Section 2(a)

Redskins redux

Remember the Washington Redskins trademark tussle? CNBC reports that it’s back — again — and better than ever. This time the focus is an interesting technical tactic related to an aspect of the case involving the equitable doctrine of laches: [T]he U.S. District Court of the District of Columbia . . . in 2003 reversed the TTAB’s decision on disparagement. The court also determined that the petitioners were barred by laches, a legal doctrine applied…

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cloth with artistic design

A free market moment

Stephen Laniel finds, in trademark law, reason not to throw the whole thing over: The public-health justification for trademark law is pretty clear: if the law defends my product brand at the point of a gun, I have an incentive to strengthen that brand. It’s a defense against fraudsters latching onto my product’s goodwill. . . . How would this work in an anarcho-capitalist world? For that matter, how would it work in a slightly... Read more

Bull market

Are trademark filings really an economic indicator?  This is from the Philadelphia Inquirer (via David Ardia, who cites Marty.) Glenn Gundersen . . . [a] trademark and copyright lawyer at Dechert L.L.P. has been tracking trademark filings since the early 1990s. He says there’s a powerful correlation between such filings and the overall health of the economy. And using that metric, things aren’t as bad now as they might seem, he asserts. When trademark filings are up, it’s a good... Read more

Semaphores and metales

Two kinds of analogy, as scrambled by an old and dear friend. Evidently, there is another kind. John Welch writes about a TTAB decision cancelling trademark registrations based on the petitioners use of the mark, for purposes of avoiding a defense of abandonment against the putative senior user, that is not quite trademark use but is “analogous to trademark use.” John writes about the rather thin reed on which the TTAB places the weight of... Read more

Joel MacMull and genericness

The U.S. Supreme Court announced earlier this month that it will hear the trademark case in the new year. BV, owner of the popular hotel reservation website, has long argued that the addition of “.com” converts its otherwise generic mark into a protectable trademark, i.e., a source identifier that consumers would recognize. While the Trademark Trial and Appeal Board initially refused registration of BOOKING.COM on the ground that it was generic, a federal... Read more

Move on, already

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... Read more

Nothing gained?

UPDATE:  I have further thoughts about what is almost certainly the real motivating factor behind Jones Day’s actions in connection with their obviously frivolous lawsuit against BlockShopper, and I have moved them to my other blog, because they are not necessarily on topic.  But you must start with Paul Alan Levy’s original blog post if you want to get your arms around this situation. Sam Bayard sums up “thoughts on the Jones Day-BlockShopper Settlement”: So... Read more

Bad career planning, email department

What do they say about the guys who talk about doing it the most? Well, we might need a new rule for guys who email about doing it the most. Reuters “news service” reports about the guy whose macho email was so stupid — and so quickly all over Europe — that one woman in the chain couldn’t help but blurt out the obvious: “They are so going to get fired!!!!” she said. That’s four... Read more

Eating my words

I do it sometimes. In my case, they’re particularly tasty, and sometimes even tasteful. Definitely not tasteful, not tasty — not even edible, if “kosher” means anything (which judges refuse to admit it does). And why do I have to eat my words? The case involves the unauthorized use of the Kof-K* kosher symbol (a certification mark) by a dirty-movie maker. He put the mark on the cover of his ethnically-oriented dirty movie. “Perhaps a... Read more

A different Slant

Does this story in the Northwest Asian Weekly about the trademark registration woes of a rock band called The Slants sound familiar? The Slants, whose members are of Asian descent, have amassed fans nationwide, taking the stage at dive bars, Asian festivals, anime conventions, and even serving on panels to discuss racial stereotypes. But behind the scenes, the band is fighting a battle with the United States Patent and Trademark Office USPTO. The office has twice... Read more

Best of 2013: The Lanham Act’s surprising penumbras

First published on July 15, 2013. Here I thought I understood something about the Lanham Act.  But wait, there’s more!  Did you know this?: The purpose of the Lanham Act is to protect registered and valid copyrights, trademarks, and patents. That’s from Coach, Inc. v. Southwest Flea Market., 2:10-CV-02410-DKV, 2012 WL 8470191 (W.D. Tenn. Feb. 21, 2012), an important decision concerning, among other things, the circumstances under which a flea market vendor can be held contributorily... Read more

Best of 2009: They always get their man

Posted November 24, 2009. Yes, people do have some funny ideas of what kinds of things to protect with copyright, don’t they?   A few years ago, criminal enterprise Milberg Weiss (in its pre-conviction days) tried to assert copyright in its own specie — the legal papers it filed to generate kazillions in crooked class-action fees — and not so unreasonably (hmm…). Anyway, it seems that certain countries, though not as wealthy as Milberg Weiss,... Read more