THE SLANTS — Federal Circuit brief

Likelihood of extrusion

Originally posted 2011-04-18 14:15:24. Republished by Blog Post Promoter

Reprinting my annual Passover post, adjusted for days of the week as they come out this year:

I’ve been hit by pre-Passover preparations, plus the need to front-load the making-a-living part to make up for the fact that I will be “out of pocket” Tuesday and Wednesday and essentially on mission-critical-only duty for most of the rest of the week, too.

Here’s a nice thought on the topic, appropos for our blogging lifestyle:

The 21st century is certainly a marvelous time in which to live. Space exploration, computerization, the taming of vicious diseases are all truly amazing feats. But we also suffer more burnout, mental exhaustion, attention deficit disorders and high blood pressure than ever before. They are no doubt the effects of our own hi-tech servitude. Like it or not, we’re ruthlessly on call to someone for something all the time. And, we call it “normal.”

Well, on Passover everything comes to a halt. It begins with the destruction of the chametz, leavened foodstuffs, our daily bread. What could be more symbolic of the mundane, ordinary and routine than a piece of bread? We scour our homes and clear every morsel. The “normal” is simply unacceptable for eight days each year. Then we turn off our cell phones, close our places of business and sit down to a Seder with all the time in the world to discuss the Exodus experience. And, while many of us cringe at the seeming never-ending questions our kids can annoyingly ask the rest of the year, on this night they’re encouraged to ask the four questions, along with any others they might have.

As for the rest of Passover, the simple commandment prohibiting us from eating leavened foods automatically creates a huge paradigm shift for a whole eight days whereby our regular routines go out the window. We are free of fast food restaurants. Free from the mundane obligations and vicissitudes of life. Passover is freedom indeed, from the spirit-stunting routines of modern life.

The fact is that each and every week we’ve simply got to take a day off just to catch our breath. That day is Shabbat. But in order to “clean house” and truly free our inner selves from the overwhelming clutter of life lived in the fast lane, we need the extra-strength, paradigm shifting power of Passover.

If you are Jewish, have a sweet and meaningful Passover!

Explicitly yours

American University Law ReviewTomorrow I will be on a panel called “Warning, the Following Material May Be Explicit: Addressing the Efficacy of §2(a) of the Lanham Act” as part of American University Law Review’s annual Federal Circuit Symposium. It’s being held at Arent Fox, whose web page promoting the event says:

The American University Law Review’s Volume 63 Federal Circuit Symposium will assess the Lanham Act’s section 2(a) bars to registration for immoral, scandalous, and disparaging marks. Prominent legal academics, practitioners, and a Trademark Trial and Appeal Board judge will discuss relevant cases, the provision’s varying effects, and its remaining value.

You can also register at the link and you should do that ASAP!

Obviously I will once again be discussing the Federal Circuit appeal by our client, Asian-American musical performing ensemble group The Slants, from the TTAB decision affirming the denial of a trademark registration for THE SLANTS on the ground that they are Asian-Americans.

I had the opportunity to present on this topic in Cleveland exactly a month ago.  That, however, was an hour of stand-up; this is a panel, which mostly features sitting and nodding.  My fellow panelists are Jim Bikoff from Silverberg, Goldman & Bikoff LLP, Professor Michael Bressman of Vanderbilt Law School and — yes, Finnegan again! – Doug Rettew of Finnegan, Henderson, Farabow, Garrett & Dunner.  The program starts at 1:00 PM with my panel, which will last from 1:00-2:30.

The second panel features my friend Professor Christine Farley from American, TTAB Judge Linda Kuczma, and Professor Sarah Hinchliffe, visiting professor at William and Mary Law School. Arent Fox’s resident rock starPamela Deese, will act in all things as moderator.

As interesting as that is, my real point is that you are not exempt from attending this event just because you think you already heard “this” in Cleveland.

I enjoy being a trademark lawyer

Originally posted 2009-03-27 17:28:28. Republished by Blog Post Promoter

John Welch at the TTABlog® has up what even he acknowledges is an “excit[ing]” post, in which he both imagines himself a woman and quotes this lively Trademark Trial and Appeals Board opinion excerpt concerning the resolution of the Chippendale’s dancer-boy trademark appeal I discussed a while back:

The TTAB appeal was a washout

The TTAB appeal was a washout

Judge David Bucher . . . asked “what purpose is served by prosecuting this application in light of applicant’s [incontestable] registration,” particularly in light of the burden it placed on the PTO? “Trademark Examining Attorneys laboring under demanding production requirements cannot afford to be time travelers, and few have advanced degrees in dramaturgy and theatre arts.”

Nonetheless, he found that the subject mark “would appear to be an original creation and an immediately recognizable symbol belonging to applicant alone, and hence, inherently distinctive.”

Judge Bucher accepted [drama iconology expert] Dr. Shteir’s conclusion that “the expectations of the all-female audience to whom the show was originally presented are critical to our decision herein.”

Yay for Judge Bucher!  Unfortunately for Chippendale’s, however, as well as LIKELIHOOD OF CONFUSION®, which opined that the seedy purveyor of undercooked beefcake should (not “would,” Mr. Welch!) win this one, the ellipsis above elides the words, “in a lively dissent.”

See John’s blog for learned analysis of the opinion, as well as thoughtful consideration of the practical lawyering and IP-strategy issues originally addressed in the comments here.

How Tweet it is

Originally posted 2010-09-15 21:15:29. Republished by Blog Post Promoter

A little topical tweeting music from the last few weeks via @roncoleman:

You could do worse than to check these out.

And away we go!

Move on, already

Originally posted 2007-09-24 22:59:42. Republished by Blog Post Promoter

Yet another chapter in the abuse of supposed trademark rights in “catchphrases” — now from MoveOn, the “freedom” people.

The purveyor of an “infringing” T-shirt ran for the hills, intimidated unjustly — classic “big IP” stunting at work. (Why don’t these folks even try to find pro bono lawyers? I’m not the only one who would have handled this case for free.)

IP doth make villains of us all! (Speaking of evil — another hat tip to Instapundit, too!)

This Isn’t One, Either. Heavens, No.

Originally posted 2005-02-17 00:04:00. Republished by Blog Post Promoter

Bill Heinze’s I/P Updates blog reports about a trademark registration you can see at the erstwhile movie pirating website LokiTorrent.com. You get a message that says “There are websites that provide legal downloads. This is not one of them.” The site is the property of the good people at the MPAA.  And it ought to: Downloading someone else’s movie is just plain stealing. Even if the MPAA is against it.

Clients sometimes ask whether the infringing website they’re steaming about can ever fall like an overripe fruit into their hot little hands. Yep. It can.

Welcome, Blogads clickers

Originally posted 2005-01-04 10:03:00. Republished by Blog Post Promoter

I’m stuck in a monthlong marketing campaign on Blogads. The rates are really favorable but the diminishing returns are sick-making. So having “spent” the money (well, pledged it — do you think Amex reads blogs?), we may as well drive some traffic to here, the law firm’s new blog.

I have joked that the wheels are about to come off the blogging wagon — blogs are now so cool I’m afraid they’re no longer cool at all. If everyone has one, who wants one? But as a phenomenon of communication, in the sense of information exchange, they are not going away. What’s good (for me) is that the legal issues of blogging aren’t going away either. They will only increase. Not everyone is interested in more communication — not if it’s a threat to their franchise. That means people will attempt to utilize (or no less likely abuse) the law and the courts in order to compete unfairly. And that’s something we have demonstrated we can do something about. (And sometimes we can’t, even if down the line courts acknowledge, well, maybe we were right….) One of the reasons I left my my old firm two years ago and founded this office was so that I could spend more time working the leading edge of Internet-related law. I’m happy that we’re succeeding, at least somewhat.

We also do house closings. Baby steps, man, baby steps. At least our real estate associate is a blogger.

Anyway, a number of bloggers whose names you must know (I like the sound of that) are banding together to form the Media Bloggers Association. More associations means more lawsuits! It’s all good.

UPDATE: A reader asked me about the old firm, Gibney Anthony & Flaherty, in New York. It was a warm, friendly breakup. We are still friends, still work together, and I am still on their letterhead as “counsel.” So don’t get upset.

Knockoff News Forty-Two

Originally posted 2006-12-04 22:52:40. Republished by Blog Post Promoter

Check it out, bub.

“Dear Licensor” — Part II

Originally posted 2011-08-19 10:37:54. Republished by Blog Post Promoter

Dear John Letter

Permission: Casey Berry

Last spring I excerpted from and linked to an article by my friends Richard Bergovoy (of the Licensing Law Blog) and Oliver Herzfeld (of Beanstalk) concerning the dizzying concept of a trademark licensee gone bankrupt.  Now I’m told that Part II is out and about as well.

Here’s a highlight:

Richard Bergovoy

Richard Bergovoy

If Licensee Seeks to Assume and the Licensor Objects

The licensor may believe that the licensee or its proposed assignee are incapable of properly performing the license agreement. One of the fundamental principles of U.S. trademark law is that a licensor must control the quality of the goods and services provided by the licensee under the licensed mark. This rule is designed to fulfill the public policy objective of consumer protection, in that trademark laws help prevent the public from being misled as to the quality of branded products and services. A prohibited “assignment in gross of a mark” or other failure to maintain quality control standards could give rise to a so-called “naked license” claim. The consequences of such a claim can be quite severe. In particular, “a court may find that the trademark owner has abandoned the trademark, in which case the owner would be estopped from asserting rights to the trademark.” To prevent such damage from occurring, the licensor may object to a licensee’s assumption or assumption and assigument of a license agreement on the following four grounds …

The four grounds, and the rest of the article, can be found here.

A Stitch in Time Saves Nine

Originally posted 2006-01-02 12:47:24. Republished by Blog Post Promoter

Evan Schaeffer hosts this week’s Blawg Review #38 and credits Likelihood of Confusion for going light on the cliches. All’s well that ends well!

Foul baller

Originally posted 2007-03-27 00:42:26. Republished by Blog Post Promoter

Shoeless Joe Jackson

Say it ain't so, Joe!

A former major leaguer goes from giving up runs to running from the law. From pitch counts to multiple counts. From pitching and hitting to counterfeiting. From –

You get the pitcher.