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

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 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

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, 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., 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

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

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

Graffiti Litigation Update: Settlements and Procedural Wrangling

Posted by Nicholas O'Donnell on December 5, 2014 at 10:22 AM

Back in October, we surveyed some developments in lawsuits over public art and protection available under copyright law in graffiti art. There has been some movement, and other developments, in these cases.

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Topics: Trademark, Copyright, Litigation

In Mile-High Trademark Infringement Fight, Hershey Bests Colorado Marijuana Edibles Company

Posted by Michael Palmisciano on October 29, 2014 at 6:33 AM

Just in time for Halloween, the Hershey Company has settled its trademark infringement lawsuit against a marijuana edibles company that sold candy closely resembling several of Hershey’s iconic brands.

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Topics: trade dress, Litigation, Food & Beverage, Dilution

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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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