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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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Protecting Lawful Streaming Act Signed Into Law
January 5, 2021 | Blog | By Seth Davidson
One of the provisions included in the Consolidated Appropriations Act that President Trump signed into law on December 27, 2020 addresses the so-called “felony streaming” loophole in the Copyright Act and criminal code.
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Congress Creates a Copyright Claims Board for Adjudication of Small Copyright Infringement Claims
January 5, 2021 | Blog | By Seth Davidson
Following up on our initial report last year on the possible creation of a Copyright Claims Board, we can now confirm the creation of that Board. The Consolidated Appropriations Act signed into law by President Trump on December 27, 2020 incorporates the CASE Act, establishes this new Copyright Claims Board (CCB) within the Copyright Office.
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FDA Issues New Guidance on Drug Naming
December 17, 2020 | Blog | By Karen K. Won
Last week, the Food and Drug Administration (“FDA”) issued a pair of Guidance for Industry documents outlining best practices for developing proprietary names (i.e. brand names) for prescription and nonprescription human drug products.
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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 | By Susan Neuberger Weller
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.
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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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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 | By Susan Neuberger Weller, Paul Brockland
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.
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First Amendment May Protect Use of Trademarks As Artistic Expression
May 27, 2020 | Blog | By Susan Neuberger Weller, Harold Laidlaw
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.
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Supreme Court Holds that States Cannot Copyright Annotated Versions of Their Statutes
April 29, 2020 | Blog | By Michael Graif, Meena Seralathan
On April 27, 2020, the Supreme Court held that annotations to legislative text, even if created by a private contracted party, are not copyrightable materials under 17 U.S.C. §101. Invoking the government edicts doctrine, the Court made explicit the notion that all members of government involved in lawmaking, including state legislators, are barred from being “authors” for purposes of copyright protection.
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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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It’s Time to Get Colorful: Federal Circuit Holds That Some Color Marks Can Be Inherently Distinctive
April 15, 2020 | Blog | By Susan Neuberger Weller, Harold Laidlaw
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.
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Considering a Purchase, Sale, or Financing? Make Sure Your Trademark Due Diligence is Thorough
April 9, 2020 | Blog | By Susan Neuberger Weller
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.
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How to Maintain Your Trademark Rights When Your Business is Closed
April 8, 2020 | Blog | By Susan Neuberger Weller
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.
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Adding Initials to a Surname Does Not Necessarily Create a Protected Trademark
March 26, 2020 | Blog | By Susan Neuberger Weller, Harold Laidlaw
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.
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YouTube Enables Ads on Coronavirus Content; Brands Should Evaluate Strategies to Mitigate Inadvertent Backlash
March 26, 2020 | Blog | By Karen K. Won
Adding another layer of complexity to sensitively marketing in the COVID-19 environment, YouTube announced on March 11 that it will permit certain creators to monetize (i.e., enable ads on) content relating to coronavirus. Companies and brands should review their approach in this pandemic, including refining YouTube content exclusion parameters and policing their ad environments, if they do not wish to risk association with potentially undesirable videos.
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2nd Circuit Affirms 5Pointz Whitewashing Violated Visual Artists Rights Act
March 25, 2020 | Blog | By Susan Neuberger Weller, Harold Laidlaw
The Second Circuit recently affirmed that a developer’s whitewashing of street art painted at the “5Pointz” warehouse complex in Long Island City was a violation of the Visual Artists Rights Act (“VARA,” codified at 17 U.S.C. § 106A).
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The Masters’ Green Jacket is Now a Registered Trademark
March 10, 2020 | Blog | By Susan Neuberger Weller
Since 1949, a green jacket has been awarded to the winner of the Masters Tournament, one of golf’s four major championships.
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Congress Considers Creation of a “Copyright Claims Board” as an Alternative to Handle Small Copyright Claims
January 8, 2020 | Blog | By Susan Neuberger Weller, Lei Xu, PhD
On Tuesday, October 22, 2019, the US House of Representative approved, by 410-to-6, the Copyright Alternative in Small-Claims Enforcement (CASE) Act of 2019, introduced under H.R.2426 by Representative Hakeem Jeffries (D-NY). This bill aims to “establish an alternative dispute resolution program for copyright small claims,” and creates the Copyright Claims Board, a body within the U.S. Copyright Office, to decide copyright disputes.
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Whose Game is On? Carrie Underwood and NBC Sued Over SNF Song
July 9, 2019 | Blog | By Susan Neuberger Weller
As any football fan knows, Carrie Underwood has performed the introductory song for Sunday Night Football since 2013. “Waitin’ All Day For Sunday Night” was the introductory song for the 2013 and 2014 seasons, and “Oh Sunday Night” was the song performed in 2015, 2016, and 2017. On September 6, 2018, Sunday Night Football opened with Ms. Underwood singing a new introductory song entitled “Game On." Well, this “Game” is now the subject of a copyright infringement suit in Federal District Court in New York.
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U.S. Supreme Court Adopts Rule Protecting a Trademark Licensee’s Ability to Use a Trademark after a Bankrupt Licensor’s Rejection of the License
July 8, 2019 | Blog | By Susan Neuberger Weller, Alexander Roan, Tim McKeon
This past May, in a highly-anticipated decision, the Supreme Court held in Mission Product Holdings, Inc. v. Tempnology, LLC that a debtor’s rejection of an executory contract under Section 365 of the Bankruptcy Code has the same effect as a breach of contract outside of bankruptcy. The decision resolves an inter-circuit split on the effect of a bankrupt trademark licensor’s rejection of a trademark license, a question regarded by legal experts in the trademark community as the most significant unresolved legal issue in trademark licensing.
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