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SerendIPity: Dykema's Intellectual Property Law Blog

Intellectual Property Law Blog

News and Analysis of Legal Issues Affecting Intellectual Property



Photo of SerendIPity: Dykema's Intellectual Property Law Blog Marsha G. Gentner
Senior Counsel
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Showing 10 posts by Marsha G. Gentner.

The Federal Circuit Rules § 2(a) of the Lanham Trademark Act is Unconstitutional

Coming as no surprise to anyone who attended or read the transcript of the en banc oral argument hearing in the case of In re Tam, No. 14-1203 (Fed. Cir. Dec. 22, 2015), the Federal Circuit Court of Appeals has ruled § 2(a) of the Lanham Trademark Act of 1946 violates the First Amendment on its face. The nine-judge majority limited its holding to § 2(a)’s prohibition on the registration of marks which “may disparage… persons, living or dead, institutions, beliefs or national symbols.” In doing so, the Court expressly overruled its longstanding precedent to the contrary, In re McGinley, 660 F.2d 481 (C.C.P.A. 1981). Two judges would uphold the constitutionality of § 2(a) in its entirety, and another would hold that § 2(a) is facially constitutional, but as applied to Mr. Tam in this particular case, violated his First Amendment rights. Read More ›

Have You Done a Domain Name Audit? An IP Compliance Tool to Bring Budget Dollars in, Instead of Paying Them Out

At a recent panel discussion, IP counsel of a major corporation recounted that he had done an inventory of his company’s domain names, and found over 5000 of them. He culled the list to the ones it made business (and legal) sense to have, and got rid of the rest, saving what must have been thousands of dollars—he didn’t say how much—a year. Read More ›

What Do the Sons of Confederate Veterans, the Washington “Redskins,” and an Asian-American Boy Band Have in Common?

Check out the Decision in Pro-Football, Inc. v. Amanda Blackhorse, et al, No. 1:14-cv-01043 (ED Va. July 8, 2015)

The big trademark news, of course, is that a federal judge now has weighed in, ordering the U.S. Patent and Trademark Office to cancel six trademark registrations of Pro-Football, Inc. (the Washington, D.C. NFL team) containing the word “redskins.” Read More ›

The Waco Biker Brawl – Was It a Deadly Trademark Dispute?

When people ask me if I like being a trademark lawyer, I often respond: “Well nobody dies and nobody goes to jail over a trademark dispute.” Looks like I was wrong. Read More ›

The Supreme Court’s Holding on the Preclusive Effect of TTAB Proceedings: Is it the End or Just the Beginning?

The Supreme Court has finally resolved an issue that has been kicking around for some time: whether a final decision of the Trademark Trial and Appeal Board (“TTAB”) of the U.S. Patent and Trademark Office in a disputed proceeding over registration can ever have preclusive effect in a subsequent court action which is not an appeal of that proceeding. The answer is yes, if the established elements of issue preclusion are met. B&B Hardware Inc. v. Hargis Industries Inc. et al. Both Justice Alito, in his opinion for the Court, and Justice Ginsburg in her brief concurrence, pointed out that “for a great many registration decisions issue preclusion obviously will not apply.” Still, it seems likely that a great deal of litigation over preclusion is yet to come – the Supreme Court decision is far from “conclusive.” Read More ›

The “Elephant in the Room” in the Supreme Court’s Recent Hearing on the Jury’s Role in Trademark Infringement Cases

To the extent you can rely on oral argument (admittedly, a dicey proposition), it seems a majority – if not all – of the Supreme Court Justices are poised to hold that a jury plays at least some significant role in determining the issue of trademark tacking. On December 3, 2014, the Supreme Court heard arguments in Hana Financial, Inc. v. Hana Financial, et al, No. 13-1211. Hana presents the issue of whether a party may “tack on” prior use of a somewhat different mark to its present mark, to claim exclusive trademark rights vis-à-vis the intermediate mark of an alleged infringer, is a question for the jury. Read More ›

Note to Musical Performers—You Are Only “Entertaining” When You Are Performing Live

All of you VINE Stars—you may think you are entertaining with your online performances, but according to the U.S. Patent and Trademark Office (PTO) you are not. In a decision denying an ex parte appeal, the PTO’s Trademark Trial and Appeal Board (TTAB) ruled that providing musical performances via internet streaming and webcasting sites does not qualify as entertainment services. In re Titan Music, Inc., Serial No. 77344197 (Aug. 20, 2014). Read More ›

"And They're Off!" — California Chrome Merchandising Gets a Fast Start Out of the Gate

Less than two weeks after his spectacular Kentucky Derby win, and two days before he completed the second leg of the Triple Crown, California Chrome’s merchandising business is off and running. On May 15, 2014, Denise and Perry Martin, and Steven and Carolyn Coburn (d/b/a DAP Racing) filed an application to register their horse’s name – CALIFORNIA CHROME – as a U.S. trademark. Read More ›

Supreme Court Rules Laches Defense Unavailable to Bar Claim Falling Within Copyright Act's Three-Year Limitations Provision: PETRELLA v. METRO-GOLDWYN-MAYER, INC.

The laches defense cannot defeat a copyright infringement claim timely filed within the three-year limitation period of the Copyright Act, according to the holding of the Supreme Court in Petrella v. Metro-Goldwyn-Mayer, Inc., No. 12-1315 (5/19/2014).  Read More ›

IKEA v AKEA: TTAB Says "IKEA" Does Not Qualify as a Famous Mark for Purposes of Dilution Claim—At Least Not as of 2009

In a recently issued decision, the U.S. Patent and Trademark Office Trial and Appeal Board found that IKEA was not a sufficiently “famous” mark, to support a dilution claim under §43(c) of the Trademark Act, 15 U.S.C. §1125. Inter IKEA Systems B.V. v. Akea, LLC, No. 91196527 (TTAB May 2, 2014). More precisely, the TTAB ruled that the record before it did not prove, by a preponderance of the evidence, that IKEA had achieved famous status as of the filing date of the opposed (intent to use) AKEA application. The TTAB held that this was the critical date, because §43(c) only provides a cause of action against use of a mark commenced after the mark allegedly diluted became famous. The TTAB did not consider, or pass judgment on, whether the IKEA mark could now support a dilution claim. Read More ›