Written by Alesha M. Dominique and Lindsay R. Edelstein The U.S. Patent and Trademark Office (USPTO) tribal insignia trademark program allows Native American tribes to include tribal insignias in the USPTO’s database at no charge. The USPTO’s waiver of application fees is intended to foster adequate protections for Native American tribes’ intellectual property and cultural heritage. The tribal insignia database has been a component of … Continue reading No “Fees or Forms” Required for Inclusion of Native American Tribal Insignias in USPTO Database
Written by Lillian Lee On January 28, 2021, the U.S. District Court for the Northern District of California addressed an online retailer’s liability for copyright and trademark infringement arising out of its users’ submissions. Atari Interactive, Inc. v. Redbubble, Inc., Case No. 4:18-cv-03451. The court on cross-motions for summary judgment deferred on most issues, holding that Plaintiff Atari Interactive, Inc. (“Atari”) could proceed on some … Continue reading Bursting the [Red]Bubble? Northern District of California Considers Online Retailer’s Scope of Liability for Copyright and Trademark Infringement
Written by Marissa B. Lewis Yesterday, Congress’s omnibus spending and COVID-19 relief bill, H.R. 133, was signed into law. Buried in the legislation are two new acts that potentially have sweeping implications for intellectual property owners. The Trademark Modernization (“TM”) Act and the Copyright Alternative in Small-Claims Enforcement (“CASE”) Act introduce measures that are poised to significantly impact the way that trademark and copyright owners … Continue reading Another COVID-19 Surprise: Important New Trademark and Copyright Legislation Buried In Spending and Relief Package
Written by Eleanor M. Lackman and Samantha W. Frankel The U.S. Supreme Court has held that a generic word combined with “.com” is entitled to federal trademark registration if consumers perceive the combined mark as nongeneric. United States Patent & Trademark Office v. Booking.com B. V., No. 19-46, 2020 WL 3518365 (U.S. June 30, 2020). In an 8-1 decision, the Court held that because Booking.com … Continue reading SCOTUS Rejects Per Se Rule Against Trademark Protection for Generic.com Terms
Written by Eleanor M. Lackman and Lillian Lee On May 8, 2020, the U.S. District Court for the District of Colorado granted National Geographic’s motion to dismiss an amended complaint for trademark infringement, unfair competition, and deceptive trade practices. Stouffer v. National Geographic Partners, LLC, No. 18-cv-3127 (May 8, 2020). In doing so, the court addressed “the question of what protections the First Amendment provides … Continue reading District Court of Colorado Departs From the Rogers Test in Documentary Trademark Suit
Last week, the U.S. Supreme Court decided Lucky Brand Dungarees Inc. v. Marcel Fashions Group Inc., No. 18-1086, 2020 WL 2477020 (U.S. May 14, 2020), a trademark case involving the scope of claim preclusion as the doctrine applies to defenses. Although recognizing that claim preclusion can apply to bar defenses, the Court explained that the so-called “defense preclusion” is an invalid application of res judicata when the earlier suit involved different trademarks, different legal theories, and different conduct occurring at different times.
Three Lawsuits and Nearly Twenty Years of Litigation
Lucky Brand and Marcel Fashions Group are competitors in the apparel industry who have been battling each other for decades. The first lawsuit began in 2001, when Marcel, the owner of the trademark “Get Lucky,” accused Lucky Brand of violating trademark law by using the phrase “Get Lucky” in advertisements. That litigation resulted in settlement, in which Lucky Brand agreed to stop using the words “Get Lucky” in their branding in return for Marcel Fashion’s release of certain claims against Lucky Brand. The second lawsuit between the parties began in 2005, when Lucky Brand accused Marcel Fashions of copying its designs and logos for a new clothing line. Marcel Fashions responded with counterclaims, alleging that Lucky Brand had continued to use Marcel’s “Get Lucky” mark in violation of the settlement agreement. Notably, Marcel had not claimed that Lucky Brand’s use of its own marks alone—that is, independently of any use of “Get Lucky”—infringed on Marcel’s “Get Lucky” mark. Marcel ultimately prevailed in the 2005 lawsuit, permanently enjoining Lucky Brand from using a catchphrase “Get Lucky.”
A recent precedential opinion from the U.S. Patent & Trademark Office Trademark Trial and Appeal Board (TTAB), Shannon DeVivo v. Celeste Ortiz, Opposition No. 91242863 (TTAB Mar. 11, 2020), challenges the well-established concept that a single title of a book cannot be a trademark, leaving a wide opening for those who seek to register terms previously considered non-registerable.
In the DeVivo proceeding, Celeste Ortiz sought to register the term ENGIRLNEER for cups and mugs, lanyards, and shirts and sweatshirts. Shannon DeVivo, the owner of two pending trademark applications for the term for children’s books, notebooks, and a website offering information to young women and girls seeking careers in stem cell research opposed the application, citing likely confusion. On an accelerated case procedure, the TTAB sustained the opposition, partly relying on the fact that DeVivo had used ENGIRLNEER on the cover of a single book, which the TTAB surprisingly found to be a trademark use. Continue reading “Judging a Book by Little More than Its Cover: TTAB Finds that Single Book May Meet Trademark-Use Test”
Written by Eleanor M. Lackman
On April 23, 2020, the Supreme Court weighed in on a question that had split the circuits: to receive an award of profits for trademark infringement under the Lanham Act, does a plaintiff first have to show that the defendant infringed with willful intent? All the Justices agreed that the answer is “no.” Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233. Instead, a court must consider “principles of equity” in deciding whether to award the equitable remedy of the defendant’s profits. Recognizing that eliminating a threshold requirement of willfulness may create uncertainty in the law, the Court found that the statute’s language clearly mandated that lack of willfulness is not, in itself, a barrier to a profits award. Nonetheless, willfulness remains a factor for strong consideration in deciding whether an award is equitable.
The case arose from a dispute between a supplier of fasteners for handbags and other accessories that respondent Fossil made. Over time, Fossil’s factories in China had started to source counterfeit fasteners. Romag claimed that Fossil was doing little to guard against the practice, and Romag sued. After trial, the jury found that Fossil had acted “in callous disregard” of Romag’s rights, but the jury rejected the claim that Fossil acted willfully. The district court refused Romag’s request that Fossil hand over all the profits from the sales of its bags and other products containing the counterfeit fasteners, pointing out that controlling Second Circuit precedent required a plaintiff seeking profits to prove that the defendant’s violation was willful. Other circuits took a different position from the Second Circuit, so the Court granted certiorari.
On April 8th, the U.S. Court of Appeals for the Federal Circuit, in In re Forney Industries, Inc., held that multicolor marks can be inherently distinctive when used on product packaging.
In 2014, Forney Industries (“Forney”), a company that manufactures tools and accessories for welding and machining, applied to register a multicolor mark for its packaging and labels consisting of a black banner immediately followed by the color yellow, progressively fading into red. The trademark examining attorney refused to register the multicolor mark after concluding it was not inherently distinctive, and required that Forney Industries submit “sufficient proof of acquired distinctiveness.” The Trademark Trial and Appeal Board (TTAB) affirmed the refusal, and Forney appealed to the Federal Circuit.
In VIP Products v. Jack Daniel’s Properties, Inc., No. 18-16012 (9th Cir. March 31, 2020), the Court of Appeals for the Ninth Circuit held this week that a rubber dog toy designed to resemble a bottle of Jack Daniel’s Black Label Tennessee Whiskey — the “Bad Spaniels Silly Squeaker” — is an “expressive work” and therefore entitled to interpose a First Amendment defense against the whiskey company’s trademark infringement claims.
The lawsuit began in 2014 when Jack Daniel’s demanded that VIP Products stop selling the Bad Spaniels on trademark infringement grounds. The manufacturer filed suit asking an Arizona District Court to weigh in and determine whether the whiskey bottle was entitled to trademark protection at all. Jack Daniel’s responded with trademark infringement and trademark dilution claims, arguing that the dog toy diluted the commercial power, meaning and value of its brand by tarnishing what the image of the iconic whiskey bottle represents. The District Judge agreed with Jack Daniel’s that there was a high likelihood of consumer confusion between the products and ordered VIP Products to stop making and selling the Bad Spaniels toy. Continue reading “Freedom of Squeak: The Ninth Circuit Finds First Amendment Protection For Parody Dog Toy”