Well, a lot has happened since we last reported on the District Court’s decision in the FLANAX trademark dispute.  As you may recall, the Trademark Trial and Appeal Board granted Bayer’s Petition and cancelled the FLANAX registration although Bayer, a German company, did not use the mark FLANAX in the US. The U.S. District Court for the Eastern District of Virginia dismissed Bayer’s  subsequent Complaint and reversed the TTAB, finding that Bayer had no standing to challenge the FLANAX mark under the Lanham Act since it had no rights in the mark in the US. Bayer appealed this to the Fourth Circuit which then reversed the District Court. The Fourth Circuit concluded that Bayer did have the right under Section 43(a) of the Lanham Act to assert claims for false association and false advertising and to pursue a cancellation claim under Section 14(3). The Court held that nothing in the Lanham Act or the law mandated that Bayer have used the FLANAX mark in the US “as a condition precedent” to its claims. On October 20, 2016, Belmora, the owner of the US trademark registration for FLANAX, filed with the U.S. Supreme Court a Petition for a Writ of Certiorari seeking resolution of a  split among the circuit courts on the application of territorial provisions to certain trademark claims in the US. The specific question presented to the Court by Belmora is as follows:

“Whether Sections 14(3) and 43(a) of the Lanham Act allow a foreign business that has neither used nor registered its trademark in the United States to sue the owner of a U.S. trademark for conduct relating to the owner’s use of its U.S. mark.”

Bayer can file a brief in opposition within 30 days if it decides to do so.

We will keep you posted on all further developments.


Further to our post last Friday on the SLANTS trademark case, the U.S. Supreme Court today, without comment, refused the Redskins’ Petition to join the SLANTS case challenging the U.S. Trademark Office’s ban on “offensive” trademarks. Since both cases involved a provision in Section 2(a) of the Lanham Act, the football team hoped to have both cases considered concurrently by the high Court. However, this now means that the outcome of the SLANTS case will have a huge impact on the Redskins’ appeal still pending before the Fourth Circuit. Although the team’s case will not be heard with the SLANTS case, it will have the opportunity to file amicus briefs in the proceeding.


The U.S. Supreme Court announced today that it will review whether the U.S. Trademark Office can deny registration of offensive trademarks or whether such prohibition violates the First Amendment. The dispute affects the constitutionality of Section 2(a) of the Lanham Act, which prohibits registration of such marks. The case originated in 2013 following the Office’s refusal to register THE SLANTS as a mark for an Oregon rock band on grounds that it was a derogatory slang phrase for people of Asian descent Continue Reading The SLANTS Trademark Will Play One More Gig: U.S. Supreme Court to Decide Constitutionality of Ban on Disparaging Trademarks

The October 2016 issue of Financier Worldwide features our article discussing the ITC’s general exclusion order procedure and how it impacts fighting counterfeit goods. Though the US International Trade Commission (ITC) is most often thought of in terms of high stakes patent litigation, the issuance of a general exclusion order (GEO) by the ITC has always been a powerful tool for intellectual property owners to fight counterfeits and knockoffs. Word of the benefits of obtaining a GEO seems to have spread as in recent years the numbers of these orders, and the parties seeking them, have been increasing rapidly.

Companies seeking to stop a tide of imported knockoffs often find themselves playing legal whack-a-mole – they spend a great deal of money and time filing repeated cases in the US district courts against the sellers they can identify, but after it all find that the orders they worked so hard to obtain are difficult to enforce against small overseas companies which simply cease their official operations then re-emerge having changed their names, locations or channel of importation.

To read the entire article, please click here.

My colleagues at the Global IP Matters blog highlight today the decision by the 9th Circuit Court of Appeals which provides clarification of what the courts consider a “trade secret” under the new Defense of Trade Secrets Act (DTSA). The decision, handed down on July 5, indicates clearly that a compilation of publicly-available information gathered using propriety search technology is covered under the DTSA.  The DTSA amended the Economic Espionage Act (EEA) to create a federal private civil cause of action for trade secret misappropriation. The 9th Circuit’s decision can be accessed here and my colleague’s insights into what it means may be accessed here.

Trademark dilution is a concept not easily understood. Although, we have written about this topic in previous posts,  a recent decision by the Trademark Trial and Appeal Board, ESRT Empire State Building, L. L. C. v. Michael Liang, Opposition No. 91204122 (TTAB June 17, 2016),  may help to further explain why it is unacceptable to dilute another’s trademark.

Continue Reading Dilution Update: NYC BEER Is Not Diluted, But The Empire State Building Is

The US Trademark Trial and Appeal Board has, again, explained how and when surnames may function as trademarks. In re Enumclaw Farms LLC, Application Serial No. 85942195 (TTAB June 24, 2016). This blog has discussed this topic in the past, but the facts in this most recent case are worth another post.

Continue Reading DICKMAN’S Pickles: Just Another Unregistrable Surname

The Federal Circuit has upheld the findings of the Trademark Trial and Appeal Board that use of the marks MAYA and MAYARI on wine is not likely to cause confusion.  Oakville Hills Cellar, Inc. vs.  Georgallis Holdings, LLC, Case No. 2016-1103 (Fed. Cir. June 24, 2016). The court concluded that there was substantial evidence to support the Board’s finding that the marks were sufficiently dissimilar in appearance, sound, meaning and commercial impression to avoid likely confusion, despite the fact that they were used on virtually identical products which would be sold to similar customers in similar channels of trade. Continue Reading MAYA And MAYARI Are Not Confusingly Similar When Used On Wine

As we reported in a recent post, PETA lost its efforts, on behalf of Naruto the monkey, to secure his claim to copyright ownership of his “selfie” photograph. The district court judge held that the copyright law did not recognize an animal’s right to own a copyright. PETA is not, however, deterred, and it has filed an appeal of this decision to the US Court of Appeals for the Ninth Circuit. Its arguments on appeal are not yet available, but we will update this post when we have further details. Stay tuned.

In August 2014, we posted about a copyright ownership dispute involving selfie photographs. The disputed selfie photographs were taken by a monkey named Naruto in Indonesia in 2011. The photography equipment used to take these internationally famous “monkey selfies” belonged to famed wildlife photographer David Slater. At the time, Slater claimed copyright ownership because he owned the camera with which the “monkey selfies” were taken. In contrast, Wikimedia, having posted the photographs on Wikipedia, claimed the photographs were part of the public domain because U.S. copyright law recognized ownership of copyright in works produced only by human authorship.

In December 2014, the U.S. Copyright Office published a revised edition of the Compendium of U.S. Copyright Office Practices, a resource on institutional practices and related principles of U.S. copyright law. In it, it states “the Office will not register works produced by nature, animals, or plants… [or] a work purportedly created by divine or supernatural beings.” The Compendium includes specific examples of work not eligible for copyright protection. The first example: a photograph taken by a monkey.

In September 2015, the People for the Ethical Treatment of Animals, Inc. (“PETA”) filed a copyright infringement complaint in the U.S. District Court for the Northern District of California against Slater, on behalf of Naruto, asking the court to declare Naruto to be the author and copyright owner of the “monkey selfies” and to hold that all proceeds from the sale, licensing, and commercial use be used solely for the benefit of Naruto. PETA contended that since the photo(s) “resulted from a series of purposeful and voluntary actions by Naruto, unaided by Slater,” Naruto was the author. PETA noted the author is typically “the person who sets up and snaps the shutter,” to which Slater’s attorneys responded that “setting up what became a world-famous, award-winning photograph is what professional nature photographer Defendant David Slater did.”

On January 28, 2016, following U.S District Judge William Orrick’s bench ruling earlier in the month, Judge Orrick issued a written Order granted defendants’ motion to dismiss. Citing to earlier precedent, the court noted that if Congress and the President intended to authorize animals to have standing to sue, they had the power to do so and, thus far, they had not done so. Accordingly, Judge Orrick held that under the current Copyright Act and consistent with the Compendium, animals cannot own a copyright and therefore Naruto is not an “author” within the meaning of the Copyright Act.

Whether U.S. law will ever be changed to allow copyright ownership by non-human “authors” of any type remains to be seen.