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Brian Focarino

is an Associate in the trademark, copyright and advertising group at Cooley in Silicon Valley, a Young Lawyer Fellow for the American Bar Association Section of Intellectual Property Law, and a Fellow of the Internet Law & Policy Foundry. Prior to Cooley, he was a legal intern for trademarks and digital media law at Google in Silicon Valley, a legal intern for trademark, copyright and Internet law at Verizon, and a judicial intern for The Honorable Randall R. Rader, former Chief Judge of the U.S. Court of Appeals for the Federal Circuit. For more information please visit his firm profile page.

Recent Articles by Brian Focarino

C-Suite Executives More Aware of Trademark Portfolio Risk and Reward

Eight in ten C-level executives believe trademark infringement of their marks is on the rise… Despite their feeling that trademark infringement is on the rise, 66% of organizations stated they had plans to launch new marks within the next year, and 80% said they would likely launch even greater numbers if the trademark clearance process were simpler… Clearance has always mattered, but it matters a lot in today’s rapidly evolving trademark ecosystem. Not only are brand owners increasingly focused on clearing brands across multiple channels in multiple regions, but as more and more marks are adopted and registered, the risk of infringement and dilution is also likely to increase. While protectability may be important from a legal standpoint, 45% of polled executives still indicated competitive positioning was most important to them when adopting a new mark. Another 41% indicated they placed value on whether a mark is “unique.” In the United States, protectability was cited by organizations as the third most important factor for a new mark – after competitiveness and uniqueness. Other mark attributes executives signaled as important included global relevance, versatility and timelessness.

Supreme Court to Consider “Disparaging” Trademarks

The U.S. Supreme Court agreed yesterday to review a Federal Circuit ruling that held unconstitutional a law prohibiting registration of trademarks that “may disparage” people or groups. In a case involving an Asian-American dance band’s bid to register its name THE SLANTS as a trademark, the court will consider whether the bar on registering disparaging marks in Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), violates the First Amendment guarantee of free speech. In the meantime, the Court is expected to rule soon on the Washington Redskins’ cert petition in Pro-Football, Inc. v. Blackhorse, No. 15-1874, challenging a decision of the Eastern District of Virginia upholding the PTO’s cancellation of the REDSKINS trademarks under that same provision.

Trader Joe’s and Extraterritorial Application of the Lanham Act

Trader Joe’s sued Hallatt (d/b/a Pirate Joe’s) for trademark infringement in the Western District of Washington, invoking the court’s federal question and supplemental jurisdiction. Trader Joe’s alleged that: (1) Hallatt misled consumers into falsely believing Pirate Joe’s was authorized or approved by Trader Joe’s; (2) utilized a confusingly similar “South Pacific” trade dress for his Pirate Joe’s store; (3) displayed Trader Joe’s trademarks in connection with the sale of products at Pirate Joe’s; and (4) resold Trader Joe’s products without authorization and without adherence to Trader Joe’s’ strict quality control practices. Trader Joe’s claimed Hallatt’s behavior diluted its trademarks, confused consumers, and damaged Trader Joe’s reputation by associating it with high price, lower quality products. Trader Joe’s sought damages and to permanently enjoin Hallatt from reselling its goods or using its trademarks in Canada.

Brand Owners Watch as Smoke Clears on Plain Packaging Efforts

The major premise of plain packaging is that when stripped of producers’ logos, brand images and promotional matter, tobacco products simply aren’t as attractive to consumers. Reduced focus on logos and images also increases the effectiveness of health warnings. Chan points to research from Australia, the first country to fully implement plain packaging, to show that by stripping tobacco products of gratuitous trademarks and other producer advertising elements, there were 100,000 fewer smokers over the first 34 months after implementation in 2012. Not all groups agree, however.