On November 14, 2016, the Federal Circuit clarified confusion regarding what is necessary to satisfy the registration requirement that a mark be used “in commerce.”

Christian Faith Fellowship Church v. adidas AG involved the Church’s appeal from a Trademark Trial and Appeal Board (“TTAB”) decision cancelling its mark “ADD A ZERO.”  The Church, located in Illinois, began selling apparel bearing the phrase “ADD A ZERO” in January 2005 and later applied for and obtained a federal registration for the mark based on actual use in commerce.  In 2009, Adidas sought to register “ADIZERO” but had its application denied by the Trademark Office based on likely confusion with the Church’s “ADD A ZERO” mark.  Adidas then brought an action to cancel the Church’s mark arguing that the Church had failed to use the marks in commerce before registration. Continue Reading Federal Circuit Clarifies What Constitutes Use “In Commerce” Under the Lanham Act

Bruno Mars RecordOn Friday, October 28, 2016, musicians Mark Ronson and Bruno Mars were hit with a copyright infringement suit based on their wildly popular hit “Uptown Funk.”  The plaintiffs, consisting of one living member and the estates of the 1980s funk group, Collage, assert that Ronson and Mars copied the bass line, guitar riff, and various other elements of Collage’s 1980s work “Young Girls.”  In the complaint, the plaintiffs assert that the ensuing damage cannot be overstated due to the commercial success of “Uptown Funk.”  The only remaining member of Collage and the estates of the deceased members of the band assert that there are eleven people that should be credited for “Uptown Funk,” whereby each party should receive royalties for Ronson and Mars’ allegedly copying.

This lawsuit comes on the heels of last year’s controversial verdict out of the Central District of California where a jury found that Pharrell Williams and Robin Thicke’s “Blurred Lines” copied key elements from Marvin Gaye’s “Got to Give It Up.”  See Pharrell Williams, et al v. Bridgeport Music Inc. et al, Case No. 2:13-cv-06004 (C.D. Cal. Mar. 10, 2015).  That verdict departed from the traditional standards applied to cases involving copyright law and music in that the court subjectively considered intangible components such as the rhythm and “feel” of the song.  Traditionally, courts applied a more tangible standard that considered similarities of lyrics, melody, and harmony.  The judge awarded a $7.4 million verdict to Gaye’s estate and ongoing royalties to Gaye’s estate, which was later reduced to $5.4 million.  Williams and Thicke are currently appealing this case to the Ninth Circuit, where 212 music artists have joined an amicus brief supporting the appeal because, as reported by the Hollywood Reporter, the verdict is “very dangerous to the music community, [and] is certain to stifle future creativity, and ultimately does a disservice to past songwriters as well.”  In addition, musicologists have expressed by amicus brief that allowing the “Blurred Lines” verdict to stand is dangerous towards the music community.

The verdict in the “Blurred Lines” case has already demonstrated the potential danger artists face in the current music climate.  If the “Uptown Funk” court applies the seemingly subjective considerations that were applied in the case of “Blurred Lines,” the proverbial floodgates for the estates of deceased artists to recover for minute similarities in modern songs, and consequently raise the potential of stifling creativity in the music industry, will have been opened.  However, if the Court applies the traditional standards of copyright law in accordance with the appeal to the Ninth Circuit and the support of over 200 artists, it would “unblur” the imaginary line between the traditional and untested subjective standard.

See “Young Girls” by Collage: https://youtu.be/pfTr_fgQpvg

See also “Uptown Funk” by Bruno Mars and Mark Ronson: https://youtu.be/OPf0YbXqDm0

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