No Luck Needed for Lucky Brand at the Supreme Court

The Supreme Court yesterday issued its second trademark decision of this term.

In Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc., Case No. 18-1086 (S. Ct. May 14, 2020), the ultimate question before the Court was the applicability of “defense preclusion.” Specifically, the Court considered whether and under what circumstances a defense may be barred in subsequent litigation between two parties. In a unanimous decision, the Court held that any preclusion of defenses must, at a minimum, satisfy the strictures of issue preclusion or claim preclusion. Namely, the causes of action must share a “common nucleus of operative facts” for a defense to be precluded.

This case was the latest twist in nearly 20 years of trademark litigation between Lucky Brand and Marcel Fashions Group involving the parties’ “Lucky” trademarks. In the first case, brought in 2001, Marcel sued Lucky Brand alleging that Lucky Brand’s use of the phrase “Get Lucky” infringed its registered trademark for GET LUCKY. That case resulted in a settlement agreement in which Lucky Brand agreed to cease use of the phrase “Get Lucky,” while Marcel agreed to release any claims regarding Lucky Brand’s use of its own trademarks. Continue Reading

Industry Initiatives to Ensure Access to Intellectual Property Rights Associated With COVID-19 Treatment

In response to the COVID-19 outbreak, all sectors of industry have taken almost unprecedented steps to ensure access to intellectual property, mainly patent rights, associated with COVID-19 treatments. Through these initiatives, it is possible to use the intellectual property to develop COVID-19 treatments without concerns about infringement.

In the United States, the Open COVID Pledge was launched on March 30.[1] “The Open COVID Pledge is a commitment by holders of intellectual property to share their intellectual property for the purposes of ending and mitigating the COVID-19 Pandemic.”[2] Implementation of the pledge requires the pledger (company or individual) to publish a license consistent with the pledge. The Open COVID Pledge website provides several exemplary licenses that specify a royalty-free, worldwide license effective as of Dec. 1, 2019, until one year after the World Health Organization (WHO) declares the COVID-19 pandemic to have ended. Certain versions of the license limit the term to not extend beyond Jan. 1, 2023, unless otherwise extended by the pledger. As of May 13, U.S. companies in various sectors from e-commerce to educational institutions have thus far signed the pledge. Continue Reading

Key UPSTO Initiatives to Ease Burden On Patent Owners and Patent Applicants During the COVID-19 Outbreak

Since the COVID-19 outbreak, the United States Patent and Trademark Office (USPTO) has tried to ease the burden on patent owners and applicants. The key USPTO initiatives are summarized below.

I. Waiver of paper filing requirements for plant patent applications and related correspondence

Normally, the USPTO does not allow the electronic filing of plant patent application and follow-on documents. However, on May 4, the USPTO issued a notice temporarily waiving the paper filing requirement for plant patent applications and follow-on documents. The waiver is in place “until further notice.” For the electronic filing of new plant patent applications, the official USPTO forms must be used. While the temporary waiver is in place, paper filings still are possible. Continue Reading

A Brief Summary of the Key USPTO Initiatives to Speed Up Development of Treatments for COVID-19

Since the COVID-19 outbreak, the United States Patent and Trademark Office (USPTO) has implemented initiatives designed to expedite the grant of patents directed to COVID-19 treatment or to expedite the licensing/commercializing of patents/published patent applications directed to COVID-19 treatments. The key USPTO initiatives are summarized below.

I. COVID-19 Prioritized Examination Pilot Program for small and micro entities

On May 8, 2020, the USPTO announced a pilot program that waives the prioritized examination fee for COVID-19-related patent applications owned by small or micro entities, including universities, nonprofit organizations, individual inventors or a small-business concerns having fewer than 500 employees. Typically, a prioritized examination, which expedites prosecution of a patent application, costs $2,000 and $1,000 for small and micro entities, respectively. Continue Reading

[Insert Yell Here]: Rapper Pitbull Receives Trademark Registration for “EEEEEEEYOOOOOO!” Sound Mark

Platinum-selling music artist Pitbull has received two trademark registrations for a signature yell used in his music. The United States Patent and Trademark Office (USPTO) issued two sound mark registrations, U.S. Reg. Nos. 5877076 and 5877077, for “entertainment services in the nature of live musical performances” and “musical sound recordings; musical video recordings,” respectively. For each registration, the description of the mark reads, “The mark is a sound. The mark consists of a man yelling ‘EEEEEEEYOOOOOO’ in falsetto with ‘E’ drawn out followed by a ‘U’ sound.”

Generally, trademarks are understood to be logos and word marks. While sound marks are not as common, certain sounds are eligible for and do receive trademark protection. According to the Trademark Manual of Examining Procedure, “A sound mark identifies and distinguishes a product or service through audio rather than visual means. Sound marks function as source indicators when they ‘assume a definitive shape or arrangement’ and ‘create in the hearer’s mind an association of the sound’ with a good or service.” TMEP § 1202.15 (citing In re Gen. Electric Broad. Co., 199 USPQ 560, 563 (TTAB 1978)). Continue Reading

SCOTUS Livestreams Oral Arguments on BOOKING.COM Trademark Registerability

On Monday, we listened in real time to the livestreamed Supreme Court oral arguments in the trademark registration case United States Patent and Trademark Office v. B.V.  Because of COVID-19, the arguments were done telephonically, but with the added twist of a live broadcast.

The event itself was remarkable, considering the impact of the pandemic on our justice system. There appeared to be a few issues of finding the “unmute” button and a few lines of garbled speech, but otherwise the proceeding flowed in a clear and orderly fashion. Chief Justice Roberts passed the virtual microphone from the most senior to the most junior justices to give each a turn at questioning. Even Justice Thomas, who rarely speaks at the in-person oral arguments, asked multiple questions. 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 of law cannot be the authors of the works they create in the course of their official duties.”

While it was uncontroversial that state statutes fall within the scope of the doctrine and are not “original works of authorship” under the Copyright Act, the official annotations of the OCGA, which are authored by lawyers employed by LexisNexis under a work-for-hire arrangement with the Georgia Code Revision Commission, posed a closer question. Continue Reading

A Finding of Willfulness Is Not Required for an Award of Profits in a Trademark Infringement Case

The Supreme Court has definitively answered the question of whether a plaintiff in a trademark infringement suit is required to show, as a precondition to a profits award, that a defendant willfully infringed the plaintiff’s trademark. By a unanimous vote, the Supreme Court said NO.

In Romag Fasteners, Inc. v. Fossil Group, Inc., Romag, a manufacturer of magnetic snap fasteners for use in leather goods, brought suit against Fossil, alleging that Fossil was infringing Romag’s trademark by using counterfeit Romag fasteners on some of Fossil’s products. After a jury trial in which the jury agreed that Fossil had acted “in callous disregard” of Romag’s rights but had not acted “willfully,” the district court refused Romag’s request for Fossil’s profits. In doing so, the district court was relying on the then Second Circuit precedent that required a plaintiff seeking a profits award to prove the defendant’s violation was willful. Because not all circuits agreed with the Second Circuit’s precedent, the Supreme Court took the case to resolve the dispute. Continue Reading

Takedown Tips for Brands Battling Unauthorized Distribution During the COVID-19 Pandemic

The hair salons are closed – now what? During this COVID-19 pandemic, many consumers are resorting to buying hair care products online, including products such as permanent hair colorants that are designed solely for use by licensed cosmetologists.

Brands should monitor e-commerce sites for the unauthorized distribution of their salon-only products that are being dumped online. Instructions and warnings are written for trained professionals, not ordinary consumers. The concern is these products are not for the ordinary consumer to use at home without professional help, and improper use can result in serious harm or injury. Continue Reading

3M Joins the Fight Against Rampant Price Gouging

Private enterprise has joined state and local governments in the fight against rampant price gouging during the COVID-19 pandemic. In response to the pandemic, state and local governments across the country have declared states of emergencies, triggering laws prohibiting price gouging. Consumers are not the only targets of price gouging; state and local government procurement offices also are receiving offers for products at exorbitant prices. The outrage over perceived price gouging is often misdirected at the manufacturers and brands behind the products involved. These manufacturers and brands are joining governments’ fights against price gougers.

Last month, medical product manufacturer 3M filed four lawsuits against alleged price gougers in four states: New York, California, Texas, and Florida. The New York defendant’s conduct was pretty egregious.  In New York, the City Office of Citywide Procurement (the NYC Procurement Office) was offered millions of highly demanded N95 respirator masks made by medical product manufacturer 3M at prices 500%-600% higher than 3M’s list prices. Last week, 3M took the matter into its own hands and filed an action in the Southern District of New York against the company that made the offer, alleging that it used 3M trademarks to dupe the NYC Procurement Office into believing the seller was affiliated with 3M. Continue Reading