Blog

The U.S. Supreme Court in Iancu v. Brunetti, 588 U.S. ___, 139 S. Ct. 2294, 204 L. Ed. 2d 714, 2019 USPQ2d 232043 (2019), found that the ban against trademark registrations for scandalous or immoral matter under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), was unconstitutional because ...

More than a mere intent that a word or phrase function as a trademark is needed to make it a trademark. In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1152 (TTAB 2019) (“The mere fact that a phrase proposed for registration appears on the specimens of record does not establish its use as a service...

“[T]he fair use of a copyrighted work . . . is not an infringement of copyright.” 17 U.S.C. § 107. An “equitable rule of reason,” the fair use doctrine “permits courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is desi...

Section 2(d) of the Trademark Act prohibits registration of a mark that so resembles a registered mark as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, to cause mistake, or to deceive. 15 U.S.C. § 1052(d). Likelihood of confusion unde...

With respect to the removal or alteration of copyright management information (“CMI”), the DMCA requires proof that the defendant knew, or had reasonable grounds to know, that its conduct “will” induce, enable, facilitate, or conceal an infringement. 17 U.S.C. § 1202(b). To establish a CMI violat...

Earlier, in LS3 Inc. v. Cherokee Nation Strategic Programs, L.L.C., No. 20-cv-03555-PAB, NYW (D. Colo. Sept. 29. 2021), the district court had held that Colorado had a strong public policy of not enforcing noncompete provisions, such that non-compete provisions in its LS3's employment contracts w...

“Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. 15 U.S.C. § 1127. Use of a mark may be shown by a trademark license because the use of a licensed mark by the licensee inures to the benefit of the licensor...

A trademark that describes the intended use or purpose of the goods with which it is used is merely descriptive, and may be refused registration under Section 2(e)(1). See, e.g., In re G. E. Smith, Inc., 138 USPQ 518, 519 (TTAB 1963) (finding that KOLD KURE was merely descriptive of foundry core ...

Rule 16 of the Federal Rules of Civil Procedure provides that district courts are to achieve the just, speedy, and inexpensive determination of every action and proceeding. A district court may impose sanctions should a party or its counsel violate these standards under Rule 16. See Fed. R. Civ. ...

In response to a refusal to register a trademark, declarations may be submitted setting forth facts to rebut the grounds for refusal. Cookie-cutter declarations, however, might be given less weight than bespoke declarations. See In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042, 1051 (TTAB 2013) (“p...

Under the doctrine of claim preclusion (sometimes also referred to as res judicata), a final judgment forecloses successive or subsequent litigation of the same claim. Where the parties have had a full and fair opportunity to litigate, this legal doctrine minimizes the possibility of an inconsist...

If you are the subject of a court injunction, then you need to take all reasonable steps to ensure compliance with that injunction. Otherwise, you may be at risk of being found in civil contempt. In the Seventh Circuit, a district court must make a finding of “bad faith, designed to obstruct the ...

Trademark Act Section 2(b) bars registration of a mark that “[c]onsists of or comprises the flag or coat of arms or other insignia of the United States, or of any state or municipality of the United States ….” 15 U.S.C. § 1052(b). This section imposes an absolute bar against registration of a mar...

Failure to disclose a computation of damages as required by Rules 26(a) and (e) may result in a motion to strike a claim for actual damages as a discovery sanction under Rule 37. Rule 26(a) requires a party to disclose “a computation of each category of damages claimed by the disclosing party,” a...

Section 43(a) of the Lanham Act prohibits the use of any “false or misleading description of fact” in promotional statements that “misrepresents the nature, characteristics, [or] qualities” of products or services. 15 U.S.C. § 1125(a)(1). To state a false advertising claim under section 43(a), a ...

In a likelihood of confusion analysis under Section 2(d), two key considerations are the similarities between the marks and the similarities between the goods. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int'l, Inc. v. Kappa Books, Inc., 308...

The U.S. District Court for the District of Nevada recently granted a motion to dismiss a trademark infringement lawsuit involving dueling ‘P'-shaped logos in 46 Labs LLC v. Parler LLC, No. 21-cv-01006-CDS-DJA (D. Nev. Jul. 27, 2022). The logos were similar, but the services were different. The M...

Section 2(e)(1) of the Trademark Act prohibits the registration of a mark which, when used on or in connection with the applicant's goods, is merely descriptive of them. Descriptiveness must be evaluated “in relation to the particular goods for which registration is sought, the context in which i...

The purpose of a protective order is to promote an efficient discovery process, while safeguarding the confidential information of the parties. Violating a protective order could lead to sanctions including contempt of court. In the Seventh Circuit, finding contempt requires clear and convincing ...

For a Section 2(d) refusal of a trademark application, the marks are compared “in their entireties as to appearance, sound, connotation and commercial impression.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973) (“DuPont”); In re Detroit Athletic Co., 903 F.3d 1297 (Fed. Cir. 2018...

In Department of Defense (“DoD”) government contracts, the government may assert certain rights in technical data of the contractor. Technical Data Department of Defense Federal Acquisition Regulation Supplement (“DFARS”) 252.227-7013(a)(15) (2015) defines “technical data” in pertinent part as “r...

“It is axiomatic that copyright does not protect ideas, but only expressions of ideas.” Whelan Assocs., Inc. v. Jaslow Dental Lab'y, Inc., 797 F.2d 1222, 1234 (3d Cir. 1986); see also Mazer v. Stein, 347 U.S. 201, 217 (1954). The line between uncopyrightable idea and copyrightable expression can ...

An application for a trademark registration may be refused as being merely descriptive if “consist[s] merely of words descriptive of the qualities, ingredients or characteristics of' the goods or services related to the mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171 (Fed. Cir. 2004) (quoting E...

A service mark is associated with services, rather than goods that may be associated with those services. For example, “Snap! Crackle! Pop!” is not a service mark because it is associated with breakfast cereal goods, and not with retail services for selling breakfast cereal. A service mark is use...

For a patent claim to be entitled to the priority date of an earlier patent application, the earlier patent specification must reasonably convey to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly &...