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U.S. Supreme Court Holds That Copyrights Must Be Registered before Plaintiffs Can File Infringement Suits

March 5, 2019 | Blog | By Susan Neuberger Weller, Andrew D. Skale, Harold Laidlaw

The U.S. Supreme Court held today that bringing a suit for copyright infringement requires that the infringed work actually be registered with the U.S. Copyright Office, and that a mere application for registration will not suffice.
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Significant 2018 Trademark Decisions

January 9, 2019 | Blog | By Michael Graif, Rithika Kulathila

This year the Supreme Court, United States Court of Appeals for the Federal Circuit, and the Circuit Courts penned a number of opinions impacting trademark law.  Here are some key takeaways from the past year:
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Brewery Defeats Trademark Opposition by Conservative Public Figure Phyllis Schlafly

December 18, 2018 | Blog | By Michael Graif, Tiffany Knapp

Relatives of the late conservative political activist, Phyllis Schlafly, lost their appeal to prevent the Saint Louis Brewery, LLC (“the Brewery”) from trademarking the Schlafly name in connection with various beer products on November 26, 2018. 
Two incredible things happened in 1992 for the NFL football team Washington Redskins. It won the Super Bowl and applied to register a trademark Washington Redskins. It has not been so lucky ever since. It has not won another Super Bowl and has not registered that mark since 1992.

Company “Branding” and the Benefits of Federal Trademark Registration

November 16, 2017 | Blog | By Susan Neuberger Weller

Selecting and protecting your “brand” should begin from the very moment a business is in the process of being formed, whether that business is a sole proprietorship, partnership, corporation, limited liability company, or some other type of entity.
In a unanimous decision handed down on June 19th, the U.S. Supreme Court struck down as unconstitutional a long-standing prohibition against federal registration of “disparaging” trademarks, finding that the this provision of the Lanham Act violates the Free Speech Clause of the First Amendment.
Although most people will recognize the ubiquitous PIZZA! PIZZA! slogan mark owned by the pizza chain Little Caesar’s, the company’s collection of repeated term marks does not rise to the level of a “family of marks” according to the Trademark Trial and Appeal Board.
In a non-precedential opinion, the U.S. Trademark Trial and Appeal Board cancelled two US trademark registrations for the mark PORTON,  finding it to be confusingly similar to the mark PATRON.

Federal Circuit Clarifies What Constitutes Use “In Commerce” Under the Lanham Act

November 29, 2016 | Blog | By Brad M Scheller, Tiffany Knapp

On November 14, 2016, the Federal Circuit clarified confusion regarding what is necessary to satisfy the registration requirement that a mark be used “in commerce.”

Belmora Takes Its FLANAX Headache to the U.S. Supreme Court

October 25, 2016 | Blog | By Susan Neuberger Weller

Well, a lot has happened since we last reported on the District Court's decision in the FLANAX trademark dispute. As you may recall, the Trademark Trial and Appeal Board granted Bayer's Petition and cancelled the FLANAX registration although Bayer, a German company, did not use the mark FLANAX in the US.

U.S. Supreme Court Denies Redskins' Petition to Join SLANTS Case

October 3, 2016 | Blog | By Susan Neuberger Weller

Further to our post last Friday on the SLANTS trademark case, the U.S. Supreme Court today, without comment, refused the Redskins' Petition to join the SLANTS case challenging the U.S. Trademark Office's ban on "offensive" trademarks.
The U.S. Supreme Court announced today that it will review whether the U.S. Trademark Office can deny registration of offensive trademarks or whether such prohibition violates the First Amendment.

Dilution Update: NYC BEER Is Not Diluted, But The Empire State Building Is

June 30, 2016 | Blog | By Susan Neuberger Weller

Trademark dilution is a concept not easily understood. Although, we have written about this topic in previous posts, a recent decision by the Trademark Trial and Appeal Board, ESRT Empire State Building, L. L. C. v. Michael Liang, Opposition No. 91204122 (TTAB June 17, 2016),  may help to further explain why it is unacceptable to dilute another’s trademark.

Washington Redskins Haven’t Won Yet: Why the Constitutionality of Section 2(a) is Not Yet Final

January 4, 2016 | Blog | By Susan Neuberger Weller, Serge Subach

What do Washington D.C.’s NFL team, the Redskins, and Mr. Tam’s rock band, The Slants, have in common? Both have enjoyed unexpected victories recently and both have been called “disparaging” by the Patent and Trademark Office (“PTO”).

…..and Don’t Even Think About Advertising a MARCH MADNESS Event Either!

March 17, 2015 | Blog | By Susan Neuberger Weller

It is that time of year again, coming off St. Patrick’s Day celebrations, when everyone gets on the college basketball bandwagon in the season of “MARCH MADNESS.”

The Court's Decision in the FLANAX US Trademark Dispute Gives Bayer a Headache

February 25, 2015 | Blog | By Susan Neuberger Weller

On February 6, the United States District Court for the Eastern District of Virginia reversed the US Trademark Trial and Appeal Board’s ruling in Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d 1623 (TTAB 2014) holding that Article 6bis of the Paris Convention does not grant trademark rights that are protectable under Section 14(3) (misrepresentation of source), Section 43(a)(1)(A) (infringement of an unregistered mark) and Section 43(a)(1)(B) (false advertising) of the United States Trademark Statute (the Lanham Act).

Bayer Given a Headache by Trial Court Decision in FLANAX US Trademark Dispute

February 25, 2015 | Blog | By Susan Neuberger Weller

On February 6, 2015, a US District Court issued a ruling which underscores the territorial nature of trademark rights and the need to seek formal protection for your marks where possible in all countries of interest.

Don’t Even Think About Advertising a SUPER BOWL Party!

January 26, 2015 | Blog | By Susan Neuberger Weller

As we all know, Super Bowl XLIX will be played this Sunday in Phoenix, Arizona between the defending Champion Seattle Seahawks and the New England Patriots. There will be events of all kinds organized all around the country focused on this football game.
In the first substantive trademark decision it has issued in a decade, the US Supreme Court, in Hana Financial, Inc. v. Hana Bank, case number 13-1211 (January 21, 2015), affirmed the Ninth Circuit by holding that whether two marks may be tacked for purposes of determining priority is a question for the jury.
The Washington Redskins professional football team will soon not only be battling Native Americans over the registrability of the REDSKINS trademark, but will also have to cross swords with the US Government.
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