Posts in Trademark

In 2016 social media users reached 2.3 billion. With an audience made up of consumers, competitors and industry influencers, social media is a melting pot of opportunity and risk. Social platforms have quickly become a go-to platform for engaging with customers. If used correctly, companies have the potential to build an online persona that stands out and drives commercial success… When big brands enforce their trademark rights against potentially infringing smaller entities, the David-and-Goliath-type battle can help to alienate the consumer market. Brands such as M&Ms are now using online personas – developed on social media – to gently enforce trademark rights.

Eight in ten C-level executives believe trademark infringement of their marks is on the rise… Despite their feeling that trademark infringement is on the rise, 66% of organizations stated they had plans to launch new marks within the next year, and 80% said they would likely launch even greater numbers if the trademark clearance process were simpler… Clearance has always mattered, but it matters a lot in today’s rapidly evolving trademark ecosystem. Not only are brand owners increasingly focused on clearing brands across multiple channels in multiple regions, but as more and more marks are adopted and registered, the risk of infringement and dilution is also likely to increase. While protectability may be important from a legal standpoint, 45% of polled executives still indicated competitive positioning was most important to them when adopting a new mark. Another 41% indicated they placed value on whether a mark is “unique.” In the United States, protectability was cited by organizations as the third most important factor for a new mark – after competitiveness and uniqueness. Other mark attributes executives signaled as important included global relevance, versatility and timelessness.

On March 27th, 1997, the 9th Cir. decided to affirm a preliminary injunction prohibiting the publication and distribution of The Cat NOT in the Hat!, a parody of the O.J. Simpson murder trial told in the style of Dr. Seuss… Geisel had passed in 1991 but Dr. Seuss Enterprises filed a copyright and trademark infringement suit against Penguin and Dove seeking the injunction before the work was published. Seuss alleged that The Cat NOT in the Hat! misappropriated protected elements of copyrighted works, infringed upon six unregistered trademarks and one registered trademark and diluted the distinctive quality of the Seuss marks. On March 21st, 1996, the injunction sought by Seuss was granted in district court, enjoining the distribution of 12,000 books, which were published at a cost of $35,000.

The makers of TRX fitness and training equipment, was awarded more than $6.8 million in damages after a jury verdict finding willful patent infringement by San Carlos, CA-based Woss Enterprises LLC. The lawsuit surrounded allegations that Woss infringed upon patents covering Fitness Anywhere’s suspension trainer equipment. The jury verdict included a finding of willful infringement of patents asserted in the case. The case was tried and decided in the U.S. District Court for the Northern District of California (N.D. Cal.).

The Supreme Court heard oral argument on the cloudy Wednesday morning of January 18, 2017. Although the Justices posed tough questions and intricate hypotheticals to both sides, the tone of each Justice’s questions and their individual jurisprudences indicate an even 4-4 split, with Justices Breyer, Ginsberg, Kagan, and Sotomayor favoring the USPTO, and Justices Alito, Kennedy, Thomas, and Chief Justice Roberts favoring Tam. Of course, oral argument is often shaky, at best, when predicting the outcome of a case, especially one with such potential for a drastic overhaul of a body of law… Although no one can know for certain the outcome of Lee v. Tam, one consequence that appears very likely is that, if the Court does rule in favor Tam, it would strike the entirety of Section 2(a), not just the portion prohibiting disparaging marks that forms the central issue of the case. John C. Connell, counsel for Tam, went so far as to call that result “inevitable” in response to Justice Ginsberg’s question on the topic.

The Supreme Court hears oral arguments in a case that could create venue limitations on patent infringement actions. A major Korean consumer tech firm files its first patent infringement suits it has ever filed in the U.S. Chinese courts overturn a ban on a major American-designed smartphone. President Trump taps Jared Kushner to lead a new innovation office within the White House. And Marvel wins a partial summary judgment in a copyright dispute relating to Iron Man and whether the company stole the familiar Iron Man suit from another comic book character.

Meowingtons is seeking to prevent Zimmerman from using a series of marks employing the term “MEOWINGTONS” as well as the destruction of all physical and digital goods using those marks, including websites and social media profiles. Meowingtons also seeks a declaratory judgment that it is the senior user of the “MEOWINGTONS” mark… This action arise out of a petition for cancellation filed by Zimmerman near the end of last December at the Trademark Trial and Appeal Board (TTAB). Zimmerman sought the cancellation of U.S. Trademark Registration No. 4711265, filed July 2014 to cover the use of the “MEOWINGTONS” mark for retail store and online retail store services featuring cat themed accessories and clothing.

The highest federal court in the United States declines to hear an appeal from tech giants on applying common sense to patent validity challenge proceedings. A group of pharmaceutical giants duke it out in a patent battle over a topical ointment for treating acne. The capital’s district court hears arguments in a case about compulsory copyright licenses. Also, President Trump signs a bill authorizing billions in funding for the nation’s space agency.

A well-known patent monetization firm jumps back into the brokered patent market in 2016’s fourth quarter. A federal judge in New York allows arguments over whether American movie star Marilyn Monroe has become too generic for any trademark rights to continue. Sony files a patent infringement lawsuit over set-top boxes. Forever 21 files a declaratory judgment action calling Adidas a trademark bully. Cher wins a copyright dismissal over claims her 2013 album cover was infringing. The Supreme Court gears up to hear oral arguments in a case that examines the limits of the patent exhaustion doctrine. Plus a very busy week on Capitol Hill.

Donald J. Trump, the 45th President of the United States (POTUS), managed to get elected based at least in part on his real or perceived success as a businessman. In the last dozen years or so, he achieved this reputation in part by licensing his “Trump” brand name—a kind of intellectual property (IP)—to third parties… “It may come as a surprise to most people that many of Trump’s buildings, resorts and golf clubs aren’t even owned by him,” says Sonia Lakhany, trademark attorney and owner, Lakhany Law, PC, a national award-winning trademark law firm. “They just bear his name for branding purposes. In return, Trump collects fees for the use of his brand, without ever investing a dime into the actual projects.”

A growing Chinese consumer electronics firm acquires a patent portfolio that makes them the fourth global producer of smartphones with the capacity to develop semiconductors in-house. The Supreme Court denies writ in a case, leaving in place a lower court’s decision on plaintiff standing in asserting foreign trademarks in the U.S. The Federal Circuit upholds patent invalidations levied against IP monetization firm Intellectual Ventures. Also, songwriter industry groups lobby the Copyright Office to adjust royalty fee structures in light of the growth of online streaming media.

There are several different forms of intellectual property rights available in the United Kingdom, each with its own formality, level of protection, and duration period. It is crucial that any individual who creates a product, or who believes that they would benefit through protecting their intellectual property ensures that they follow the correct procedure… Many individuals will incorrectly assert a claim for copyright infringement. However, copyright infringement is a niche protection right and is only afforded to ‘artistic output’. No formality is required to register this right in the United Kingdom, which is different than U.S. practice.

The most recent notorious markets report from the USTR seems to have further galvanized Alibaba into taking action to reduce the number of counterfeit products sold on its e-commerce platforms. In early January, Alibaba filed its first pair of lawsuits targeting retailers selling fake Swarovski watches on the company’s e-commerce platforms. Then in late February, Alibaba released an official corporate statement in which it blamed China’s ambiguous counterfeiting laws for contributing to the problem… Alibaba’s statement goes so far as to equate counterfeiting to drunk driving in terms of how strongly such actions should be criminalized.

Attorneys and non-attorneys love to make fun of these overly aggressive and unreasonable cease and desist letters. Online, a well-written and funny response can go viral, bringing much unwanted attention to the trademark holder and undermining the purpose of endeavor… The parody website ThinkGeek launched a fake product on April Fool’s Day in 2010 called Canned Unicorn Meat. The tag line read: Pate is passe. Unicorn, the new white meat. The National Pork Board, the trade group for pork farms, owns the trademark for “the other white meat” and completely missed the joke. They penned a 12-page cease and desist letter to ThinkGeek.

Another covered business method review is overturned by the Federal Circuit because the Patent Trial and Appeal Board instituted a CBM on a patent that was not a CBM patent. China leads the world not only in stealing digital images protected by copyright but also in terms of trademark applications filed. The Catholic Church starts to take action in protecting its own intellectual property. Also, Alphabet’s self-driving car subsidiary files a lawsuit including patent and trade secret claims against ride sharing giant Uber.