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CASE AT A GLANCE In 2018, Steve Elster sought to trademark the phrase 'TRUMP TOO SMALL' for use on T-shirts. The Patent and Trademark Office examiner rejected the proposed mark under Section 2(c) of the Lanham Act. That provision bars registration of marks that '[c]onsist[] of or comprise[] a name...identifying a particular living individual' without the individual's 'written consent.' 15 U.S.C. [section] 1052(c). The Trademark Trial and Appeal Board (the Board) upheld the examiner's decision. Both the examiner and the Board rejected Elster's claim that the rejection violated Elster's right to free speech., Vidal v. Elster Docket No. 22-704 Argument Date: November 1, 2023 From: The Federal Circuit Steven D. Schwinn University of Illinois Chicago School of Law, Chicago, IL Introduction In recent [...]

CASE AT A GLANCE The Court will consider the circumstances under which the commercial use of a parody of a trademark may give rise to liability for trademark infringement or dilution under the Lanham Act. This case involves trademarks and trade dress used in connection with Jack Daniel's products, such as word marks 'Jack Daniel's' and 'Old No. 7,' and trade dress for the three-dimensional configuration of a square-shaped bottle, with the words 'Jack Daniel' embossed on it, which has been sold commercially in that configuration since about 1875. In 2014, VIP Products began selling a Bad Spaniels dog chew toy that was stylized to mirror the same size, shape, and color of a 750-mL bottle of Jack Daniel's Old No. 7 Tennessee whiskey. After receiving a demand letter from Jack Daniel's, VIP Products brought an action in the District of Arizona seeking a declaratory judgment that its dog toy 'did not infringe or dilute any trademark or trade dress rights owned by' Jack Daniel's. Jack Daniel's counterclaimed under the Lanham Act for infringement of its registered trademarks and trade dress and for trademark dilution by tarnishment. The district court entered judgment for Jack Daniel's on infringement and dilution and enjoined respondent from selling the Bad Spaniels toy. On appeal, the Ninth Circuit Court of Appeals found that the Bad Spaniels dog toy is 'an expressive work entitled to First Amendment protection' based on the court's application of its Rogers test. The Court will now review the appropriate use of a nonstatutory test for parodic marks before invoking the statutory likelihood-of-confusion standard for proving trademark infringement under the Lanham Act and whether it is appropriate to shield a party from trademark dilution liability by invoking the statutory exclusion for 'non-commercial use of a mark,' where the party is using parodic marks to sell goods in commerce for a profit., Jack Daniel's Properties, Inc. v. VIP Products LLC Docket No. 22-148 Argument Date: March 22, 2023 From: The Ninth Circuit Issues Does the Lanham Act require that the humorous use [...]

CASE AT A GLANCE Since Steele v. Bulova Watch Co., 344 U.S. 280 (1952), the Supreme Court has not addressed the territorial scope of the Lanham Act. Abitron Austria GmbH v. Hetronic International, Inc. is an opportunity for the Court to clarify how its RJR Nabisco extraterritoriality framework applies to the Lanham Act, whether and how current circuit court tests fit into the framework, and whether any of the tests should apply in the second step of the framework., Abitron Austria GmbH v. Hetronic Int'l, Inc. Docket No. 21-1043 Argument Date: March 21, 2023 From: The Tenth Circuit Introduction In RJR Nabisco, Inc. v. European Community, 579 U.S, 325 [...]

It's no secret that Hollywood is undergoing huge changes. There have been a series of mega mergers in the media space resulting in a new slate of major entertainment companies, [...]

Courts have long grappled with the delicate balance between trademark law and the First Amendment. The Lanham Act seeks to protect consumers against use of confusingly similar trademarks, but the [...]

CASE AT A GLANCE The Court will consider whether it is appropriate under the Lanham Act (15 U.S.C. 1051 et seq.), which authorizes federal registration of trademarks if certain requirements are met, to allow for the creation of a protectable trademark by the appendage of a high level domain name '.com' to an otherwise unprotectable term. Under the Lanham Act, generic terms are not ever registrable as trademarks, even upon a showing of secondary meaning that consumers associate the generic terms with a specific producer, while descriptive terms may be registered based upon a demonstration of secondary meaning. This distinction between generic and descriptive terms ensures that generic terms cannot be monopolized even by entities that devote substantial resources to creating a public association between a generic term and a particular brand. In keeping with this principle, the United States Patent and Trademark Office (the USPTO) examiner and the Trademark Trial and Appeal Board (the TTAB), applying Federal Circuit precedents, denied registration for the BOOKING.COM trademark on the grounds that BOOKING.COM is generic as applied to the relevant services, which allowed customers to book hotel accommodations. On appeal, the district court and the court of appeals nonetheless concluded that a mark composed of a generic term and a top-level domain name can be a descriptive mark eligible for protection upon a showing of acquired distinctiveness and held that, as applied to hotel reservation services, the mark BOOKING.COM had acquired secondary meaning. The Supreme Court will now consider the propriety of the court of appeal's test holding that the timeliness of a petition under Section 315(b) is not judicially reviewable based on the language of Section 314(d) in view of the 'strong presumption' favoring judicial review of administrative actions., United States Patent and Trademark Office, et al. v. Booking.com, B.V. Docket No. 19-46 Argument Date: May 4, 2020 From: The Fourth Circuit ISSUE Does the language of the Lanham [...]

CASE AT A GLANCE The Court will consider whether the text of 35 U.S.C. [section] 145, which provides for a patent applicant who is dissatisfied by the decision of the Patent Trial and Appeal Board with respect to patentability, to seek remedy by civil action against the Director of the United States Patent and Trademark Office (USPTO) in the United States District Court for the Eastern District of Virginia, and which provides for the recovery of '[a]ll the expenses of the proceedings,' allows the Director of the USPTO to discretionarily seek to recover the personnel-related expenses that the USPTO incurs in defending applicant-instituted Section 145 proceedings. The district court held that the phrase '[a]ll the expenses of the proceedings' in Section 145 was not sufficiently 'specific and explicit' to encompass the recovery of USPTO's attorney and paralegal personnel expenses, given the presumption under 'the American Rule... that each litigant pays his own attorney's fees.' A divided panel of the court of appeals reversed the district court, holding that under Section 145, the term 'expenses' should properly include attorney's fees. Acting sua sponte, the en banc court of appeals vacated the panel opinion and reaffirmed the district court's denial of the USPTO's motion for personnel expenses. The Supreme Court will now consider the propriety of the en banc court of appeals holding that Section 145 'lacks the 'specific and explicit' congressional authorization required to displace the American Rule's presumption against fee-shifting, particularly when compared to other Patent Act provisions that expressly authorize shifting of attorney's fees.', Peter v. NantKwest Inc. Docket No. 18-801 Argument Date: October 7, 2019 From: The Federal Circuit ISSUE Does the phrase '[a]ll the expenses of the proceedings' in 35 U.S.C. [section] [...]

Usually buried in footnotes of textbooks and law review articles, the "concurrent use" trademark registration rarely is the topic of a thoughtful legal discussion among practitioners. Sure, it is in [...]

I. Introduction The United States Supreme Court is the final arbiter of all matters involving federal law. Although a federal statute known as the Lanham Act governs many aspects of [...]

A $30 million lawsuit is currently pending in the Northern District of California, which is set to test the boundaries of the Lanham Act and Illinois' Right of Publicity Act. [...]

As consumers, we rely on federal agencies, such as the Food and Drug Administration (FDA), to set standards for and police the contents, accuracy, and adequacy of food and drink [...]

I. Introduction "MAKE VINCE GREAT AGAIN," "THAT'S A CLOWN QUESTION BRO," "VEGAS GOLDEN KNIGHTS," blue football fields, announcer sounds, and hand gestures, are some "traditional" and "non-traditional" source-identifying trademarks and [...]

Trademarks are at the very heart of franchising. Indeed, at the core of every franchising relationship is the license of a trademark. In addition to trademarks constituting a foundational element [...]

In an increasingly global franchising market, it is imperative for franchisors to be able to enforce their agreements and protect their intellectual property in every market they enter. Regardless of [...]

CASE AT A GLANCE A District of Connecticut jury found that Fossil 1) infringed Romag Fasteners' trademark; 2) infringed Romag Fasteners' patent; and 3) falsely represented its products as being from Romag Fasteners. The jury did not find that Fossil willfully infringed, but awarded Romag Fasteners Fossil's profits based upon a finding that Fossil acted with 'callous disregard' for Romag Fasteners' trademark rights. The Federal Circuit reversed because the Second Circuit required a willfulness finding for a profits award. The issue highlighted a circuit split. Six circuits require a willfulness finding to award profits--the First, Second, Eighth, Ninth, Tenth, and D.C. Circuits. Six other circuits--the Third, Fourth, Fifth, Sixth, Seventh, and Eleventh Circuits--do not require willfulness., Romag Fasteners v. Fossil Docket No. 18-1233 Argument Date: January 14, 2020 From: The Federal Circuit ISSUE Is willful infringement a prerequisite for an award of a trademark infringer's profits? [...]

Intellectual property can be enormously important to franchise owners. Trademarks create brand recognition and generate goodwill. Copyrights protect creative works and business operating materials like software, operating manuals, and instruction [...]

Ideas for Franchise Law Journal articles are often sparked by an important case or an author's recent experience. This article hatched from an inquiry posted on the ABA Franchise Forum's [...]

The article reports that the food and beverage companies have faced legal battles from competitors, consumers, and the government, but health-related claims are under increasing scrutiny. It offers information on the cases involving POM Wonderful, LLC (POM) that shows the struggle companies may face in promoting the benefits of the products while complying with federal regulations.

The article focuses on the Tariff Act Section 337 of the U.S.; and the role of U.S. International Trade Commission (ITC) in solving unfair acts and deceptive trade practice (UDAP) statutes. Topics discussed include U.S. International Trade Commission (ITC) as solution to UDAP enforcement problems; rise of unfair and deceptive advertising involving imported goods; and issues relate to counterfeit drugs in the U.S. market.

In intellectual property disputes potentially covered by insurance, several allocation problems surface with respect to settlements and judgments. Some of these include timing of the offenses, what offenses are covered, [...]

TABLE OF CONTENTS Introduction I. The Current State of Trademark Enforcement A. Pre-Litigation Policing Options B. Litigation Policing Options C. Shortcomings of Current Policing Options II. The PTO's Response to [...]

It is a fact pattern that recurs too frequently for the sake of franchisors: a former franchisee, terminated for defaulting on royalty payments or for failing to maintain system standards, [...]

With the proliferation of advertising and social media on the Internet, franchisors have encountered a new variety of issues to consider with respect to the use of their trademarks by [...]

Although U.S. federal courts frequently address whether a monopolist's deception violates the federal competition laws, (1) the legal standards they employ to evaluate such deception differ. Some courts readily condemn [...]

Executory contracts, such as franchise agreements, play a vital role in deciding the success or failure of a chapter 11 case. They often are the most valuable assets of a [...]

The article discusses statutory damages that are related to counterfeit marks under Section 35(c) of the U.S. Lanham Act. Topics include a description of Section 25 of the Lanham Act as well as the definition of a counterfeit mark under it, the interaction of Section 35 to Section 29 of the Lanham Act in regards to counterfeit marks, and a discussion on how courts identify proper statutory damage awards. Also mentioned is the case Playboy Enterprises v. Universal Tel-A-Talk.

The article discusses a court case concerning the Food, Drug and Cosmetic Act (FDCA) in the U.S. In the case POM Wonderful LLC v. Coca-Cola Co., the Supreme Court ruled in favor of the plaintiff and claimed Coca-Cola to have violated the Lanham Act that focuses on food labels. Also presented are details of facts presented by the two entities in the court.

The article provides insights into the use of state-law claims in patent infringement litigation. Topics mentioned include an overview of the tort-law claims in Texas for tortious interference with existing contractual relations and unfair competition, personal jurisdiction over state-law claims, examples of state-law torts in the state, and provision of the Uniform Deceptive Trade Practices Act.

The article discusses the U.S. Supreme Court case Kirtsaeng v. John Wiley and Sons Inc. which deals with the sales of copyrighted goods. Topics mentioned include the definition of gray market goods or parallel imports, claims for copyright and trademark infringement, provisions of the Copyright Act, and the Lanham Act remedies.

The author refutes J. Michael Dady's argument that Oldsmobile dealers have several valid causes of action to sue General Motors for market withdrawal fraud. The author believes that Dady misinterpreted the history of such actions and ignores applicable laws.

The article assesses the state of intellectual property protection of U.S. companies outside the U.S. It discusses international provisions of the U.S. Patent Act to explore cases of infringement of various types of intellectual property such as trademarks, patents, copyrights and trade secrets. It also offers court decisions on the extraterritorial reach of the Patent Law as of March 2013 as guide for transactions of overseas businesses.

The article addresses the issue of unauthorized use of the company trademarks targeted by activist groups in fake websites, social-media sites and press releases by impersonation of the target. The tactic has been termed by an activist group, The Yes Men, as identity correction prank. It examines whether this tactic constitutes trademark infringement and determines conditions under which target companies can invoke the Lanham Act. It discusses parody as a defense strategy of the prankster.

The article discusses a court case Louis Vuitton Malletier S.A. v. Warner Brothers Entertainment, Inc. which deals with the appearance of an alleged counterfeit Louis Vuitton bag as prop in the Warner Brothers film "The Hangover: Part II." The court of the Southern District of New York reviewed the case and granted the motion of the defendant Warner Brothers for dismissal of the Vuitton complaint and highlights the issues on intellectual property litigation concerning the use of a famous mark.

The article focuses on defendant's profits as a form of injunctive monetary relief for the plaintiff in cases of trademark infringement as provided for in the Lanham Act. An overview of various methodologies courts have adopted in calculating a defendant's profit are presented such as incremental approach, full absorption approach and midway between the two approaches. It discusses measures of profits and their calculation including gross profit, incremental profit, and operating profit.

The article discusses the notion of willfulness in trademark damages law in the U.S. It explains that relevant provisions of the Trademark Act of 1946 and the precedents set by different court cases. The article suggests that appellate courts should start to consider whether willfulness should be required in the recovery of a defendant's profits.

The article examines the importance of showing a disgorgement of profits in intellectual property and infringement cases in the U.S. under the Lanham Act. It highlights the decline in the number of circuit courts that continue to require a showing of willfulness to support a disgorgement of a defendant's profits. The article concludes that willfulness will continue to be an important factor in determining the appropriateness of awarding profits in federal trademark infringement actions.

The assertion of claims under the Lanham Act or filing a counterclaim for preliminary injunctive relief are discussed as ways for the franchisor to ward off a preliminary injunction by the franchisee.

Over the past few years, companies have become increasingly interested in Internet advertising because of its ability to target, find, and attract customers. Companies use keyword advertising to increase their [...]

The recent tenth anniversary of the Supreme Court's decision in eBay Inc. v. MercExchange, L.L.C. (1) marks an appropriate time to consider the impact of the eBay decision and the [...]

Royalties strikes occur when franchisees withhold royalty payments as a way of pressuring franchisors. A franchisor has several remedies including termination of the franchise agreement. Case law indicates a franchisee cannot terminate royalty payments and remain part of the franchise system with the right to use the franchise marks or name. Furthermore, case law provides franchisors with remedies strong enough to prevail even when franchisees have asserted their claims prior to cutting off payments.