FTC Issues Rule Banning Non-Competes Last week, the Federal Trade Commission’s “Non-Compete Clause Rule” was published in the Federal Register. This rule, which was issued last month and is set to come into effect on September 4, 2024, will have significant implications in terms of non-compete clauses and corresponding contracts if adopted. At their most basic level, non-compete clauses are […] Read Post →
No More Trademark MSCHF: Second Circuit Rules on Applicable Infringement Standard for Expressive Works The Second Circuit Court of Appeals this week upheld a temporary restraining order and preliminary injunction against Brooklyn-based art collective MSCHF regarding its “Wavy Baby” shoe. Central to this case was the question of whether the Wavy Baby shoe—which is a “transformed” version of the iconic Vans Old Skool shoe—was a “work of artistic expression” […] Read Post →
Most People Are DJs: When Being an Attorney Feels Like a Curse As I was getting a haircut last week, I had a revelation: being an intellectual property attorney can be annoying. Most people can enter an establishment and go about their business while enjoying the background music inevitably being played. Me? Not so much. As my barber and I discussed one of our favorite bands (the […] Read Post →
Washington Commanders: So You’re Saying There’s a Chance? “Registration of the applied-for mark is refused” are not exactly words a trademark applicant wants to hear from the USPTO. But are they as daunting as they sound? Over the past week, various news outlets have been reporting how “the Washington Commanders’ trademark has been denied by the USPTO” and asking questions such as “What’s […] Read Post →
Stealing Home: MLB Attempts to Trademark “Boston,” “Houston,” and “Seattle” Boston. Houston. Seattle. What comes to mind? The Boston Red Sox, Houston Astros, and Seattle Mariners? Major League Baseball sure hopes so. Last week, the MLB filed federal trademark applications for “Boston,” “Houston,” and “Seattle” with the USPTO on behalf of the aforementioned teams. Naturally, this raised some eyebrows. How can a baseball league or […] Read Post →
Use Matters: Radio Hosts’ Attempt to Prevent Commercialization of “White Lives Matter” Phrase Unlikely to Succeed Late last year, news broke that ownership of the trademark for the phrase “White Lives Matter,” which has been categorized by the Anti-Defamation League as a “hate slogan,” was transferred to the hosts of an Arizona-based radio show focused on racial justice. These hosts—Ramses Ja and Quinton Ward—agreed to the transfer of the trademark in […] Read Post →
The Oprah Effect: Podcasters Sued for “Oprahdemics” Brand “YOU get a car! YOU get a car! YOU get a car!” Kellie Carter Jackson and Leah Wright Rigueur, however, get a lawsuit. Media giant Oprah Winfrey seemingly strayed from her benevolent ways earlier this month when her media company Harpo, Inc. filed a lawsuit against Jackson and Rigueur, as well as Roulette Productions, LLC, […] Read Post →
Buckeye Controversy: THE Ohio State University Obtains “THE” Trademark Registration As Sarah Luth discussed back in 2019, The Ohio State University (“Ohio State”) filed a trademark application with the United States Patent and Trademark Office for the word “THE.” Last week, the trademark was granted as U.S. Trademark No. 6,763,118. At first glance, this seems absurd. The word “the” is one of the most used […] Read Post →
Tread Lightly: Nike Trademark Lawsuit Raises NFT Questions If you have read Brandon Clark’s January 25th “Copyright Ownership, Transfers, and NFTs” article (and if you haven’t, you should!), you will know that the growth of NFTs, or “Non-Fungible Tokens,” has brought with it a whole host of questions regarding intellectual property. Frequently, these questions center around copyright law. However, as demonstrated by a […] Read Post →
Check it Twice: TTAB Puts Attorney on “Naughty List” for Intent to Deceive USPTO While it is not advisable for anyone to sign something without reading it first, the same is especially true for lawyers, who are paid to focus on the details. As demonstrated by a recent Trademark Trial and Appeal Board (TTAB) decision, inattention to such details can have costly repercussions when dealing with the United States […] Read Post →
Good Save: UK IPO Blocks Passing Off Attempt Earlier this year, a British businessman by the name of James Dear applied with the UK Intellectual Property Office (“IPO”) to register a mark consisting of the name “RONALDINHO,” a famous retired Brazilian soccer player, imprinted on a crest resembling that of legendary soccer club F.C. Barcelona. Dear also applied to register a mark consisting […] Read Post →
Bona Fide Hustlers: Apple Entitled to Cancellation of Social Tech’s MEMOJI Trademark Following Apple’s introduction of its Memoji software in 2018, a company by the name of Social Technologies filed a lawsuit in the Northern District of California alleging trademark infringement and unfair competition. The basis for this lawsuit arose out of Social Tech’s registered MEMOJI trademark. Social Tech had filed an intent-to-use trademark application for MEMOJI […] Read Post →
Walmart “Tryin’ to Break Me Down”: Retail Giant Opposing Kanye West’s Yeezy Trademark As Kanye West once rapped, “We at war with terrorism, racism, but most of all, we at war with ourselves.” Well, now he can add Walmart to that list. Last December, Kanye West’s apparel brand Yeezy, LLC filed a trademark application for a logo “consist[ing] of eight dotted lines . . . arranged at equal […] Read Post →
Monster Mash: Minor League Hockey Team Prevails Over Energy Drink Giant in Trademark Dispute In the spirit of Halloween, the Trademark Trial and Appeal Board recently issued an opinion settling an ongoing dispute between two monsters. These monsters—energy drink company Monster Energy and a minor league hockey team named the Cleveland Monsters—found themselves at odds over the use of the “Monster” trademark. In particular, Monster Energy opposed the Cleveland […] Read Post →
In Da Courts: Second Circuit Affirms Lower Court Ruling in Rick Ross vs. 50 Cent Copyright Feud Earlier this week, the United States Court of Appeals for the Second Circuit affirmed a ruling settling an ongoing dispute between rappers Rick Ross and 50 Cent. In 2015, 50 Cent sued Rick Ross over the unauthorized use of 50 Cent’s hit song “In Da Club” in a promo video. Due in part to the […] Read Post →
Generic.com: SCOTUS Rules that Addition of Top-Level Domain to Generic Term Can Create Protectable Trademark When the United States Supreme Court granted certiorari in U.S. Patent and Trademark Office v. Booking.com back in November, the question was whether a generic term such as “booking” could constitute a protectable trademark when accompanied by “.com.” In an 8-1 decision issued last week, the Court has answered this question with a resounding “yes.” The case before the Court […] Read Post →
Get Lucky: U.S. Supreme Court Sides With Lucky Brand in Overturning “Defense Preclusion” Ruling The U.S. Supreme Court this week overturned a Second Circuit ruling prohibiting jean maker Lucky Brand from invoking a defense against competitor Marcel Fashions Group based on Lucky Brand’s failure to assert the same defense in prior litigation. The ruling followed nearly two decades of litigation between the parties. In 2003, Lucky Brand entered into […] Read Post →
Contract Killers: Coronavirus and “Act of God” Provisions Businesses everywhere, like the individuals that comprise them, are facing an uncertain future in the wake of the coronavirus disease 2019 (“COVID-19”). As each new day brings unprecedented governmental regulations and market disruptions, businesses are increasingly finding themselves unable to fulfill, or enforce, contractual obligations. And with such inability often comes, at least eventually, litigation. […] Read Post →
When YouTubers Cry: Prince Concert Videos Deemed Not Fair Use Last week, U.S. District Judge Leo T. Sorokin granted summary judgment in favor of the estate of the late artist Prince regarding its claim of copyright infringement against Kian Andrew Habib, who had previously posted six Prince concert videos to his YouTube channel. In doing so, Judge Sorokin rejected Habib’s fair use defense, claiming Habib’s […] Read Post →
Generic.com: SCOTUS to Consider Whether a Top-Level Domain Creates a Protectable Trademark Much to the chagrin of companies such as Bayer, DuPont, Westinghouse, and Motorola—former owners of trademark rights in, respectively, the terms “aspirin,” “cellophane,” “laundromat,” and “flip phone”— U.S. law does not protect terms that identify the general nature of a product or service itself rather than the source thereof, or “generic” terms, as trademarks. What […] Read Post →
Walking Alone: Liverpool FC Fails to Obtain Namesake Trademark English Premier League soccer club Liverpool FC may have scraped by with a victory against Sheffield United last weekend, but that luck does not appear to have extended to the U.K. Intellectual Property Office. Earlier this year, the club announced that it had submitted an application with the IPO to register LIVERPOOL as a trademark […] Read Post →
Buying the Cow: Why Branding is Commonly Concealed in TV Shows and Movies Have you ever been watching a TV show and noticed that certain logos on various products were covered with tape or otherwise concealed? Do you know why that is? If you don’t, you’re not alone. In a controversial video posted last month by guitar giant Gibson, the company issued a warning stating that it was […] Read Post →
Big Mac Blunder: McDonald’s Loses European Trademark Rights for Famous Burger Last month, the European Union Intellectual Property Office (EUIPO) issued a surprise decision revoking fast food giant, McDonald’s, “BIG MAC” EU trademark registration in its entirety. The decision was the latest development in an ongoing battle between McDonald’s and Irish fast food restaurant Supermac’s. McDonald’s trouble started in 2014 after they opposed Supermac’s trademark application […] Read Post →
“Hottest Fashion Brand in the World” Sues Children’s Clothing Company for Trademark Infringement In December 2018, high-end streetwear fashion label Off-White filed a lawsuit in the Southern District of New York against children’s clothing company Brooklyn Lighthouse, claiming the Brooklyn company infringed upon Off-White’s trademarks and trade dress. Off-White’s products typically retail between $150 and $2,500 and feature “distinctive graphic and logo-heavy apparel designs.” Such graphics include the […] Read Post →
Toe Caps, Stripes, and Bumpers: Federal Circuit Revives Converse Sneaker Dispute While Christian Louboutin has shown that trademark rights may extend to colors used on a shoe, can the design of a shoe itself also be protected? As the Federal Circuit made clear last week, the answer is yes. For years, sneaker giant Converse, Inc. has sought to protect its brand by claiming trademark rights in […] Read Post →
Bloody Shoes: Christian Louboutin Wins Battle Over Non-Traditional Trademark “These expensive, these is red bottoms, these is bloody shoes.” Does this line, from Cardi B’s breakout single “Bodak Yellow,” call to mind a particular fashion brand? If not, the following line from Lil Uzi Vert’s “The Way Life Goes” might help you out: “My Louboutins new, so my bottoms they is redder.” For over […] Read Post →
The “Sweet and Musky” Smell of Play-Doh: Hasbro Awarded Non-Traditional Trademark When you think of trademarks, what comes to mind? Is it golden arches atop a fast food restaurant? Perhaps the image of a partially-eaten apple emblazoned on the back of a phone or computer? Or maybe it’s the scent of sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of […] Read Post →
State Agency-Sponsored Pizza? TTAB Rules on New Jersey Turnpike Authority’s Trademark Opposition Do you often find yourself asking which highway management state agency has the best pizza? Or do you ever show up to a pizza chain, disappointed it isn’t a highway management state agency? If not, a recent decision by the USPTO Trademark Trial and Appeal Board will likely make some sense to you. In 2014, […] Read Post →
Sail On: Former Commodores Guitarist Fails to Establish Rights in Band’s Trademark Who owns a band’s trademark when that band is composed of multiple people? And more importantly, what rights does a band member have in that trademark when they leave the band? Earlier this week, the Eleventh Circuit addressed these very questions in a case involving legendary funk/soul band the Commodores. The Commodores, famous for chart-topping […] Read Post →