Susan retired from Mintz in 2026 after over 20 years of dedicated leadership of the firm's Trademark Practice.
viewpoints
When Can a Trademark Owner Take Action for Unauthorized Use of its Trademark Online?
January 4, 2022 | Blog
Unauthorized use of a trademark on the Internet occurs often and in many forms, usually involving the profiting, whether intentionally or unintentionally, from the goodwill associated with a trademark belonging to someone else. Such use, however, does not always rise to the level of trademark infringement. Unauthorized use of a trademark is only infringing if the particular use causes likely confusion among consumers. The most common type of confusion is confusion over source, which occurs at the time of purchase, but confusion can also arise as to affiliation, connection, or sponsorship, and confusion does not necessarily need to occur at the time of purchase.
Read more
U.S. Trademark Office Issues Guide on How It Will Apply the Supreme Court’s Booking.com Decision to Examination of Relevant Applications
October 29, 2020 | Blog
As we reported in our July 7, 2020 blog post on the USPTO v. Booking.com B.V decision, the U.S. Supreme Court ruled that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is not automatically generic and can be protected as a trademark under certain circumstances.
Read more
SCOTUS Rules “Generic.com” Marks Are Eligible For Federal Trademark Protection
July 7, 2020 | Blog
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.
Read more
Second Circuit Declines to Decide if Human Skin Can Be a Tangible Medium of Expression under Copyright Law and Affirms Dismissal of Makeup Artist’s Lawsuit
June 22, 2020 | Blog
In a recent decision from the Second Circuit, Judges Parker, Chin, and Carney side-stepped a novel question: whether human skin can be the kind of "tangible medium of expression" required for copyright protection. Instead, the court held that a photograph of a makeup artist’s application of a makeup design to a human “fixed” the design for purposes of copyright law and affirmed the district court’s dismissal of the appellant Mourabit’s unjust enrichment and unfair competition/misappropriation claims as preempted by the Copyright Act.
Read more
First Amendment May Protect Use of Trademarks As Artistic Expression
May 27, 2020 | Blog
In a recent decision from the Southern District of New York, Judge George B. Daniels held that the strong First Amendment interests in protecting free artistic expression warranted summary judgment that Activision Blizzard’s use of Humvee vehicle models in the blockbuster Call of Duty videogames was not a violation of the Lanham Act.
Read more
US Supreme Court Holds That Trademark Owners Need Not Prove Willful Infringement To Seek An Infringer’s Profits
April 23, 2020 | Blog | By 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.
Read more
It’s Time to Get Colorful: Federal Circuit Holds That Some Color Marks Can Be Inherently Distinctive
April 15, 2020 | Blog
The Federal Circuit recently held in a precedential ruling that a “color mark” comprising a multiple-color pattern is capable of being inherently distinctive and of registration on the Principal Register, so long as it appears on product packaging rather than on a product itself.
Read more
Considering a Purchase, Sale, or Financing? Make Sure Your Trademark Due Diligence is Thorough
April 9, 2020 | Blog
Trademark due diligence is the process of analyzing information concerning a company's trademark portfolio and assessing the risks, exposures, and benefits associated with a proposed transaction. In an acquisition, both the buyer and the seller need to ensure that they each are fully informed as to the status of the trademarks at issue.
Read more
How to Maintain Your Trademark Rights When Your Business is Closed
April 8, 2020 | Blog
Trademark rights in the US are based on use of a mark not on registration. Failure to use your mark on a product or to offer a service to the public can result in an abandonment of your trademark rights and an inability to maintain an existing registration.
Read more
Adding Initials to a Surname Does Not Necessarily Create a Protected Trademark
March 26, 2020 | Blog
In a recent precedential decision, the TTAB held that the addition of one initial —or possibly even more than one initial—in front of a surname does not necessarily create the impression of a personal name. Rather, the Board held that a surname plus one or more initials may remain “primarily a surname” and, as such, cannot be registered on the Principal Register without proof of acquired distinctiveness.
Read more
News & Press
Mintz’s Trademark Practice Recognized in 2024 WTR 1000 Rankings
February 6, 2024|
Mintz is pleased to announce that 120 firm attorneys have been recognized as leaders by Best Lawyers® in the 2024 edition of The Best Lawyers in America©.
Mintz’s Trademark Practice Recognized in 2023 WTR 1000 Rankings
February 14, 2023|
Mintz, Practitioner Ranked in 2021 World Trademark Review 1000
February 23, 2021|
No, Seriously, Don't Try To 'Trademark' Coronavirus
March 19, 2020|
Ban On 'Scandalous' TMs Is Probably Dead For Good
September 18, 2018|
After NYT Challenge, BuzzFeed Drops 'All The News' Slogan
October 12, 2017|
Even Before Slants, Offensive TM Ban Always An Awkward Fit
June 20, 2017|
Racial slurs, free speech at issue in 'Slants' trademark case
February 1, 2017|
US Supreme Court Examines Many Angles in Slants Oral Arguments
January 22, 2017|
Offensive TMs At High Court: Everything You Need To Know
January 17, 2017|
Law360 Intellectual Property Editorial Advisory Board
February 29, 2016|
Events & Speaking
Speaker
Read less
Jul
23
2015
World Intellectual Property Organization Academy Summer School
WIPO and United States Patent & Trademark Office
Alexandria, VA
Recent Insights
