Secondary Trademark Infringement: Don’t wait for the movie!

Critics agree:  Buy the Jane Coleman and Griff Price’s Secondary Trademark Infringement from Bloomberg BNA –or you’re liable to miss the big one!

Secondary Infringement

Best of 2011: “Life rights”? (Making things with life?)



First posted May 23, 2011. Pittsburgh Trademark Lawyer Daniel Corbett brings us an NBA star’s attempt at a four-point shot:

Post-relationship drama takes many forms, but federal court litigation under the Lanham Act isn’t typically one of them– unless you’re Miami Heat forward Chris Bosh.  Bosh recently filed suit against the producer of VH1′s “Basketball Wives,” which, as Bosh correctly notes, comprises about as many ex-wives and/or girlfriends as it does “basketball wives” in the term’s purest sense. At any rate, Bosh is claiming that his ex-girlfriend and the mother of his child is violating his trademark, publicity, and “life rights” by using his name/likeness in connection with the show.  The lawsuit claims that  “[the show] provides these women with a vehicle and worldwide platform” to use the names of players without permission for commercial gain.”

Yes, “using the names . . . without permission for commercial gain” — that’s pretty much dog-bites-man in the IP / right of publicity arena these days.  That’s not blogworthy.

No, you guessed it:  The four-point-shot is the new and exciting proposed tort of “life rights”!  My first inclination, as a child of the ’60’s — no, I mean, really, I was a child then, not that I was born in the ’50’s but kept acting like a child in the ’60’s — was this:

But evidently, no. Read More…

Functionality in trademark and patent law

The TTABlogWhat with all the hoopla over controversial and headline-making cases, it’s tempting sometimes to forget about the need to drill and to stay up to date on the everyday craft of trademark law.  So when John Welch sees fit to pause from keeping tabs on the TTAB and share his thoughts on a fundamental topic in the art, not paying heed may constitute a prima facie departure from the standard of care for anyone unable to demonstrate that they’re as good at this stuff as he is.

Which, of course, you may be.  And indeed people who are very good at this stuff tell me they read this blog, presumably for entertainment.  Be that as it may, here’s what I, for my part, couldn’t have told you before I read John’s post of March 19, 2015, entitled, “Some Thoughts on de facto and de jure Functionality,” which begins as follows:

FunctionSection 2(e)(5) of the Lanham Act bars registration of a proposed mark that “comprises any matter that, as a whole, is functional.” The shape of a product or a feature of a product may have a function –i.e., it may have utility – but still be registrable as a trademark. In other words, the product or feature may be de facto (in fact) functional but not de jure (in law) functional.

Confusion over these concepts sometime arises when, in considering the registrability of a product shape, the TTAB or a court encounters design patents or utility patents that are related to the product. Utility patents, as the name indicates, concern things that have utility: “any new and useful process, machine, manufacture, or composition of matter.” Design patents concern the ornamental features of useful objects: the way things look rather than the way they work. Thus both utility and design patents are directed to things that are useful (or de facto functional).

A particular device may be the subject of a both a utility patent, because it incorporates a useful invention – say, a corkscrew that operates in a new way – as well as a design patent, because the device has a novel and nonobvious shape – suppose the corkscrew is shaped like a kangaroo. Read More…

B&B Hardware: Beyond Nuts and Bolts

SealtiteI’d promised I’d wait on this, but I couldn’t, and you’ll see why.  Here’s my take on today’s Supreme Court decision in B&B Hardware v. Hargis Industries Inc., which — notwithstanding my reluctance to be accused of being that hammer to which everything looks like a nail — may very well have implications for some of the pending litigation involving that popular topic of late, Section 2(a) of the Lanham Act.

First, the analysis of the main holding.

I was struck by the court’s point that Congress could not have been too concerned about making efficiency or cost-effectiveness a priority in the registration process when it authorized de novo challenges of TTAB decisions under 15 U. S. C. §1071(b).  Having established that there was nothing in the Lanham Act that made TTAB decisions different from other agency determinations for purposes of issue preclusion principles, the court then stated that preclusion based on TTAB determination could be applied following those principles.  In other words, there is preclusion where “the issues in the two cases are indeed identical and the other rules of collateral estoppel are carefully observed.”

What the Eighth Circuit had said, of course, was that under these principles, preclusion did not apply, because the “rules” were not be the same: different standards are applied in evaluating likelihood of confusion in inter partes proceedings as opposed to District Court actions.

Certainly I agree with the Supreme Court that the different circuits’ formulations of the likelihood of confusion standards and the way likelihood of confusion is understood and applied in the PTO do not constitute different “rules”; practitioners know these are all essentially different formulations of the same test – they certainly should be!

My concern was far more with the procedural differences between the two kinds of proceedings.  The B&B decision deals with this issue in rather cursory fashion, stating that

The ordinary law of issue preclusion, however, already accounts for those “rare” cases where a “compelling showing of unfairness” can be made.

This formulation is problematic, because, while there may be (I hope) exceptions, there are few times a court is going to be inclined to find “compelling unfairness” in a TTAB determination.  Moreover, the argument, after all, is not about unfairness, but differentness.  Under the Supreme Court’s analysis, however, there’s no room for that; if there’s preclusion, it’s presumptive, and you need that “unfairness” level of badness to uproot the TTAB’s ruling.  That’s a problem.

As the court says, however, there is a solution for a party worried about how a TTAB finding on likelihood of confusion might affect its rights:  De novo review of TTAB decisions in the District Court, with full evidentiary submissions — with all the expense that entails.  The only alternative appears to be amendment of the Lanham Act, which is probably one thing that should be considered to establish a streamlined, economical quality of PTO proceedings the Supreme Court has determined is not a policy of the Act now.

So… what was I saying about Section 2(a)?   Read More…

Lug me tender

Originally posted 2010-02-24 23:56:49. Republished by Blog Post Promoter

Doctors (J.D.) Detroit?

Should a law school be tendering seven figures of money to a minor league baseball team for stadium naming rights?  That is certainly a novel question.

I tackled the whole concept of branding, memory and stadium names in the context of the Mets’ Citi Field deal a few years ago–but a bank is one thing.  Heck, these guys know how to make record profits just by threatening to go out of business!  So who am I to say?

But a law school?  That’s something I know a little about!

And… with all due respect… should the law school that does that be Thomas M. Cooley Law School in Michigan?  Well, perhaps if it would be any school it would be Cooley, which has always marched to the sound of a different drummer.

A very, very different drummer.  I once wrote an article, or perhaps just a short roundup-type item, about Cooley when I was contributing editor for Student Lawyer magazine, but I can’t get my hands on the cuneiform tablets just now.  I do remember that it was the school that actually did things “the old fashioned way”–they actually admitted two or three times the number of students who were really going to make it through law school, and they actually kicked out people who couldn’t cut it.  So, yes, they have always been very funky, original and daring over there.

And in that context, now let’s see the Wall Street Journal Law Blog and the stadium story: Read More…

Linked for eternity

Scott D. Simon

Scott D. Simon

Guest post
When Goetz Fitzpatrick‘s Scott D. Simon circulated news about a new service that manages the problem of citations to hyperlinks that may or may not exist in the future, I took notice.  I’ve had my attention drawn to this problem in connection with my seemingly endless efforts at cleaning up hundreds of dead links in connection with the posting of “best of” content to celebrate the tenth anniversary of the blog, and wondered about it anew as I prepared this CLE paper a few weeks ago.

On these grounds, and considering the subject in general to be sufficiently close to topical anyway, I asked Scott if he’d be interesting in fleshing out his alert into a guest post for publication here, which he generously agreed to do.  Then I posted it right here.

According to a 2014 study conducted at Harvard Law School,

more than 70% of the URLs within the Harvard Law Review and other journals, and 50% of the URLs within United States Supreme Court opinions, do not link to the originally cited information.

The New Yorker piece where I read those statistics describes a website called that allows you to create a permanent link to a URL you cite in your brief so that anyone later reading your brief (or a court decision citing that URL) will be brought to the permanently archived version of the link rather than to a URL that may no longer exist. Read More…

Best of 2011: Poor eBay!

First posted April 27, 2011.ebay-logo-02

News item:

eBay just reported first quarter earnings today posting revenue of $2.5 billion, an increase of 16% from the same period of 2010. eBay’s net income on a GAAP basis of $475.9 million, or $0.36 per diluted share, and non-GAAP net income of $619.0 million, or $0.47 per diluted share, representing a 12% increase compared to the same period of 2010. The retail giant narrowly beat analyst expectations, which were 46 cents per share on revenues of $2.48 billion. eBay says that the first quarter increase in earnings was due primarily to sales growth and a lower effective tax rate.



Nice!  I wish I had one of those.

But it does bring to mind the following bunch of words I do have, and which I wrote on this very place in space, on the topic of eBay’s essentially unconditional non-liability for contributory trademark infringement in connection with the sale on eBay of counterfeit goods: Read More…

Kimberlin v. National Bloggers Club 12(b)(6) Decision: A good start

If you’re following this wacky case, or even if you’re just a beginner, you will find the decision below on the defendants’ motion to dismiss the complaint under Federal Rule of Civil Procedure 12(b)(6) very interesting, at the very least.

Your blogger made the motion that resulted in this order on behalf of a bunch of these defendants — Patterico (Pat Frey), Liberty Chick (Mandy Nagy), Ace of Spades HQ and, kind of, in a moral, spiritual sense, Ali Akbar — as it happens*, so to me it’s so very interesting that it gets to be this post.  Unfortunately our work here is not yet done, but this is a good start.

Thanks are due to the esteemed Maryland attorney Bruce Godfrey who stepped up to act as pro bono local counsel when the majority of the organized bar was too chicken — in one case, so shamefully chicken that even I have not had the temerity to write about it yet — and was a man where a man was needed when the other million lawyers in America ignored our very public plea for help.

Speaking of which, thanks, of course, to the ever-lovin’ Popehat — the real West Coast Popehat, i.e., the formidable (in so many ways) Ken White, a very busy guy who found time to help out with this piece of business too, both behind the scenes (unofficially but very much for really) and in the ether.

Ken and whatsisname have been working this beat, and this prestigious client (Pat Frey), together for a while now.   Read More…

Hey, 19

Originally posted 2008-02-02 20:27:33. Republished by Blog Post Promoter

product-19.jpgMore on the dumb trademark-abuse story of the season (we’ve dealt with the SUPER BOWL and trademark overkill here and here already). Now there’s this SUPERcilious beaut [link to 2008 story is gone — RDC]:

After the Lakers won two straight NBA titles in the late-80’s, their coach Pat Riley trademarked the phrase “three-peat” so he could cash in on merchandising associated with their third straight crown. The Pistons took them out in the Finals, though, and Riles had to wait for the Bulls to achieve the feat before seeing any return on his craftiness.

The Patriots spit on that history. The New York Post reports this morning that the team has filed paperwork to patent trademark the phrases “19-0″ and “19-0 Perfect Season” in advance of this Sunday’s Super Bowl matchup with the New York Giants. And, lest you think they waited until they were in the title tilt before moving forward, the team actually filed the applications three days before the AFC Championship game was played. The Pats say that the move is strictly business and not motivated by arrogance.

Nor by the remotest understanding trademark law. We’ve already dealt with the sorry concept of seeking registration of free-floating catchphrases and similar nonsense. Hat tip to Nick Daly, who writes, “I was watching NY1 this morning and Pat Kiernan covered this story, saying “if they can trademark a number, then I want 5.” The number “5,” or five numbers? After all, if you can own the trademark to any you shouldn’t have a limit. We’re not running out of them or anything — unless you including running out of “fives,” 19’s or, perhaps, googols.

UPDATE:  Read and enjoy this law review article:  “OPPORTUNISTIC TRADEMARKING [sic] OF SLOGANS: IT’S NO CLOWN ISSUE, BRO.”

Another highly derivative blog post

Does this work for you?

Does this work for you?

We learn from our mistakes.  Far better, however, is to learn from the other guy’s mistakes.  Here by “our” and “other guy” I am referring to people engaged in the practice of commercial law.

Take, for example, this teaching moment, written up by Pamela Chestek:

I like the cross-over of different legal disciplines. Ownership issues arise as part of an infringement claim, but also come up in trusts and estates, mergers and acquisitions, taxation, and bankruptcy. These cases can end in an unexpected way, sometimes happening because there is a failure to understand exactly how the various trademark, copyright and patent rights work.

To distill it down to its essential elements, we have a case where a company, defendant Priva Security Corp., had granted to co-defendant Pro-Marketing Sales (PMS) a security interest which included an interest in “Copyrights”:

all copyrights arising under the laws of the United States, … whether registered or unregistered, published or unpublished, now or hereafter in effect and all registrations and recordings thereof …

The  agreement also gave a security interest in “Copyright Licenses,” defined as:

all agreements providing for the granting of any right in or to any Copyright (whether the Company is licensee or licensor thereunder) and the granting of any right in any derivative work based upon any copyright….

Priva, in financial distress and as part of a Chapter 11 reorganization, granted plaintiff Cyber Solutions International, LLC (CSI) a license to its “technology,” which for our purposes was the copyright to a functionality called “SKSIC.”  PMS didn’t object to the license and its senior interest was acknowledged in the license agreement.

The license to CSI was very generous; it gave CSI a worldwide, perpetual license to the copyright and allowed CSI to “pursue” it’s own improvements, although Priva would be the exclusive provider of services for engineering, design and customization. In both cases, whether developed by CSI or Priva, CSI ended up the owner of the copyright.

And there were improvements; a new product, “TRSS,” was developed. Although the court doesn’t describe it using the legal term of art, it appears that TRSS was a derivative work of SKSIC.

Priva didn’t recover from its financial distress so PMS elected to exercise its right to own the technology pursuant to the security agreement. Which is what creates the legal question—who owns the copyright in TRSS? Does PMS, by virtue of its security agreement in the copyrights and/or copyright licenses, or does CSI, by virtue of the express grant of ownership in the license agreement?

Now that I’ve copied most of Pam’s blog post, Read More…

Best of 2011: Dubious assignations

First published on March 8, 2011.

Duets BlogSteve Baird generously linked back to this LIKELIHOOD OF CONFUSION® post writing about the trademark status of some singer’s signature at the superb, now-two-years old Duets Blog.  His novel question:

Do you suppose TS fans have an expectation that the Taylor Swift signature trademark represents her actual, personal signature? If so, would their decision to purchase goods be affected if the signature was actually penned by another? Probably not, but if so, would that subject the trademark registration to cancellation on deceptiveness grounds? Or, on the other hand, do fans assume and expect the trademark signature to be part of the artist’s professional handling, more like they would view assistance from a make-up artist, hair stylist, and/or airbrushing expert?



Well, been there, done that!  Remember this one?  (It’s older than two).  This issue was some guitar player’s signature: Read More…

The ACLU’s strange bedfellows

Redskins Wrong But LegalHere’s some news:  The American Civil Liberties Union says the Redskins are wrong, damned wrong — but they’ve got every right in the world to be that way.

They even filed an amicus brief in the District Court in support of the Redskins’ right to be wrong.  Amicus briefs at the trial level are quite unusual.

The ACLU’s brief, and an earlier blog post on its site, both make explicit reference to the appeal of the PTO’s rejection of The Slants’ application to register their trademark, THE SLANTS, and to the inconsistency of the PTO in permitting “reappropriation” of derogatory terms when it comes to certain categories but not others: Read More…