Simon Tam, “I’d be happy to send [Redskins or Daniel Snyder] some legal bills.” Simon Tam, the front man of a Portland based dance-rock band named “The Slants”, filed suit against the Patent and Trademark Office (PTO) when the PTO refused to trademark their band’s name. Their trademark was rejected under section 2(a) of the Lanham Act, the disparagement clause. The disparagement clause provides that the PTO may prohibit the registration of.. Read More
Descriptive There, Trademarked Here: An “Ugg”-ly Dispute
It is widely accepted in the United States that generic and descriptive terms cannot be trademarked. So what happens when a descriptive word from a foreign country makes its way to the U.S. and is trademarked by a U.S. company? Are the people from that country then barred from using that term to advertise their products in the U.S., even if they deem the term descriptive? This is the predicament Australian sheepskin.. Read More
Gucci is Ghosting and Louis is Lunging: An Examination of Disparate Luxury IP Enforcement Strategies
These days it seems that nothing is safe from millennials. The running joke is that strengthened by their addiction to avocado toast, and with all of their free time due to unemployment, millennials have started a killing spree against wholesome staples like napkins, cereal, and “Breastaurants.” I will be focusing on the replies from one of the “murder victim” industries, luxury goods. While luxury brands have seen a market increase of 4% in.. Read More
When Teams Move Out
When a team relocation is announced, the move will mean heartbreak for some sports fans, but it also offers the opportunity to build for others. Former Cleveland Browns placekicker and offensive tackle Lou Groza compared his team’s relocation to a fire that “has just burned out. And all you’re left with is ashes.” Excitement or dismay aside, what do these moves mean for the teams’ intellectual property? Football In 1995, then-Browns owner Arthur.. Read More
Invasion of the Bot E-Snatchers? Not Quite.
Automated software programs, or “bots,” have been in use since the early days of the internet, perhaps most notably by search engines and online market aggregators to power their services. This type of bot usage has mostly been tolerated because of its synergistic effects, but companies have grown warier of who they allow on their servers as bots have become more numerous and sophisticated. From “scrapers” that trawl LinkedIn user profiles for data.. Read More
Is Marilyn Monroe Generic?
Marilyn Monroe was—and continues to be—one of the most iconic actresses in the world. And while there is no doubt that Marilyn Monroe is a household name, is it possible that her name has become too well-known? Apparently so. On March 13, 2017, Judge Katherine Polk Failla of the United States District Court for the Southern District of New York (SDNY) issued a ruling that permits a counterclaim to cancel Marilyn Monroe’s trademarks.. Read More
Disparaging Trademarks and Free Speech – Will the Supreme Court Strike Down the Disparagement Clause?
15 U.S.C. 1052(a) and its validity was examined in Lee v. Tam. The question is, will the Supreme Court strike it down? The statute in question is the “disparagement provision” of the 1946 Lanham Trademark Act, which prohibits the registration of any mark that “may disparage persons, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Registration of a trademark provides nationwide protection against others from using the name. In 2011,.. Read More
Trademark Litigation in the Shadow of B&B Hardware
In 2015, the Supreme Court decided a trademark dispute, B&B Hardware, Inc. v. Hargis, Indus. However, in the light of more public trademark cases, such as the Washington Redskins trademark cancelation, the decision has not received much press. In many respects, this is not terribly surprising. B&B Hardware decided a very narrow issue of trademark litigation procedure. However, the consequences will be dramatic for litigants going forward. B&B Hardware was an incredibly drawn-out.. Read More
Courts Split Over Fourth Circuit’s New False Advertising Standard
This blog post discusses the impact of the Fourth Circuit’s ruling regarding “literally false” advertising claims. The case is In re GNC Corp., 789 F.3d 505 (2015). An earlier blog post describing the facts of the case, as well as the merits of the Fourth Circuit’s decision, can be found here. Consider the following scenario. Your company has been manufacturing a line of supplements for over a decade, and the bottle lists.. Read More
Trademark Law and the Brilliance of “Dumb Starbucks”
A typical comedian would not devote an episode of his TV show to issues of trademark law, but Nathan Fielder is not a typical comedian. Most people in the U.S. familiar with the Canadian comedian’s work know him primarily from his Comedy Central TV show, “Nathan for You.” With his deadpan humor and impeccable delivery, it is hard to understand why Fielder is not more widely known. However, his relative obscurity lends itself.. Read More