Lesley Grossberg

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.SUCKS’ Luck Sucks: Federal Circuit Affirms Refusal to Register .SUCKS for Failure to Function

On Feb. 2, 2022, the Federal Circuit decided In re Vox Populi Registry Ltd., an appeal from the Trademark Trial and Appeal Board’s (Board) affirmance of the refusal to register a stylized version of the term .SUCKS. Vox Populi operates the registry for the .SUCKS generic top-level domain, offering domain names ending in “dot sucks” … Continue Reading

Blacklist Complaints: A Novel Tool Against Bad-Faith Trademark Applicants in China

Bad-faith trademark filings can pose a painful obstacle to brand owners’ attempts to register and enforce trademark rights in China. Traditionally, trademark owners have needed to file a broad range of defensive applications, oppose dozens of bad-faith filings as they are published, and/or undertake massive invalidation campaigns against existing bad-faith registrations. These actions are resource-intensive … Continue Reading

USPTO Provides Guidance in View of ‘Booking.com’

On June 30, 2020, the Supreme Court of the United States decided USPTO v. Booking.com B.V., rejecting a rule that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is automatically generic.[1] Booking.com arose from the U.S. Patent and Trademark Office’s (USPTO) refusal to register the … Continue Reading

Third Circuit Finds Pocky Trade Dress Functional, Not Protectable

Product configurations, including cookie shapes, are protectable as trade dress only to the extent the product features are incidental, arbitrary, or ornamental aspects that identify the product’s source. Functional product features are never protectable as trade dress. These tenets of trade dress law were recently affirmed by the U.S. Court of Appeals for the Third … Continue Reading

Is Your Trademark Portfolio Brexit-Ready? Steps to Take Now to Ensure a Smooth Transition

While the UK formally left the EU on January 31, 2020, “Exit Day” will occur on December 31, 2020. Are your trademarks ready? This article provides a brief checklist of considerations as we approach the hard exit date at the end of this year. For existing European Union Trade Mark (EUTM) registrations, each registration will … Continue Reading

Booking.com Remand on USPTO Attorney Fee Issue Portends Closure on Circuit Split

As followers of this blog may recall, in December 2019, the Supreme Court resolved a circuit split as to whether the United States Patent and Trademark Office (USPTO) may recover its “attorneys’ fees” (effectively, the pro rata salaries of its legal personnel) in appeals from the Patent Trial and Appeal Board (PTAB) and Trademark Trial … Continue Reading

‘No One Can Own the Law’: Supreme Court Holds Annotations to State Statutes Are Not Protected by Copyright

The Supreme Court issued a 5-4 decision on April 27, 2020, in Georgia v. Public.Resource.Org, upholding the Eleventh Circuit’s ruling that the Official Code of Georgia Annotated (OCGA) is not entitled to copyright protection. The majority’s decision found that the OCGA falls under the “government edicts” doctrine: “government officials empowered to speak with the force … Continue Reading

IPO’s “Gender Diversity in Innovation Toolkit” Aims to Address Disparities in Inventorship

While women are awarded 53% of PhDs, they accounted for only 12% of named inventors on U.S. patents granted in 2016. Fewer than 30% of Patent Cooperation Treaty applications name a woman inventor. After the U.S. Patent and Trademark Office issued a report, “Progress and Potential: A Profile of Women Inventors on U.S. Patents” in … Continue Reading

Fifth Circuit Decision Highlights Trademark Protection for Fictional Elements

As previously reported on this blog, the Southern District of Texas ruled in Viacom International Inc. v. IJR Capital Investments LLC that Viacom could assert common-law rights in the trademark THE KRUSTY KRAB for a fictional restaurant on the animated show SpongeBob SquarePants. When defendant IJR took action to launch a real-life THE KRUSTY KRAB … Continue Reading

Court Finds Infringement of THE KRUSTY KRAB Mark

In Viacom International Inc. v. IJR Capital Investments, LLC, 2017 WL 1037294 (S.D. Tex. Mar. 17, 2017), Viacom successfully asserted common-law rights in the trademark THE KRUSTY KRAB for a fictional restaurant, which appears in the cartoon SpongeBob SquarePants. The defendant, IJR, had filed an intent-to-use trademark application for the mark THE KRUSTY KRAB for … Continue Reading

A Circuit Split at Last: Ninth Circuit Recognizes De Minimis Exception to Copyright Infringement of Sound Recordings

For the past 10 years, the Sixth Circuit Court of Appeals has stood alone in having addressed the issue of whether a de minimis amount of copying used in a song sample constitutes infringement of a copyrighted sound recording. While the Sixth Circuit’s admonition of “get a license or do not sample” has gained little … Continue Reading

New Changes to European Trademark Prosecution

As of March 23, 2016, the “Community Trade Mark” (CTM) is going by a new name: the “European Union Trade Mark” (EUTM),  reflecting the evolution of the European Community into the European Union. By force of Regulation No. 2015/2424, the Office for Harmonization in the Internal Market (OHIM), the body responsible for administering the European … Continue Reading

Federal Circuit Holds Trademark Infringement Must Be Willful to Warrant Award of Infringer’s Profits, Highlighting Continuing Circuit Split

The Federal Circuit, applying Second Circuit trademark law, has weighed in on the issue of whether an infringer’s profits are recoverable absent a finding of willful infringement. In Romag Fasteners, Inc. v. Fossil, Inc. (Fed. Cir. Mar. 31, 2016), a jury had found Fossil liable for patent and trademark infringement of Romag’s magnetic snap fasteners … Continue Reading

In re Tam – Federal Circuit Orders En Banc Review of Trademark Act’s Ban Against Registration of Disparaging Marks

The Slants is a Portland-based band composed of musicians of Asian-American descent who characterize their genre as “Chinatown Dance Rock.” The band’s bassist, Simon Tam, filed a trademark application for THE SLANTS for “Entertainment, namely, live performances by a musical band.” The examining attorney refused registration on the basis that the mark THE SLANTS is disparaging … Continue Reading

Another Step in the Long March from Campbell v. Acuff-Rose toward Fair Use Free-for-All?

Fox News Network, LLC v. TVEyes, Inc., 2014 WL 4444043 (S.D.N.Y. Sept. 9, 2014) TVEyes is a media-monitoring subscription service that “records the entire content of television and radio broadcasts and creates a searchable database of that content.” This service allows subscribers to search keywords or phrases to determine and review an aggregation of instances … Continue Reading

Another Step in the Long March from Campbell v. Acuff-Rose toward Fair Use Free-for-All?

Fox News Network, LLC v. TVEyes, Inc., 2014 WL 4444043 (S.D.N.Y. Sept. 9, 2014) TVEyes is a media-monitoring subscription service that “records the entire content of television and radio broadcasts and creates a searchable database of that content.” This service allows subscribers to search keywords or phrases to determine and review an aggregation of instances … Continue Reading

Lanham Act Claims for Misleading Product Description Can Coexist with FDCA Labeling Regulations, Court Finds

A unanimous Supreme Court (8-0, Justice Breyer recusing) ruled on June 12, 2014 in POM Wonderful v. Coca-Cola that one competitor may sue another for unfair competition under the Lanham Act for allegedly false or misleading product descriptions, notwithstanding that product labeling is regulated under the federal Food, Drug, and Cosmetic Act (FDCA). Coca-Cola’s Minute … Continue Reading
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