Trending Trademarks

Mitchell Stein

Mitchell C. Stein is a partner in the Intellectual Property Group and Litigation Department of our New York office, and an editor of the firm's Trending Trademarks blog. Mr. Stein focuses his practice on litigation and licensing related to trademarks, software, e-commerce, copyrights, and rights of publicity. He has represented companies across a wide range of industries, including software development, e-commerce, biotech, life sciences, medical devices, pharmaceuticals, sports, entertainment, gaming, fashion, and food and restaurants.
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Recent Posts

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

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

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

NANOTAINER vs. MICROTAINER: Theranos Battles BD Over Trademarks, but FDA Draws First Blood

Posted by Mitchell Stein on November 9, 2015 at 3:26 PM

Medical equipment manufacturer Becton, Dickinson and Company (“BD”), has been making its MICROTAINER blood collection containers since 1945. According to The New York Times, the MICROTAINER containers are a $25 million a year business for BD. It was not surprising, therefore, that BD called its trademark lawyers when Silicon Valley start-up darling Theranos, a company now valued at around $9 billion, applied on an intent-to-use basis to register the name NANOTAINER in connection with blood collection containers. Theranos and its products have gained wide attention based on claims that Theranos could perform numerous medical tests quickly and inexpensively using a tiny sample of blood from a finger prick, rather than tubes of blood drawn from the arm.

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Topics: Becton Dickinson And Company, FDA, NANOTAINER, BD, MICROTAINER

NANOTAINER vs. MICROTAINER: Theranos Battles BD Over Trademarks, but FDA Draws First Blood

Posted by Mitchell Stein on November 9, 2015 at 7:15 AM

Medical equipment manufacturer Becton, Dickinson and Company (“BD”), has been making its MICROTAINER blood collection containers since 1945. According to The New York Times, the MICROTAINER containers are a $25 million a year business for BD. It was not surprising, therefore, that BD called its trademark lawyers when Silicon Valley start-up darling Theranos, a company now valued at around $9 billion, applied on an intent-to-use basis to register the name NANOTAINER in connection with blood collection containers. Theranos and its products have gained wide attention based on claims that Theranos could perform numerous medical tests quickly and inexpensively using a tiny sample of blood from a finger prick, rather than tubes of blood drawn from the arm.

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Topics: Trademark, Litigation

The New Google Logo: A New Kind of Mark for the Digital Era

Posted by Mitchell Stein on September 8, 2015 at 11:11 AM

On September 1, 2015 Google revealed to the world its first major logo update in 16 years. The iconic Google word mark has been transformed to a new image, using Google’s new proprietary "Product Sans" font:

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Topics: Internet, Trademark, Multimedia

Supreme Court’s Hana Financial Holding Could Increase Costs To Assert Trademark Tacking Claims

Posted by Mitchell Stein on January 22, 2015 at 8:01 AM

In a unanimous decision, the U.S. Supreme Court held this week that trademark tacking is an issue of fact to be addressed by the jury, and not a question of law to be addressed by judges.

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Topics: Trademark, Decisions

Bedeviled University of Texas Sues Over Use of Heavy Metal “Horns”

Posted by Mitchell Stein on January 29, 2013 at 11:04 AM

In the world of college sports, there is perhaps no hand gesture more famous than the University of Texas’s “Hook ‘em Horns.” For those unfamiliar, the gesture consists of a hand gesture with the palm facing forward, the index and pinky extended, and the middle and ring fingers held down by the thumb. That exact gesture is also known, in heavy metal music circles around the world, under many names, including “Metal Horns.” Metals Horns appears to have been first used at concerts as early as the early-mid 1970’s, and became popularized by the late Ronny James Dio starting in 1979, when Mr. Dio joined as the front man for Black Sabbath.

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Topics: Sports, Infringement, Litigation, Dilution

Trademarks for Suckers: Federal Circuit Refuses to Register Trademark Based on Sexual Double Entendre

Posted by Mitchell Stein on December 20, 2012 at 7:21 AM

There is, it turns out, a limit to as how far U.S. law will tolerate the registration of provocative and sexually suggestive trademarks. In a decision issued on December 19, 2012, the United States Court of Appeals for the Federal Circuit in In re Fox, 2012-1212 (Fed. Cir. Dec. 19, 2012) upheld the Trademark Office’s refusal to register the name COCK SUCKERS for rooster-shaped chocolate lollipops, on the basis that one of the meanings in the mark’s crude double entendre was “immoral and scandalous.” Section 2(a) of the Lanham Act expressly prohibits the registration of a mark that “consists of or comprises immoral, deceptive or scandalous matter.” 15 U.S.C. § 1052(a).

In this matter, there was no doubt that the applicant, Ms. Marsha Fox, was knowingly exploiting the sexual double entendre to her commercial advantage. To play up the non-sexual interpretation of the name, however, she packaged her products at retail in small replicas of egg farm collecting baskets, to suggest a country farmyard motif. She also claimed that the primary consumer targets for her product were fans of the University of South Carolina and Jacksonville State, both of which use gamecocks as their mascot for athletic events. At no point in the proceedings before the Trademark Office or the First Circuit, however, did she contest that her mark had a blatant sexual connotation.

The issue of legal interest presented by this case is the Federal Circuit’s ruling that where, as here, a trademark has two meanings -- a “literal meaning” that is not scandalous (rooster lollipops) and an implied one, that clearly is scandalous, it is appropriate for the Trademark Office to refuse registration of that mark if a “substantial composite of the general public” perceives the mark, in context, to have a vulgar meaning. In the case, Fox had admitted that the intended humorous effect of the mark depended upon consumers grasping its sexual connotations, so the court based its decision on the admission, and did not address what evidence would satisfy such a test. The court rejected Fox’s argument that whether a mark was scandalous depended only on the literal meaning of the mark.

Ms. Fox likely would have been more successful if her mark had not been a mere double entendre, but a mark capable of more than two meanings. In a 1994 decision, In re Mavety Media Group, Ltd., 33 F.3d 1367 (Fed. Cir. 1994), the Federal Circuit reversed the Trademark Office’s refusal to register BLACK TAIL for an adult entertainment magazine featuring photographs of naked and scantily-clad African American women. In so doing, the Federal Circuit noted that TAIL had at least three definitions: (1) the vulgar definition of “female sexual partner,” (2) the “non-vulgar” (really?) definition of “a woman’s rear end,” and (3) the non-vulgar definition of “a type of evening coat worn by men on formal occasions.” Because TAIL had multiple definitions, only one of which was vulgar, the Federal Circuit ruled that the mark was ambiguous, and therefore capable of registration.

Also, Ms. Fox may have had more success if her mark created a double-entendre through use of initials. As of this writing, there appear to be eight federally registered trademarks that consist of, or use, the acronym FCUK. How the Fox decision squares with these registrations is far from clear.

Ms. Fox can take solace in the fact that, as noted by the Federal Circuit, the bar to registration does not prohibit her from using her brand name as an unregistered trademark or continuing to sell her product. Presumably, the publicity from this decision will help in that regard. For her next line of products, however, if she wants to register her mark, perhaps she should consider reconfiguring her pops into the shape of tropical birds and selling them under the name COCKATOO SUCKERS.

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Topics: Litigation, Food & Beverage, Registrations

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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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