Posts Tagged: "trademarks"

Any brand owner with an anticounterfeiting program will tell you that one of their biggest frustrations with online enforcement is that the information online marketplaces keep on third-party sellers is not always accurate or complete. Counterfeit sellers will do anything they can to fly under the radar online, often providing false names, addresses, and other contact information in their online marketplace profiles. Accordingly, it is quite common for brand owners to reach a literal dead end in their investigations of third-party sellers. The Integrity, Notification, and Fairness in Online Retail Marketplaces for Consumers Act (the “INFORM Consumers Act”), recently signed into law as part of the Consolidated Appropriations Act of 2023, aims to make it more difficult for counterfeit sellers to fly under the radar by requiring online marketplaces to collect, verify, and disclose certain information from high-volume third-party sellers to consumers.

Luxury fashion brand Hermès won their trademark lawsuit against Mason Rothschild, the creator of the non-fungible tokens (NFT) MetaBirkins, on Wednesday. The trial was the first legal case that tested the bounds of artistic expression in NFTs against the country’s intellectual property laws. A nine-member New York jury ordered Rothschild to pay Hermès $110,000 for infringing on the luxury brand’s trademark, and $23,000 for cybersquatting. The jury ruled that Rothschild had to pay the cybersquatting damages because he used a domain name confusingly similar to that of Hermès.

The American Bar Association (ABA) filed an amicus brief on February 3 with the U.S. Supreme Court asking the Court to clarify issues related to the application of the Lanham Act to trademark disputes that cross international borders. The ABA filed the brief in the Abitron Austria GmbH v. Hetronic International, Inc. trademark case, in which the U.S. Court of Appeals for the Tenth Circuit affirmed a $90 million damages award for trademark infringement based on infringement that occurred almost entirely outside of the United States.

Last November, the U.S. Supreme Court granted a petition for writ of certiorari filed by famed whiskey brand owner Jack Daniel’s Properties. The petition filed by Jack Daniel’s appealed the U.S. Court of Appeals for the Ninth Circuit’s March 2020 ruling that a “Bad Spaniels” dog toy marketed by VIP Products was an expressive work entitled to First Amendment protections against trademark infringement liability under the Rogers test. On January 18, a series of 16 amicus briefs were filed with the Supreme Court, the vast majority of which urged the nation’s highest court to reverse the Ninth Circuit’s ruling and limit the application of the Rogers test to clearly artistic works and exclude consumer products that happened to have some humorous expression. Several amici also pushed back on the Ninth Circuit’s ruling that VIP Products’ use of Jack Daniel’s marks was noncommercial.

Engagement in proactive IP litigation by global companies is the bedrock of trademark enforcement, and Adidas is no stranger to this strategy. Since 2008, this athleisure accessories manufacturer has consistently protected its intellectual property by signing over 200 settlement agreements and fighting more than 90 court battles. Most recently, on  January 12, 2023, Adidas’s efforts to sue Thom Browne Inc., a Zegna subsidiary, for trademark infringement of its ‘three-stripes logo’ was foiled. The damages claim of around $7.8 million, or £6.4 million, backfired on the German sportswear giant when it was denied by an eight-person Manhattan jury.

“Non-fungible tokens (NFTs),” “blockchain,” “metaverse,” “web3,” and “artificial intelligence (AI)” are buzzwords that solicited significant discussion and development in the area of intellectual property (IP) law in 2022. This overview covers five key topics in IP law that affected the growth and mainstream adoption of these emerging technologies last year.

This year saw an increased focus on the extraterritorial application of the Lanham Act, setting up a showdown at the Supreme Court in 2023. The last year also saw cases pressing the intersection of the Lanham Act with the First Amendment and artistic expression—both in the physical world and in the metaverse—and some rulings that will help clarify the likelihood of confusion analysis in various circuits.
As 2022 comes to an end, we look forward to what 2023 has in store.

The U.S. Court of Appeals for the Eleventh Circuit earlier this week ruled in favor of Viacom in a trademark fight over the media conglomerate’s Floribama Shore reality television show. MGFB, the company that filed the appeal, owns the “FLORA-BAMA” trademark and owns and operates the Flora-Bama Lounge on the border of Florida and Alabama. The company filed a cease-and-desist letter in 2017 when Viacom first aired Floribama Shore in 2017. The appeals court judges cited the First Amendment as protecting Viacom’s right to artistic use of “Floribama”. “Creative works of artistic expression are firmly ensconced within the protections of the First Amendment,” wrote the judges.

Worldwide IP filings increased by 3.6% in 2021, according to a report published November 21 by the World Intellectual Property Organization (WIPO). The increase came during a turbulent time for the world economy, at the height of the COVID-19 pandemic, as well as a global economic downturn. The biggest increase in patent filings was in Asia, where 67.6% of worldwide patent applications were filed. The United States saw a 1.2% decrease in filings and a 1% increase in trademark filings. Trademark applications grew at a much faster rate than patent applications, with a 5.5% in trademark filing activity. Industrial design filing activity also rose by 9.2% with the largest uptick again in Asia. China saw high rates of growth and is a global leader in sheer numbers across all indicators.

The U.S. Supreme Court yesterday granted a petition filed in August this year by Jack Daniel’s Properties, Inc. seeking clarification on whether the First Amendment protects VIP Products, LLC, a maker of dog toys that made humorous use of Jack Daniel’s trademarks for commercial purposes, against claims of infringement and dilution. The High Court previously denied Jack Daniel’s petition in January of 2021, and the U.S. Court of Appeals for the Ninth Circuit “summarily affirmed” the district court’s summary judgment ruling for VIP on remand. In its ruling in 2020, the Ninth Circuit said VIP’s dog toy mimicking a Jack Daniel’s whiskey bottle was an expressive work entitled to First Amendment protection, reversing the district court’s initial holding that the toy infringed and diluted Jack Daniel’s marks and remanding the case back to the district court for a determination on the merits of the infringement claim.

The United States Court of Appeals for the Ninth Circuit on Tuesday affirmed the dismissal of Metamorfoza’s trademark infringement and unfair competition claims against Big Funny over a trademark that included the disclaimed phrase “Museum of Illusions.” Big Funny also cross-appealed the district court’s denial of its motion for attorneys’ fees, but the Court of Appeals agreed with the district court, finding that it had acted within its discretion in denying fees under 15 U.S.C. § 1117(a) because the case was not “exceptional.” Big Funny and Metamorfoza both operate multiple museums called “Museum of Illusions” in the United States. Big Funny operates museums in California and Florida, while Metamorfoza has museums in New York, Missouri and Texas.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming the grant of a narrowly-tailored preliminary injunction to SoClean, Inc., a medical device company that makes CPAP machines, based on trademark infringement claims against Sunset Healthcare Solutions, Inc. SoClean alleged in 2021 that Sunset infringed its U.S. Trademark Registration No. 6,080,195. The registration covers the configuration of replacement filters for its sanitizing devices.

The U.S. Patent and Trademark Office’s (USPTO’s) Trademark Trial and Appeal Board (TTAB) ruled in favor of Sony on October 28 in a decision that sustained the corporation’s opposition to an  application to register the mark SONISTREAM for a streaming platform. The TTAB ruled last Friday that the “SoniStream mark is likely to dilute Opposer’s famous SONY mark by blurring.” The Board found that SoniStream is similar enough in name “to trigger consumers” of SoniStream to think of the Sony brand. Of the six factors used to evaluate the case, the TTAB found that four were likely to dilute the Sony brand.

Trust and estate attorneys regularly advise their clients to enter into prenuptial agreements to protect the valuable assets each spouse brings to the marriage as well as how to distribute community property in the event of a divorce. Brand collaborations with celebrities, influencers or other brands are much like marriages, but brand collaborations are even more unlikely to last. Why not plan for the split, whether it be a conscious uncoupling or a Page 6 kind of divorce, with a prenup? The high profile split between Adidas and Ye (fka Kanye West) reminds us that collaboration agreements should not only plan for the best of times, but it is worth setting up the agreement to account for a sudden and troubling end.   

Security issues have long dogged the U.S. trademark system. Unscrupulous operators – sometimes competitors, sometimes bad actors with nothing better to do – too frequently muck up the application process by modifying those filings or filing improper submissions. This is no small problem given the U.S. Patent and Trademark Office (the USPTO) remains a mammoth and international hub of trademark filings. In fiscal 2021, trademark application filings topped 943,000, a record high. This marked an increase of about 28% from the prior year, with that increase driven primarily by Chinese filers.