Trademark & Copyright

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.

The US Trademark Trial and Appeal Board has, again, explained how and when surnames may function as trademarks.

The Federal Circuit has upheld the findings of the Trademark Trial and Appeal Board that use of the marks MAYA and MAYARI on wine is not likely to cause confusion.

This past Thursday the Brexit vote sent shockwaves around world, including the IP community and in particular with respect to IP rights in the UK and Europe. But concerns at the moment are speculative as nothing yet has changed.

Trademark rights exist on a country-by-country basis, and the laws in the United States differ in a number of significant ways from other markets. As a result, it is critical that before any non-U.S. company seeks trademark protection in the U.S., it first consider a number of potential obstacles. Use of a company name and its related trademarks in the U.S. is not guaranteed.

As we reported in a recent post, PETA lost its efforts, on behalf of Naruto the monkey, to secure his claim to copyright ownership of his "selfie" photograph. The district court judge held that the copyright law did not recognize an animal's right to own a copyright.

In August 2014, we posted about a copyright ownership dispute involving selfie photographs. The disputed selfie photographs were taken by a monkey named Naruto in Indonesia in 2011.

As we ring in the new year, we thought we would remind everyone why the importance of a comprehensive trademark search for a new company name and for a new trademark cannot be overstated:

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”).

Today the Federal Circuit Court of Appeals ruled that the section of the Lanham Act which bans registration of "disparaging" trademarks is an unconstitutional violation of First Amendment free speech.

George Bailey stands on a bridge begging for another chance at life. Upon being granted a second chance, he joyously runs home to embrace his family. As the community of Bedford Falls rallies around him and raises funds to save the endangered Building and Loan and George Bailey personally from an unjustified failure, someone proclaims a toast to George Bailey, “the richest man in town.”

The Federal Circuit has decided to revisit the constitutionality of Section 2(a) of the Lanham Act in the case of In re Shiao Tam, 2015 U.S. App. LEXIS 6840 (Fed. Cir. Apr. 27, 2015). Section 2(a) of the Lanham act allows the USPTO to reject the registration of a trademark that is immoral, scandalous, or disparaging.

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.”

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).

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.

Unlike most countries, US trademark law generally requires that a mark be in use before it can be protected. The US recognizes common law rights in unregistered marks if they have been adopted in good faith and are in actual use on a product or to provide a service to the public.

The New York Times Magazine had a very interesting article in its January 18, 2014 issue entitled "Call It What It Is." The article, written by Neal Gabler, looks into the methods and ideologies used to create new product brand names.

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.

On January 6, 2015, Sen. Patrick Leahy introduced Senate bill 23 entitled the “Copyright and Marriage Equality Act.” The bill would amend Section 101 of title 17 of the United States Code by striking the current definitions of “widow” and “widower” and replacing them with the following:

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.