Trending Trademarks

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

With Victory Over MTM, Amazon Can Still Use Brand Name Searches

Posted by Valerie Sussman on October 28, 2015 at 10:02 AM

When shopping for watches on Amazon.com, you might be surprised to find that a search for the luxury military-style watch “mtm special ops” brings you to a list of watches designed by competitors of Multi Time Machine, Inc. (MTM). According to the 9th Circuit Court of Appeals, this practice does not infringe on MTM’s trademark rights.

The 9th Circuit appellate panel reversed its own decision In Multi Time Machine, Inc. v. Amazon.com, Inc.; Amazon Services, LLC, published last Wednesday. In issuing summary judgment in favor of Amazon, the court held that no reasonable trier of fact could conclude that a likelihood of confusion existed based on the layout of Amazon’s search results page.

From the watchmaker’s perspective, Amazon’s search results created “initial interest confusion” that generated awareness of competitors’ products. Initial interest confusion may damage sales by taking advantage of a trademark’s good will and thus could create a cause of action for trademark infringement. MTM asserted that such confusion was even more likely because Amazon’s search results page did not include a message such as “no search results found” to suggest (accurately) that it does not sell MTM watches.

The court concluded that there was no likelihood of initial interest confusion because the non-MTM watches were “clearly labeled by Amazon” such that a “reasonably prudent customer accustomed to online shopping” would not be deceived. The court reasoned that the buyer could see clear images of the watches next to the boldly-lettered brand name (which Amazon opportunely included two times next to each product – for example, “Luminox Men’s 8401 Black Ops Watch by Luminox”). Even a couple of books appeared in the search results for “mtm special ops,” which as noted by the court, made it even less likely that a reasonably prudent online shopper would be confused.

Because the decision does not forbid online retailers from using proprietary product names as keyword terms, it seems likely that Amazon and other online marketplaces will continue to capitalize on brand name searches. Still, consumers seeking to purchase an authentic MTM watch should be advised that they will not find it on Amazon.

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Topics: Internet, Trademark, Litigation, Decisions, Consumer Products

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

Rah-Rah-©-Boom-Bah! Cheerleading Uniform Designs Win Copyright Protection

Posted by Natalie Lederman on September 3, 2015 at 11:49 AM

Though the U.S. Copyright Act does not currently offer protection for functional aspects of apparel designs, copyright protection does extend to purely decorative features of clothing that can exist independent of their functional aspects. This murky area of copyright law, known as the “Conceptual Separability Doctrine”, was the focus of a recent decision by the Sixth Circuit in Varsity Brands et al. v. Star Athletica. The court ruled that the decorative chevron designs on cheerleading uniforms are eligible for copyright protection.

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

Is the Door to Registering “Scandalous” and “Smutty” Trademarks About to Open?

Posted by Michael Palmisciano on April 29, 2015 at 6:02 AM

In a long-awaited move, the U.S. Court of Appeals for the Federal Circuit is set to consider whether the Lanham Act’s Section 2(a) bar to registration of disparaging marks violates the First Amendment.

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Topics: Trademark, Decisions, Registrations

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

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