Posts Tagged: "trademark"

The U.S. Court of Appeals for the Second Circuit today invoked the Supreme Court’s decision in Jack Daniel’s Properties v. VIP Products to affirm a district court’s finding that MSCHF Product Studio, Inc.’s shoe, the Wavy Baby Sneaker, likely infringed Vans, Inc.’s Old Skool shoe. The Second Circuit ultimately affirmed the district court’s grant of a preliminary injunction and temporary restraining order for Vans. The Wavy Baby Sneaker is made by MSCHF, a Brooklyn-based art collective that “has recently focused its artistic expression on ‘sneakerhead culture.,’” according to the Second Circuit opinion. Upon release of the Wavy Baby Sneaker, MSCHF’s co-Chief Creative Officer said in a statement: “’The Wavy Baby concept started with a Vans Old Skool sneaker’ because no other shoe embodies the dichotomies between ‘niche and mass taste, functional and trendy, utilitarian and frivolous’ as perfectly as the Old Skool.”

In September 2023, one man grabbed the authors’ attention with his astonishing story about defending his trademark registration from an opposition by professional trademark attorneys using ChatGPT. His months-long battle began in December 2022, less than a month after the public launch of the now infamous AI chatbot. Nine months later, Jamiel Sheikh — an entrepreneur, tech-guru, and adjunct professor — survived the pressure from formal proceedings and obtained a settlement from his opposer without spending a dime. As young trademark attorneys, we were horrified yet extremely curious about what he had done. This article is the result of speaking with Sheikh about his experience and the evolving needs and expectations of sophisticated legal service consumers.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday vacated and remanded a Trademark Trial and Appeal Board (TTAB) decision that had sustained an opposition to the mark GET ORDAINED, holding that the TTAB had failed to “furnish a reasoned explanation for departing from its established practice of deeming unargued claims waived.”

The Lanham Act provides for special remedies in cases of trademark infringement “involving” the use of a “counterfeit” mark. 15 U.S.C. § 1117(b), (c); 15 U.S.C. § 1127. Absent “extenuating circumstances,” if the use of a counterfeit mark is intentional and knowing, the Act requires entry of judgment of three times the amount of actual damages or profits found, as well as an award of attorney’s fees. 15 U.S.C. § 1117(b). Alternatively, in any case of infringement “involving” a counterfeit mark, the Act provides for awards of statutory damages of up to $200,000; it provides for statutory damages of up to $2,000,000 if the use of the counterfeit mark was willful. 15 U.S.C. § 1117(c)…. In our view, a straightforward interpretation of the Act allows access to the special remedies in cases that involve knock-off products, as well as cases where an identical logo or word mark is used on the same type of product that is in the plaintiff’s trademark registration, even if the defendant’s products and/or their packaging do not resemble the plaintiff’s products.

On November 8, a Central California jury entered a verdict awarding $3.9 million in punitive damages against Internet financial platform ConsumerDirect. The verdict comes weeks after U.S. District Judge James Selna granted a motion for sanctions  after finding that ConsumerDirect fraudulently represented its ownership of unregistered trademarks while obtaining a preliminary injunction in U.S. district court against Array.

The U.S. Court of Appeals for the Federal Circuit (CAFC) this week ordered Apple, Inc. and the U.S. Patent and Trademark Office (USPTO) to respond to a petition for writ of mandamus filed by the owner of the APPLE JAZZ trademark, who has been embroiled in a fight with Apple, Inc. over rights to the mark since 2016. Charles Bertini, who owns APPLE JAZZ, petitioned the CAFC last week, asking the court to direct the USPTO to issue a final decision on its petition to cancel Apple’s mark, APPLE (Registration No. 4088195) for nonuse/ abandonment on the ground that Apple never used the mark in commerce for entertainment services listed in the Registration Certificate.

Oral arguments were held yesterday in Vidal v. Elster, with most observers concluding that the justices are unlikely to grant trademark applicant Steve Elster’s bid to register the mark TRUMP TOO SMALL for t-shirts. Unlike the Court’s recent prominent trademark decisions in Matal v. Tam and Iancu v. Brunetti, there seemed to be little controversy on the part of the justices in Vidal v. Elster over whether the First Amendment is implicated here. Below is a roundup of comments from trademark practitioners on what they thought stood out during the oral arguments.

The U.S. Supreme Court heard oral argument this morning in Vidal v. Elster, the latest in a line of recent cases probing the intersection of the First Amendment and trademark law, following 2017’s Matal v. Tam, 2019’s Iancu v. Brunetti, and this year’s Jack Daniel’s v. VIP Products.  As in Tam and Brunetti, the Justices are being asked in Elster to review the constitutionality of a restriction on federal trademark registrations—this time, the prohibition under Section 1052(c) of the Lanham Act on the registration of living persons’ names without their consent, sometimes called the “Name Clause.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday ruled in a precedential decision  that the U.S. Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) cannot cancel a trademark based on the filing of a fraudulent declaration under Section 15 of the Lanham Act. Section 15 of the Lanham Act deals with acquiring incontestability status for an already-registered trademark. In the present case, the attorney for Great Concepts, LLC submitted a false declaration to the USPTO in an attempt to obtain incontestable status for the mark DANTANNA’S for a steak and seafood restaurant.

A trademark lawsuit filed by popular grocery store chain, Trader Joe’s, against a cryptocurrency platform called “Trader Joe”—which the complaint alleges is a deliberate reference to the supermarket—has come to light this week. Trader Joe’s claims that the crypto firm buried its origin story in order to win international litigation over the domain name, traderjoexyz.com. Trader Joe’s has offered grocery services under the mark TRADER JOE’S for more than 50 years. According to the lawsuit, a co-founder of the crypto company Trader Joe, going by the handle “cryptofish,” admitted in a Substack publication that the company’s name originally derived from the name of the Trader Joe’s supermarket chain.

The U.S. Supreme Court on Tuesday denied a petition asking the justices to weigh in on whether the Lanham Act prohibits “the unauthorized use of a celebrity’s persona advertising third party brands with logos in a commercial motion picture as a trademark infringement?” The case stems from a suit brought by the partner of Christopher Jones, an actor in the 1960s, who was referenced in the film Once Upon a Time . . . in Hollywood (the film), written and directed by Quentin Tarantino. Jones starred in the television series, The Legend of Jesse James, and movies including 3 in the Attic and Wild in the Streets.

Amici have submitted briefs and a response has been filed in recent weeks with respect to U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal’s petition to the U.S. Supreme Court for review of a decision that said the USPTO was wrong to reject a trademark application for the mark TRUMP TOO SMALL. The February decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) held the Office’s application of Section 2(c) of the Lanham Act to reject TRUMP TOO SMALL was unconstitutional. Specifically, the CAFC panel held that “applying section 2(c) to bar registration of [Steve] Elster’s mark unconstitutionally restricts free speech in violation of the First Amendment.”

On September 7, the U.S. Court of Appeals for the Third Circuit issued a precedential decision on trademark functionality doctrine in PIM Brands Inc. v. Haribo of America Inc. In affirming the district court’s grant of summary judgment, the Third Circuit found that PIM’s federally registered trademark to a wedge-shaped candy with green, white and red stripes should be canceled because the mark as a whole identifies the candy’s flavor.

The Center for Intellectual Property Understanding (CIPU) has released a report that gauges the level of intellectual property (IP) engagement at the largest U.S. university entrepreneurship and innovation (E&I) programs. The nonprofit organization found that E&I programs at U.S. universities are increasingly incorporating IP into students’ business education. The report’s goal was in part to evaluate whether the observed increase in entrepreneurship in the United States is improving engagement with or is a result of intellectual property. CIPU wrote, “understanding the level of IP engagement among students enrolled at these schools provides insight into ways to increase support for the nation’s would be entrepreneurs.”

The U.S. Court of Appeals for the Eleventh Circuit yesterday backed a Georgia district court’s finding that Diamond J Wholesale LLC and its owner, Raj Solomon, willfully infringed trademarks owned by Top Tobacco, L.P., Republic Technologies (NA), LLC, and Republic Tobacco, L.P. (Top Tobacco). The ruling upholds an $11 million verdict in favor of the tobacco companies. A jury in the U.S. District Court of the District of Georgia awarded Top Tobacco $11 million in damages against the wholesale company and its owner in March of 2022.