants and the Future of Disparaging Trademarks

Posted by Mitchell Stein on March 31, 2016 at 12:12 PM

Trademark and copyright law are in a constant struggle with the right of free expression guaranteed under the First Amendment of the US Constitution. This is unavoidable.  Copyright laws were enacted to protect authors of copyrighted works from others using their protected artistic and creative works.  Trademark laws give the bearer of a registered trademark a  monopoly of sorts on a word, phrase, logo, or other brand identifier with respect to certain goods and services against other parties who, beyond mere copying, would use their marks in a manner that is likely to cause confusion among relevant consumers. Maintaining the balance between the rights of copyright and trademark owners on the one hand, and the public at large, however, is harder than it looks.

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Topics: the Lanham Act, Trademark Registration, The Slants

"Rime" Graffiti Case Against Moschino Survives Dismissal

Posted by Nicholas O'Donnell on March 22, 2016 at 11:45 AM

Last year street artist Joseph Tierney, better known as “Rime,” sued designer Moschino S.p.A. and its creative director, Jeremy Scott, for a variety of copyright and trademark claims based on the alleged use of Rime’s works in certain fashion lines. The presiding court has denied Moschino’s efforts to have the claim dismissed in a decision that provides an important, if implicit, endorsement of the rights of street artists under the Copyright Act, and of a novel theory under the DMCA. While some reports stated that the case was now going to trial, it is not there quite yet. It will now presumably head into discovery for the exchange of facts and information to see if there is in fact a need for a trial later. 

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Topics: Rime, Copyright, Moschino, Lanham Act

The Right of Publicity: How Much Control Do NFL Players Have Over Their Names?

Posted by Michael Palmisciano on March 8, 2016 at 2:22 PM

How much control should athletes have over their names? Not an unlimited amount, according to one recent court ruling.

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Topics: the Lanham Act, Copyright, Right of Publicity

Federal Circuit Rules ITC Cannot Stop Infringing Digital Files From Entering U.S.

Posted by Mitchell Stein on November 10, 2015 at 2:28 PM

In a decision that will have considerable interest for the entertainment, tech and 3D printing industries, the Federal Circuit, in a split decision in Clearcorrect Operating, LLC v. International Trade Commission, 2014-1527, today overruled an earlier ruling of the International Trade Commission, in which the Commission blocked the importation of digital files that would permit operators of U.S. 3D printing facilities to manufacture dental braces that infringed the patents on the well known “Invisalign” brand of clear braces.  The Federal Circuit concluded that the ITC’s power to block “articles” that infringed U.S. intellectual property rights was limited only to material things, and did not include digital transmissions.  The ITC decision gained attention because it signaled a potential new governmental interest in regulating internet traffic, perhaps even a way to provide additional intellectual property remedies for the entertainment and music industries.  This new avenue of enforcement, however, appears to be closed for now.

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Topics: ITC, Invisalign, International Trade Commission, Clearcorrect Operating, 3D Printing

Federal Circuit Rules ITC Cannot Stop Infringing Digital Files From Entering U.S.

Posted by Mitchell Stein on November 10, 2015 at 7:58 AM

In a decision that will have considerable interest for the entertainment, tech and 3D printing industries, the Federal Circuit, in a split decision in Clearcorrect Operating, LLC v. International Trade Commission, 2014-1527, today overruled an earlier ruling of the International Trade Commission, in which the Commission blocked the importation of digital files that would permit operators of U.S. 3D printing facilities to manufacture dental braces that infringed the patents on the well known “Invisalign” brand of clear braces. The Federal Circuit concluded that the ITC’s power to block “articles” that infringed U.S. intellectual property rights was limited only to material things, and did not include digital transmissions. The ITC decision gained attention because it signaled a potential new governmental interest in regulating internet traffic, perhaps even a way to provide additional intellectual property remedies for the entertainment and music industries. This new avenue of enforcement, however, appears to be closed for now.

The issue for the Federal Circuit was one of statutory construction. The legislation creating and empowering the ITC permits it to block infringing “articles.” The Federal Circuit interpreted the term “articles” to apply only to material things, and not digital transmissions. The court found this definition to be clearly expressed both with respect to the literal text, as well as the context in which the term “articles” was used within the statute. Because the digital files at issue were not articles, the ITC lacked jurisdiction to prevent their importation.

While it is too early to tell whether the Federal Circuit’s decision will be appealed to the U.S. Supreme Court, it would be a long shot to expect the Supreme Court to reverse a ruling on statutory interpretation here, where Congressional intent appears to be clearly expressed within the four corners of the statute.

As 3D printing becomes more prevalent and spreads to a wider range of industries, the need to fix this gaping hole in the U.S. border with continue to grow unless and until Congress takes action, either by amending the statute or passing additional legislation. Having an effective border strategy for dealing with transmission of infringing files is particularly important in situations where, as here, the manufacturing facilities to produce infringing products – 3D printers and the materials needed to make the infringing goods – can be moved with relative ease from location to location in order to avoid detection. The growth of 3D printing poses a threat that infringement and counterfeiting will be accomplished faster and more easily. A nimble and thoughtful response at all levels of government to adequately protect intellectual property owner’s rights under this changing landscape will be required.

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Topics: Infringement, Litigation

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Trending Trademarks provides comments and analysis on trademark issues affecting the fashion, high-tech, multimedia and consumer products industries.

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