9th Circuit Applies Rogers Test to “Punchbowl” Case

Written by Chloe N. George This week, the Ninth Circuit affirmed the Central District of California’s summary judgment in favor of AJ Press, LLC, owner of Punchbowl News, against Punchbowl, Inc. in a trademark infringement action under the Lanham Act.[1] The Ninth Circuit applied the Rogers test, established by Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) and adopted by the Ninth Circuit in … Continue reading 9th Circuit Applies Rogers Test to “Punchbowl” Case

SCOTUS to Weigh In on Extraterritorial Reach of the Lanham Act

Written by Brandon E. Hughes The U.S. Supreme Court is poised to review the extraterritorial reach of the Lanham Act in a case that may significantly impact the manner in which trademark owners police and protect their marks abroad.  In Abitron Austria GmbH, et al. v. Hetronic International, Inc., No. 21-1043, 2022 WL 16703748 (U.S. Nov. 4, 2022), the Court will consider whether the Tenth … Continue reading SCOTUS to Weigh In on Extraterritorial Reach of the Lanham Act

MSK Obtains Win for Activision in Battle Over Use of the Title “Warzone”

Written by Lindsay R. Edelstein On August 15, 2022, in Activision Publishing, Inc. v. Warzone.com, LLC, Judge Fernando L. Aenlle-Rocha of the Central District of California granted Activision’s motion to dismiss Defendant Warzone.com, LLC’s counterclaim alleging trademark infringement, unfair competition, and false advertising under the Lanham Act and California law.  The Court also granted Activision’s motion for judgment on the pleadings, finding that Activision’s use of the … Continue reading MSK Obtains Win for Activision in Battle Over Use of the Title “Warzone”

The Dawn of a New Day: USPTO Implements the TMA

Written by Alesha M. Dominique and Caen A. Dennis On November 17, 2021, the United States Patent and Trademark Office (USPTO) issued its highly anticipated final rule, which amends the rules of practice in trademark cases to implement provisions of the Trademark Modernization Act of 2020 (TMA).  Many parts of the final rule will go into effect on December 18, 2021, with other portions effective on December 1, 2022.  … Continue reading The Dawn of a New Day: USPTO Implements the TMA

Trademark Liability for Social Media Influencers? C.D. Cal. Court Says It’s Possible.

Written by Lillian Lee On August 6, 2021, the United States District Court for the Central District of California held that a trademark owner could proceed on a claim of direct trademark infringement against a blogger and social media “influencer.” The court’s ruling highlights the possibility that brand influencers may be held liable for trademark infringement in connection with the products they promote.  Petunia Products, … Continue reading Trademark Liability for Social Media Influencers? C.D. Cal. Court Says It’s Possible.

No “Fees or Forms” Required for Inclusion of Native American Tribal Insignias in USPTO Database

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

Bursting the [Red]Bubble? Northern District of California Considers Online Retailer’s Scope of Liability for Copyright and Trademark Infringement

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

Another COVID-19 Surprise: Important New Trademark and Copyright Legislation Buried In Spending and Relief Package

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

SCOTUS Rejects Per Se Rule Against Trademark Protection for Generic.com Terms

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

District Court of Colorado Departs From the Rogers Test in Documentary Trademark Suit

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