Trademark & Copyright

The FUCT Mark: Is the Prohibition on Scandalous Marks Unconstitutional?

March 14, 2019 | Blog | By Susan Neuberger Weller, Adam Samansky, Serge Subach

The constitutionality of yet another portion of Section 2(a) of the Lanham Act will soon be determined. Following in the footsteps of the blockbuster decision in Matal v. Tam, 137 S. Ct. 1744 (2017) (“Tam”), the U.S. Supreme Court granted certiorari to Iancu v. Brunetti on January 4, 2019. In Matal v. Tam, the Supreme Court held that the prohibition in Section 2(a) of the Lanham Act against registering disparaging trademarks at the U.S. Trademark Office (“USPTO”) was an unconstitutional restriction on free speech. However, Section 2(a) also prohibits the registration of other categories of marks, including marks that are immoral and scandalous. It is the constitutionality of this prohibition which is at issue in Brunetti.

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.

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:

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.

Monkeys Lack Standing to Sue for Copyright Infringement

May 1, 2018 | Blog | By Susan Neuberger Weller

Well, it’s official: Naruto, the crested macaque monkey who took photographs of himself while on a reserve on the island of Sulawesi, Indonesia in 2011, lacks statutory standing under the US Copyright Act to sue for copyright infringement.

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.

When is a Copyright “Registered” for Purposes of Filing Suit?

December 6, 2017 | Blog | By Susan Neuberger Weller, Anne-Marie Dao

On May 18, 2017, the Eleventh Circuit Court of Appeals dismissed a copyright infringement complaint and added further to a circuit split on when copyright “registration” occurs for purpose of filing a copyright infringement complaint.

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.

Building a Health App? Part 2: Protecting Your Intellectual Property

September 26, 2017 | Blog | By Christina Sperry

This post is the second in a series of weekly blog posts covering legal issues for consideration during the early stages of development of a health app and providing best practices to help guide you through a successful launch.

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.

Let’s Go, Big ©! Let’s Go! U.S. Supreme Court Backs Copyright Protection for Cheerleading Uniforms

March 28, 2017 | Blog | By Susan Neuberger Weller

In a decision that may have broader implications in the U.S. fashion industry, the U.S. Supreme Court in Star Athletica, L.L.C. v. Varsity Brands, Inc. (No. 15-866) ruled that the decorative elements on a cheerleading uniform can fall within the scope of articles protectable by copyright.

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.

U.S. Supreme Court to Hear Arguments on January 18, 2017 in "The Slants" Case.

January 11, 2017 | Blog | By Susan Neuberger Weller

As we reported to you last September, the U.S. Supreme Court agreed to hear the case involving the constitutionality of the provisions of the Lanham Act upon which the U.S. Trademark Office relied to deny registration of the rock band name "The Slants."

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.

NHL’s Vegas Golden Knights’ Trademark Application Refused Due To Likelihood of Confusion with the College of Saint Rose Golden Knights

December 21, 2016 | Blog | By Brad M Scheller, Tiffany Knapp

In June 2016, the National Hockey League (NHL) announced that Las Vegas would be awarded an NHL franchise team, the first major professional sports team in the city and the first new expansion team for the NHL in over fifteen years.

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.”

DJ Mark Ronson and Bruno Mars Get “Funked” With New Copyright Suit Over “Uptown Funk”

November 10, 2016 | Blog | By Brad M Scheller, Daniel Weinger, Anthony Faillaci

On Friday, October 28, 2016, musicians Mark Ronson and Bruno Mars were hit with a copyright infringement suit based on their wildly popular hit “Uptown Funk.”

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 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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