Trending Trademarks

Lawrence Robins

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Trumping Chinese IP Thieves

Posted by Lawrence Robins on November 16, 2016 at 4:19 PM

The Wall Street Journal article linked below highlights the continuing peril in ignoring the Chinese market in the early stages of brand development.  Briefly, Donald Trump was forced to engage in protracted and costly legal proceedings in order to register the TRUMP brand for real estate agency services.   As is common, a Chinese national previously registered the TRUMP brand, almost surely in anticipation that someday the real Donald Trump would come along and be forced to pay dearly for the right to use his own name.  Donald being Donald, he opted to fight rather than pay.  However most trademark owners have neither the resources nor the will to fight such a battle.

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Topics: China, Trademark, Trademark disputes

Update on Varsity Brands et al v. Star Athletica

Posted by Lawrence Robins on November 2, 2016 at 3:07 PM

Back in September 2015, we wrote about Varsity Brands et al. v. Star Athletica after the Sixth Circuit ruled that the decorative chevron designs on cheerleading uniforms are eligible for copyright protection

The case has gone all the way to the Supreme Court, which heard oral arguments on October 31. Sullivan & Worcester Partner Larry Robins weighed in on the implications of the case in the recent Bloomberg BNA Patent, Trademark & Copyright Journal article below. 

Read Bloomberg BNA Article

Read about the Sixth Circuit Decision


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Topics: Sports, Supreme Court, Copyright, Litigation, Decisions, Fashion, Consumer Products

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

PETA Thinks Monkeys Can Own Copyrights

Posted by Lawrence Robins on September 24, 2015 at 6:11 AM

Last August we wrote about a dispute between photographer David Slater and the Wikemedia Foundation over what is known as “The Monkey Selfie.” Because we’re brave, the photo appears again in this post. At that time, the Copyright Office released a public draft of the Third Compendium of U.S. Copyright Practices, in which it took the explicit position that photographs taken by monkeys are not copyrightable subject matter because they are not “the fruits of intellectual labor that are founded by the creative powers of the mind.”

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Topics: technology, Infringement, Internet, Copyright

Shufflin’ Ain't Hustlin’ When It Comes to Copyright Law

Posted by Lawrence Robins on September 17, 2015 at 4:09 AM

Back in March we wrote about Taylor Swift’s efforts to register as trademarks certain lyrics and phrases related to her 1989 album and world tour. Those applications remain pending in the U.S. Patent and Trademark Office. In the meantime, dance rap duo LMFAO just obtained summary judgment in its favor on a copyright infringement claim brought by rapper Rick Ross over merchandise bearing the phrase “Everyday I’m Shufflin’.” Ross claimed that the phrase used on merchandise infringed the copyright in the musical composition “Hustlin,’” which consists of a repeated refrain of the phrase “everyday I’m hustlin’” and the words “hustle” and “hustlin’.” Ross’ claim boiled down to this: the copyright in the musical composition as a whole also covers the oft-repeated phrase. Or to put I more simply, Ross claimed copyright in the phrase “Everyday I’m Hustlin’.” As a longtime copyright lawyer, I was LMFAO when I learned that the case got as far as it did. The case is William L. Roberts, II, et al. v. Stefan Kendal Gordy, et al.

It is basic, black letter copyright law that words and short phrases are not copyrightable subject matter and the court ruled accordingly. Furthermore, as discussed in detail in the court’s opinion, there have been more than a few prior cases that applied this rule to song lyrics, raising the question of why the Ross team thought this case was different. Ms. Swift obviously understood the different treatment accorded short phrases or slogans under trademark and copyright law and, accordingly, sought protection for her phrases as trademarks. Mr. Ross relied on copyright instead with predictable results.

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Topics: Infringement, Trademark, Copyright, Litigation, Decisions, Multimedia

Perhaps the Door to Registration of Scandalous and Smutty Trademarks Will Remain Closed After All, At Least to the Washington Redskins

Posted by Lawrence Robins on July 8, 2015 at 9:47 AM

Back in April, my colleague Mike Palmisciano published a blog post noting the decision of the Court of Appeals of the Federal Circuit to rehear In re Tam en banc in order to address the sole issue of whether the bar to registration of disparaging marks in 15 U.S.C. § 1052(a) violates the First Amendment. Mike noted that a decision that Section 2(a) does violate the First Amendment would open the door to registration (or maintenance) of marks such as REDSKINS, KHORAN, and SQUAW VALLEY. Now it appears that Judge Gerald Bruce Lee of the U.S. District Court for the Eastern District of Virginia may have knocked out the First Amendment argument once and for all.

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Topics: Sports, Trademark, Litigation

A Post About Beer! - Kölsch to be Precise

Posted by Lawrence Robins on June 11, 2015 at 10:03 AM

Not long ago a colleague brought to my attention a “mea culpa” published on the Down The Road Beer Company website, Apparently the brewery ran into a bit of trouble with the Alcohol and Tobacco Tax and Trade Bureau, the federal agency tasked with, among other things, policing product labeling for products containing alcohol. In designing a label for its “Down The Road Rasenmäher Kölsch,” the brewery broke the rules by depicting the character “Hans Mowermann” operating a power lawn mower while holding up a large mug of, presumably, Down The Road Rasenmäher Kölsch. As we all (should) know, operating machinery while under the influence of alcohol ist verboten!

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Topics: Trademark, Registrations, Consumer Products

Supreme Court Grants Preclusive Effect to Trademark Trial and Appeal Board Rulings in Limited Circumstances

Posted by Lawrence Robins on March 24, 2015 at 12:10 PM

Today the Supreme Court announced its decision in B&B Hardware, Inc. v. Hargis Industries, Inc. B&B Hardware (B&B) sells a fastener product in the aerospace industry under the trademark “Sealtight,” which it registered in 1993. Hargis Industries (Hargis) sells self-drilling screws under the mark “Sealtite” in the construction industry. After Hargis applied to register its mark in 1996, B&B opposed the application successfully and also sued Hargis for infringement. In that action B&B argued unsuccessfully that Hargis was precluded from litigating the likelihood of confusion issue due to the prior TTAB ruling. The Eighth Circuit affirmed the District Court’s holding.

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Topics: Infringement, Trademark, Litigation, TTAB Proceedings

Trademarks and Taylor Swift: Will She License Merchandise or Just Keep Others at Bay?

Posted by Lawrence Robins on March 6, 2015 at 6:22 AM

Does Taylor Swift plan to become the Martha Stewart of the music world?

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Topics: Trademark, Multimedia

Fabric So Rich Even Xerox® Can’t Copy It

Posted by Lawrence Robins on February 4, 2015 at 10:04 AM

Knock-off designs remain the bane of the designer’s existence and U.S. law still provides little in the way of intellectual property protection. While many fabric designs meet the threshold of creativity necessary for protection, clothing designs themselves are functional and not subject to copyright or design protection. Thus, a new design that debuts on a Paris runway in January is likely to appear in knock-off form in a discount retail outlet only a short time later.

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Topics: Infringement, Copyright, Fashion

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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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