Lesley Grossberg

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

By Lesley Grossberg on July 16, 2020 Posted in Patent

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

By Christina Moser and Lesley Grossberg on May 1, 2020 Posted in Copyright, Copyright Infringement, Federal Circuit

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

By Lesley Grossberg on November 14, 2019 Posted in Patent

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

By Lesley Grossberg on April 24, 2019 Posted in Trademark

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

By Lesley Grossberg on May 12, 2017 Posted in Trademark

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

By Lesley Grossberg on June 21, 2016 Posted in Copyright Infringement

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

By Lesley Grossberg on May 31, 2016 Posted in Trademark

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

By Lesley Grossberg on April 20, 2016 Posted in Trademark

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

By Lesley Grossberg on June 16, 2015 Posted in Copyright

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

Trademark “tacking” questions should go to a jury, SCOTUS rules

By Lesley Grossberg on January 30, 2015 Posted in Uncategorized

The Supreme Court issued its first substantive trademark decision of the current term yesterday in Hana Financial, Inc. v. Hana Bank. The district court had charged the jury with determining whether Hana Bank’s original mark, HANA OVERSEAS KOREAN CLUB, had the same commercial impression as its revised mark, HANA BANK. The jury found that it … Continue Reading

Trademark Trends: Back-to-Back Arguments in Trademark Cases at SCOTUS

By Lesley Grossberg on December 19, 2014 Posted in Uncategorized

The Supreme Court heard oral argument in trademark cases on consecutive days this month. On December 2, 2014, the issue of whether a finding by the Trademark Trial and Appeal Board (TTAB) of likelihood of confusion precludes the issue from being re-litigated in a trademark infringement action was presented in B&B Hardware, Inc. v. Hargis … Continue Reading

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

By Lesley Grossberg and Robert Welsh on October 21, 2014 Posted in Copyright

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?

By Lesley Grossberg and Robert Welsh on October 21, 2014 Posted in Copyright, Copyright Infringement

Third Circuit Rejects Presumption of Irreparable Harm in Lanham Act Cases

By Lesley Grossberg on September 23, 2014 Posted in Copyright

The Third Circuit ruled in Ferring Pharmaceuticals v. Watson Pharmaceuticals on August 26 that “a party seeking a preliminary injunction in a Lanham Act case is not entitled to a presumption of irreparable harm but rather is required to demonstrate that she is likely to suffer irreparable harm if an injunction is not granted.” (Slip … Continue Reading

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

By Lesley Grossberg on June 16, 2014 Posted in Uncategorized

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