Posts in Trademark

The American Bar Association (ABA) filed an amicus brief on February 3 with the U.S. Supreme Court asking the Court to clarify issues related to the application of the Lanham Act to trademark disputes that cross international borders. The ABA filed the brief in the Abitron Austria GmbH v. Hetronic International, Inc. trademark case, in which the U.S. Court of Appeals for the Tenth Circuit affirmed a $90 million damages award for trademark infringement based on infringement that occurred almost entirely outside of the United States.

Brooks Sports, a sports apparel company that was sued by Puma SE and Puma North America, Inc. (for patent and trademark infringement in Indiana, won its motion to transfer the case to a new district court on January 20. Judge Richard L. Young of the United States District Court for the Southern District of Indiana ruled Friday that the case will be transferred to the Western District of Washington. Brooks Sports’ headquarters is based in Seattle, Washington. Brooks argued that moving the case closer to its base would be convenient for both parties as well as witnesses. Judge Young agreed and cited Puma’s lack of presence in Indiana as another supporting reason to move the case to Washington.

Last November, the U.S. Supreme Court granted a petition for writ of certiorari filed by famed whiskey brand owner Jack Daniel’s Properties. The petition filed by Jack Daniel’s appealed the U.S. Court of Appeals for the Ninth Circuit’s March 2020 ruling that a “Bad Spaniels” dog toy marketed by VIP Products was an expressive work entitled to First Amendment protections against trademark infringement liability under the Rogers test. On January 18, a series of 16 amicus briefs were filed with the Supreme Court, the vast majority of which urged the nation’s highest court to reverse the Ninth Circuit’s ruling and limit the application of the Rogers test to clearly artistic works and exclude consumer products that happened to have some humorous expression. Several amici also pushed back on the Ninth Circuit’s ruling that VIP Products’ use of Jack Daniel’s marks was noncommercial.

At the U.S. Patent and Trademark Office’s (USPTO) Women’s Entrepreneurship (WE) event in Naples, Florida, on Wednesday, January 18, USPTO Director Kathi Vidal announced that the Office has a new tool, called the Intellectual Property (IP) Identifier, intended to assist those “less familiar with IP” in identifying what IP they have and what rights they need to protect it. The tool also provides basic information on patents, trademarks, trade secrets and copyright. Vidal said in a press release Wednesday that anyone “considering starting a business or trying to grow one” should use the tool and that “it’s another example of our work to bring more people into the innovation ecosystem to increase American competitiveness, grow the economy, and solve world problems.” 

According to new research released by Corsearch, a significant number of websites engaging in piracy and counterfeiting use Cloudflare’s Content Delivery Network (CDN) services. Cloudflare was detected as providing services to websites that infringed trademarks and copyright six times more than the next service provider. 49% of the websites Corsearch flagged for content piracy used Cloudflare in addition to 23.5% of websites flagged for offering counterfeit goods. Additionally, Corsearch notifies Google when it believes a website should be demoted in its search engine due to infringing trademarks or copyright. When Corsearch analyzed this data, it found 71% of these websites used Cloudflare’s services.

Engagement in proactive IP litigation by global companies is the bedrock of trademark enforcement, and Adidas is no stranger to this strategy. Since 2008, this athleisure accessories manufacturer has consistently protected its intellectual property by signing over 200 settlement agreements and fighting more than 90 court battles. Most recently, on  January 12, 2023, Adidas’s efforts to sue Thom Browne Inc., a Zegna subsidiary, for trademark infringement of its ‘three-stripes logo’ was foiled. The damages claim of around $7.8 million, or £6.4 million, backfired on the German sportswear giant when it was denied by an eight-person Manhattan jury.

Last week, the United States Patent and Trademark Office (USPTO) announced that it is seeking comments from the public on the draft of the organization’s 2022-2026 Strategic Plan. According to a press release, the plan sets five goals for the organization: Spur U.S. innovation and global competitiveness; promote IP rights; promote IP protection against new and persistent threats; bring innovation to positive impact; and maximize agency operations.

“Non-fungible tokens (NFTs),” “blockchain,” “metaverse,” “web3,” and “artificial intelligence (AI)” are buzzwords that solicited significant discussion and development in the area of intellectual property (IP) law in 2022. This overview covers five key topics in IP law that affected the growth and mainstream adoption of these emerging technologies last year.

It’s that time again. As 2022 has come and (almost) gone, it’s time to look back at the exciting grants and surprising denials of certiorari petitions involving patent and trademark matters by the Supreme Court of the United States, and what to look forward to from the Court in 2023. In 2022 the Supreme Court docket was relatively light on intellectual property matters. After numerous denials of some highly anticipated patent and trademark cases, the Court kept us in suspense by granting certiorari in new cases in November 2022.

Expect further developments in the passage of the designs package next year, as the details are debated in the European Parliament. Despite the extensive consultation already carried out, it is possible that changes will be made to the proposals before a final version is agreed. And the UK Supreme Court will hear the SkyKick case concerning bad faith. A judgment can be expected before the end of the year.

This year saw an increased focus on the extraterritorial application of the Lanham Act, setting up a showdown at the Supreme Court in 2023. The last year also saw cases pressing the intersection of the Lanham Act with the First Amendment and artistic expression—both in the physical world and in the metaverse—and some rulings that will help clarify the likelihood of confusion analysis in various circuits.
As 2022 comes to an end, we look forward to what 2023 has in store.

If you are filing or have filed a trademark application with the United States Patent and Trademark Office (USPTO) you now have a shorter deadline to respond to Office Actions. The USPTO on Friday announced a new examination guide that implements changes mandated by the Trademark Modernization Act (TMA) of 2020 to the deadline for trademark applicants to respond to Office Actions from six months to three months with an optional three-month extension.

The U.S. Court of Appeals for the Eleventh Circuit earlier this week ruled in favor of Viacom in a trademark fight over the media conglomerate’s Floribama Shore reality television show. MGFB, the company that filed the appeal, owns the “FLORA-BAMA” trademark and owns and operates the Flora-Bama Lounge on the border of Florida and Alabama. The company filed a cease-and-desist letter in 2017 when Viacom first aired Floribama Shore in 2017. The appeals court judges cited the First Amendment as protecting Viacom’s right to artistic use of “Floribama”. “Creative works of artistic expression are firmly ensconced within the protections of the First Amendment,” wrote the judges.

Worldwide IP filings increased by 3.6% in 2021, according to a report published November 21 by the World Intellectual Property Organization (WIPO). The increase came during a turbulent time for the world economy, at the height of the COVID-19 pandemic, as well as a global economic downturn. The biggest increase in patent filings was in Asia, where 67.6% of worldwide patent applications were filed. The United States saw a 1.2% decrease in filings and a 1% increase in trademark filings. Trademark applications grew at a much faster rate than patent applications, with a 5.5% in trademark filing activity. Industrial design filing activity also rose by 9.2% with the largest uptick again in Asia. China saw high rates of growth and is a global leader in sheer numbers across all indicators.

The U.S. Supreme Court yesterday granted a petition filed in August this year by Jack Daniel’s Properties, Inc. seeking clarification on whether the First Amendment protects VIP Products, LLC, a maker of dog toys that made humorous use of Jack Daniel’s trademarks for commercial purposes, against claims of infringement and dilution. The High Court previously denied Jack Daniel’s petition in January of 2021, and the U.S. Court of Appeals for the Ninth Circuit “summarily affirmed” the district court’s summary judgment ruling for VIP on remand. In its ruling in 2020, the Ninth Circuit said VIP’s dog toy mimicking a Jack Daniel’s whiskey bottle was an expressive work entitled to First Amendment protection, reversing the district court’s initial holding that the toy infringed and diluted Jack Daniel’s marks and remanding the case back to the district court for a determination on the merits of the infringement claim.