Trademark & Copyright

Legalizing “hemp” under the Agricultural Improvement Act of 2018 (2018 Farm Bill) has triggered an important change for the examination of federal trademark applications concerning cannabis and cannabis-derived goods and services.  In response to the Bill’s enactment on December 20, 2018, the United States Patent and Trademark Office (USPTO) issued a new examination guide to clarify its examination procedures involving hemp goods and services.  For businesses in the cannabis industry, the examination guide (recently issued on May 2, 2019) will impact the viability of federal trademark applications filed on or after December 20, 2018 that were once previously barred.

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.

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.

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:

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. 

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.

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.

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.

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.

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.

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.

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.

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.

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."

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.

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.

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.”

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.”

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.

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.