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The Trademark Modernization Act Establishes New Trademark Cancellation Procedures
January 12, 2021 | Blog | By Michael Graif, Williams Dixon
On December 27, 2020, the Trademark Modernization Act of 2020 (“the Act”) became law as part of the Consolidated Appropriations Act, 2021.
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SCOTUS Rules “Generic.com” Marks Are Eligible For Federal Trademark Protection
July 7, 2020 | Blog | By Susan Neuberger Weller
In a landmark decision, United States Patent and Trademark Office v. Booking.com B.V., the Supreme Court of the United States, by an 8-1 vote, affirmed the lower court’s determination that Booking.com could register BOOKING.COM as a trademark.
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Defense in Trademark Action Not Precluded by Failure to Raise Same Defense in Earlier Action
May 15, 2020 | Blog | By Michael Graif, Meena Seralathan
The United States Supreme Court unanimously held this week that Lucky Brand was not precluded from mounting a new defense in its litigation with Marcel Fashions Group — despite having chosen not to bring up the same defense in a prior litigation. This ruling clarifies the circumstances under which a defense can be precluded from a lawsuit.
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US Supreme Court Holds That Trademark Owners Need Not Prove Willful Infringement To Seek An Infringer’s Profits
April 23, 2020 | Blog | By Susan Neuberger Weller, Michael Graif
In a unanimous decision, the US Supreme Court held that a trademark owner need not prove willful infringement in order to seek lost profits from a trademark infringer. The case, Romag Fasteners Inc. v. Fossil Inc. et al., case number 18-1233, involved a long running trademark infringement dispute between the parties.
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FUCT? You Heard That Right: Refusing to Register “Scandalous” and “Immoral” Trademarks is Unconstitutional
June 27, 2019 | Blog | By Susan Neuberger Weller
The U.S. Supreme Court, in a split decision, held that the federal ban on registering “scandalous” and “immoral” trademarks is an unconstitutional violation of free speech under the First Amendment of the US Constitution. The trademark FUCT is what was at issue in Iancu v. Brunetti, case number 18-302 (June 24, 2019). Although the mark had been in use on clothing for many years, it was never accepted for registration by the US Trademark Office on grounds that it violated the ban on registration of “scandalous” and “immoral” marks under Section 1052(a) of the Lanham Act.
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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
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.
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After the Supreme Court Touchdown, Washington Redskins Are Finally Winning at the Fourth Circuit and the PTO
January 29, 2018 | Blog | By Susan Neuberger Weller, Timur Slonim
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.
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Company “Branding” and 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.
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Matal v. Tam: U.S. Supreme Court Holds Prohibition on Disparaging Trademarks Unconstitutional under First Amendment
June 20, 2017 | Blog | By Susan Neuberger Weller
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.
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Pizza! Pizza!: Little Caesar’s Repeated Term Slogans Are Not a “Family of Marks”
January 12, 2017 | Blog | By Susan Neuberger Weller
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.
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Trademark Trial and Appeal Board: Non-Spanish Speakers Would Confuse PATRON and PORTON Trademarks
January 10, 2017 | Blog | By Susan Neuberger Weller
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.
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Federal Circuit Clarifies What Constitutes Use “In Commerce” Under the Lanham Act
November 29, 2016 | Blog | By Brad M Scheller
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.”
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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.
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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.
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The SLANTS Trademark Will Play One More Gig: U.S. Supreme Court to Decide Constitutionality of Ban on Disparaging Trademarks
September 29, 2016 | Blog | By Susan Neuberger Weller
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.
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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.
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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”).
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…..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.”
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