Posts Tagged: "trademark"

Litigation finance trends, Supreme Court decisions on patent enablement and copyright fair use, the launch of the Unified Patent Court, more cases dealing with the intersection of IP law and AI— and continued uncertainty. These are some of the key issues to watch in 2023, according to the readers below. As we do each December, IPWatchdog asked its IP community what they will be paying attention to as we enter the new year; hopefully their responses will help prepare you for what’s ahead.

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.

The United States Court of Appeals for the Ninth Circuit on Tuesday affirmed the dismissal of Metamorfoza’s trademark infringement and unfair competition claims against Big Funny over a trademark that included the disclaimed phrase “Museum of Illusions.” Big Funny also cross-appealed the district court’s denial of its motion for attorneys’ fees, but the Court of Appeals agreed with the district court, finding that it had acted within its discretion in denying fees under 15 U.S.C. § 1117(a) because the case was not “exceptional.” Big Funny and Metamorfoza both operate multiple museums called “Museum of Illusions” in the United States. Big Funny operates museums in California and Florida, while Metamorfoza has museums in New York, Missouri and Texas.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming the grant of a narrowly-tailored preliminary injunction to SoClean, Inc., a medical device company that makes CPAP machines, based on trademark infringement claims against Sunset Healthcare Solutions, Inc. SoClean alleged in 2021 that Sunset infringed its U.S. Trademark Registration No. 6,080,195. The registration covers the configuration of replacement filters for its sanitizing devices.

The U.S. Patent and Trademark Office’s (USPTO’s) Trademark Trial and Appeal Board (TTAB) ruled in favor of Sony on October 28 in a decision that sustained the corporation’s opposition to an  application to register the mark SONISTREAM for a streaming platform. The TTAB ruled last Friday that the “SoniStream mark is likely to dilute Opposer’s famous SONY mark by blurring.” The Board found that SoniStream is similar enough in name “to trigger consumers” of SoniStream to think of the Sony brand. Of the six factors used to evaluate the case, the TTAB found that four were likely to dilute the Sony brand.

Trust and estate attorneys regularly advise their clients to enter into prenuptial agreements to protect the valuable assets each spouse brings to the marriage as well as how to distribute community property in the event of a divorce. Brand collaborations with celebrities, influencers or other brands are much like marriages, but brand collaborations are even more unlikely to last. Why not plan for the split, whether it be a conscious uncoupling or a Page 6 kind of divorce, with a prenup? The high profile split between Adidas and Ye (fka Kanye West) reminds us that collaboration agreements should not only plan for the best of times, but it is worth setting up the agreement to account for a sudden and troubling end.   

The U.S. Supreme Court granted petitions for certiorari in two intellectual property cases Friday, one dealing with the limits of extraterritorial application of the Lanham Act and another asking the High Court to weigh in on whether “enablement” means a specification must enable those skilled in the art “to reach the full scope of claimed embodiments” without undue experimentation.

Security issues have long dogged the U.S. trademark system. Unscrupulous operators – sometimes competitors, sometimes bad actors with nothing better to do – too frequently muck up the application process by modifying those filings or filing improper submissions. This is no small problem given the U.S. Patent and Trademark Office (the USPTO) remains a mammoth and international hub of trademark filings. In fiscal 2021, trademark application filings topped 943,000, a record high. This marked an increase of about 28% from the prior year, with that increase driven primarily by Chinese filers.

Usain Bolt filed a recent U.S. trademark application depicting his widely recognized victory pose. The trademark has been applied for in relation to items such as clothing, jewellery, shoes and restaurant and bar services. As Bolt has retired from athletics, he is clearly hoping to add more strings to his bow.