Posts in Trademark

Can the Lanham Act apply to the conduct of foreign entities occurring entirely outside the United States and, if so, what is the test? The Supreme Court will soon decide this issue in Abitron v. Hetronic, potentially resolving a long-standing circuit split where six different tests presently co-exist. It will mark the first time since the Court’s 1952 ruling in Steele v. Bulova Watch Co. that it has spoken on extraterritoriality as it relates to the Lanham Act. Steele found that the Lanham Act does apply to a U.S. citizen using a registered U.S. trademark on spurious Bulova watches, many of which were bought by U.S. citizens in Mexico and brought back to the United States. Steele did not address whether the defendant’s U.S. citizenship, or his sourcing of parts from U.S. suppliers, were necessary conditions to subject matter jurisdiction. Enter Hetronic.

President Joe Biden has announced that his nominee for the next Intellectual Property Enforcement Coordinator (IPEC) will be Deborah Robinson, head of intellectual property enforcement at Paramount Global. The position has been vacant since Vishal Amin, who was confirmed to the post under President Donald Trump, left in 2021.

Despite being codified more than 20 years ago, there are many open questions regarding application of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) (“ACPA”). Certainly, domain name conflicts continue to evolve given the continued importance of the domain name system to the Internet and the constant changes in both technology and strategies of offenders. But there are also open questions in the application of the cybersquatting law itself, including the applicability and application of statutes of limitations. Does a statute of limitations apply to ACPA claims? If so, how long is it? And from when does it run? This article discusses the relatively small body of law that analyzes statutes of limitations for cybersquatting claims under the ACPA.

Brands — legally protected as trademarks — have value. We all understand that intuitively. Registering brands as federal trademarks also provides significant legal benefits, such as the presumption of ownership, validity, and nationwide priority in the mark. According to a recent study, the number of trademarks a company registers in a given year helps predict that company’s profitability and stock returns for the following year.

The United States Trade Representative (USTR) released its annual Special 301 Report on April 26, adding two countries to the “Watch List”: Bulgaria and Belarus. In total, there are now 29 countries on either the Priority Watch List or Watch List, up from 27 last year. Belarus was added because it passed a law that “legalized unlicensed use of certain copyrighted works if the right holder is from a foreign state ‘committing unfriendly actions.’” This includes the U.S. sanctions imposed on Belarus for its support of Russia’s invasion of Ukraine. “

Today’s hearing of the House Judiciary Subcommittee on Courts, Intellectual Property and the Internet on Oversight of the U.S. Patent and Trademark Office (USPTO) demonstrated some confusion on the part of Congress about the intent of USPTO Director Kathi Vidal’s recent Advanced Notice of Proposed Rulemaking (ANPRM) on changes to Patent Trial and Appeal Board (PTAB) processes, and suggested the Subcommittee members believe she may be exceeding her authority.

Brand owners frequently encounter significant challenges in obtaining federal trade dress registration. The recent ruling in the Eastern District of Virginia confirmed that TBL Licensing, LLC, the brand owner of Timberland boots, was not an exception to this struggle. Unlike a word mark, a product design can never be inherently distinctive as a matter of law because consumers are aware that such designs are intended to render the goods more useful or appealing rather than identifying their source. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 212-213 (2000). In order to obtain a federal trademark registration for a product design, the applicant must establish secondary meaning.

The Dominion Voting Systems lawsuit against Fox News attracted lots of attention. Claims of defamation, damages of $1.6 billion, the role of the First Amendment, and the press’ right to free speech were all key talking points around this lawsuit. What was not a part of these discussions were the implications to Fox’s trademark, FOX NEWS®. This case, even though it just settled, may have just cost Fox News a lot more than the $787.5 million settlement and the subsequent departure of Tucker Carlson—it could cost their name and brand.

Trademark applicant Charger Ventures LLC has lost its appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC) from the Trademark Trial and Appeal Board’s (TTAB’s) finding that SPARK LIVING is likely to be confused with an earlier-registered mark, SPARK. The precedential decision was authored by Judge Reyna. Both marks cover real estate services, but Charger amended its application to specify residential real estate services, whereas the earlier mark specified services related to commercial real estate property. Charger also disclaimed the term “LIVING” in response to the examiner’s request. However, the examiner ultimately issued a final office action refusing the application on the grounds that “a comparison of the respective marks show[s] that they are comprised either in whole or significant part of the term ‘SPARK,’”…and both marks are for real estate services, with ‘overlapping identifications of leasing and rental management services.’”

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal held a virtual conversation with the intellectual property (IP) press on Wednesday to coincide with a one-year anniversary Director’s blog post published today. “If last year was about listening…this is really the year where we’re trying to bring that to impact,” said Vidal. Vidal said the work she did in her first year in office was about providing clarity and sometimes learning from “unintended consequences,” but this year is going to be about implementation based on the feedback they’ve been provided via the various requests for comments, listening sessions and other initiatives the Office has undertaken. “We now have more knowledge to shape real policy,” Vidal said.

Just days after a complaint was filed against restaurant chain Sweetgreen by Chipotle Mexican Grill for trademark infringement, dilution, and deceptive business practices, Sweetgreen has changed the name of its offending product in order to reach possible settlement. Last week, Chipotle filed a complaint against Sweetgreen for naming its new menu item  “Chipotle Chicken Burrito Bowl”. Chipotle Mexican Grill Inc. et al. v. Sweetgreen Inc., case number 8:23-cv-00596, U.S. District Court for the Central District of California. Chipotle has numerous registered trademarks for variations on the word CHIPOTLE in relation to its restaurant and food, including stylized versions in various fonts. Prior to filing the complaint, Chipotle sent Sweetgreen a cease-and-desist letter asking the salad chain to drop the word “chipotle” from the name, which is the usual practice in trademark related lawsuits.

Current artificial intelligence (AI) systems can generate an astonishing variety of content, including text-based works, audio, video, images, programming code, product designs, technical papers, etc. In many cases, the output from an AI system is virtually indistinguishable from that of a human. This trend is expected to continue at an ever-increasing rate in the coming years. Since content solely generated by an AI system is not available for protection under existing intellectual property laws, the following are practical guidelines for human creators who wish to protect content that was created with the assistance of an AI system.

The owner of the trademark for APPLE JAZZ has won his appeal from the Trademark Trial and Appeal Board (TTAB), which dismissed his opposition to Apple, Inc.’s application to register the mark APPLE MUSIC. The U.S. Court of Appeals for the Federal Circuit (CAFC) said the TTAB legally erred in allowing Apple to claim absolute priority for all of the services listed in its application based on a showing of priority for one service. Apple filed Trademark Application No. 86/659,444 for APPLE MUSIC, which the company has been using since 2015, when it launched its music streaming service. Charles Bertini, the owner of APPLE JAZZ, registered his mark in New York state in 1991 for entertainment services but began using the mark well before that, in 1985. Unaware that he did not have a federal registration, Bertini filed an opposition against Apple, Inc.’s federal registration for APPLE MUSIC in 2016, along with an application to register APPLE JAZZ with the USPTO.

Resources such as marketing and branding agencies can help new businesses struggling to find a unique brand name, and lawyers specializing in trademark law can help evaluate infringement and refusal risks and assist in registering a trademark. That said, the costs associated with each of these options are not insignificant, leading some smaller brands and startups to choose a name, do a quick internet search for prior use, and just hope they don’t face repercussions. One of the many issues with this is that as a new business grows and becomes more recognizable, the increased exposure makes it easier for someone with pre-existing rights to find and enforce those rights against the new business. This could include financial penalties and a complete rebrand of the business causing confusion to established customers, which is why choosing and trademarking one’s brand name early is vital. Insert Artificial Intelligence (AI). I

Following the Supreme Court oral arguments in Jack Daniel’s Properties, Inc. v. VIP Products LLC last week, I was reminded of an article I penned years ago for Cardozo Arts & Entertainment Law Journal exploring the boundaries of parodies when up against allegations of trademark infringement and dilution. That article observed: “Many of the trademark parody cases do not spend time analyzing what a parody is. Rather, the sheer majority of cases assume that any attempt at humor while using another’s trademark is presumptively a parody.” It noted that in the face of the essentially blanket parody exception contained in the TDRA, “courts may more heavily weigh the threshold parody question.”