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Dykema Gossett PLLC

SerendIPity: Dykema's Intellectual Property Law Blog

Intellectual Property Law Blog

News and Analysis of Legal Issues Affecting Intellectual Property



Showing 18 posts in Trademark.

Court Rules Humor is Not Louis Vuitton’s Bag

On January 6, 2015, the United States District Court for the Southern District of New York awarded summary judgment against self-described “active and aggressive” trademark enforcer Louis Vuitton, and in favor of My Other Bag, Inc. (“MOB”), a producer of canvas tote bags which parody luxury handbags. In doing so, the Court admonished Vuitton and other prominent trademark owners to “take a joke.” Read More ›

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 ›

Cuba and Your Global Trademark Strategy

After 54 years, the American flag has once again been raised over the American Embassy in Cuba. And although American tourism in Cuba remains off limits, the list of approved travel to Cuba has been expanded to include humanitarian projects, religious activities, educational activities (aka “people-to-people” trips), professional research, and participation in athletic or public performances. Much debate still exists over whether the travel embargo will ultimately be lifted, but that isn’t stopping related activities. 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 ›

Thoughts on Trademark Bullying

I’ve been a practicing trademark lawyer for more than 25 years and have represented many companies, large and small, in a wide variety of industries, as plaintiffs and defendants, applicants and opposers, and petitioners and registrants. More than ever before, and particularly in the past several years, the public and news media have begun using the term “Trademark Bullying” whenever they believe a trademark owner has used its trademark rights to prevent a smaller company from doing business under a trademark. Social media has helped recipients of demand letters and lawsuits spread the David and Goliath “bullying” message, and in some cases, the negative public-relations backlash for the brand owners has resulted in a withdrawal of the claim. The enforcement approaches and strategies taken by many household brands, including Starbucks, Facebook, Specialized Bicycle Components, Monster Energy Drink, and Redbull, have all come under the microscope. 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 ›

Third Circuit Expands Octane Fitness Standard to Trademark Cases

The Third Circuit in Fair Winds Sailing, Inc. v. Dempster, __ F.3d __ (3d Cir. Sept. 4, 2014) has determined that the U.S. Supreme Court’s Octane Fitness ruling on awarding attorneys’ fees in patent cases should apply equally to trademark cases.  For over twenty years the Third Circuit utilized a two-step test that required a finding of culpability, as well as exceptional circumstances, before assessing attorney fees in trademark suits. In holding that the test no longer applies, the Third Circuit concluded that the Supreme Court sent a “clear message” in Octane Fitness that the decision should also affect trademark law. 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 ›