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Susan Neuberger Weller is a Member based in our Washington, DC office whose practice focuses on IP, related transactions, and IP litigation. Susan specializes in trademark, copyright, domain name, trade dress, and related areas of Internet, e-commerce, unfair competition, customs, and advertising law. She has written and contributed to numerous IP books and has provided IP commentary for Court TV as well as the Wall Street Journal, New York Times, and other publications. Susan was named a DC Super Lawyer from 2006 to 2010, has been listed in multiple editions of the Guide to the World’s Leading Trade Mark Law Practitioners, and is rated AV Preeminent by Martindale-Hubbell.

In a unanimous decision handed down on June 19th, the U.S. Supreme Court struck down as unconstitutional a long-standing prohibition against federal registration of “disparaging” trademarks, finding that the this provision of the Lanham Act violates the Free Speech Clause of the First Amendment.

We have been tracking this case since 2013, when the TTAB refused registration of the mark  THE SLANTS for an Oregon rock band. The Patent and Trademark Office (PTO) denied the application under  Section  2(a) of the Lanham Act which prohibited the registration of marks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” 15 U. S. C. §1052(a). The PTO found the mark to be a derogatory or offensive term for people of Asian descent. The Federal Circuit reversed the PTO, finding the disparagement clause of the Lanham Act unconstitutional, and the government appealed. Continue Reading Matal v. Tam: U.S. Supreme Court Holds Prohibition on Disparaging Trademarks Unconstitutional under First Amendment

In a decision that may have broader implications in the U.S. fashion industry, the U.S. Supreme Court in Star Athletica, L.L.C. v. Varsity Brands, Inc. (No. 15-866) ruled that the decorative elements on a cheerleading uniform can fall within the scope of articles protectable by copyright.

In the decision handed down on March 22, 2017, Justice Thomas, writing for the majority, ruled that the decorative elements on the cheerleading uniforms (shown below) met the threshold requirement of being  a “pictorial, graphic, or sculptural work” that can be granted a copyright if the copyrightable elements are sufficiently original and meet other requirements of the Copyright Act. Slip Op. at 10-11.

Cheerleader Uniforms Continue Reading Let’s Go, Big ©! Let’s Go! U.S. Supreme Court Backs Copyright Protection for Cheerleading Uniforms

Although most people will recognize the ubiquitous PIZZA! PIZZA! slogan mark owned by the pizza chain Little Caesar’s, the company’s collection of repeated term marks does not rise to the level of a “family of marks” according to the Trademark Trial and Appeal Board. In a precedential decision, the Board held that to grant this status to the slogan marks at issue would give Little Caesar’s excessively broad rights not justified by the facts. In re LC Trademarks, Inc. (TTAB December 29, 2016). However, the Board did clarify that proof of the existence of a “family of marks” can be a factor used to prove that otherwise descriptive marks have acquired distinctiveness. Continue Reading Pizza! Pizza!: Little Caesar’s Repeated Term Slogans Are Not a “Family of Marks”

As we reported to you last September, the U.S. Supreme Court agreed to hear the case involving the constitutionality of the provisions of the Lanham Act upon which the U.S. Trademark Office relied to deny registration of the rock band name “The Slants.” The hearing before the Court is scheduled for January 18, 2017. We are following this case closely and will report back with all developments. Stay tuned.

In a non-precedential opinion, the U.S. Trademark Trial and Appeal Board cancelled two US trademark registrations for the mark PORTON,  finding it to be confusingly similar to the mark PATRON. Patron Spirits International AG v. Pisco Porton, LLC, Cancellatio No. 92059527 (January 4, 2017). PORTON is the brand name for a Peruvian brandy sold by Pisco Porton. PATRON is the brand name for a Mexican tequila sold by Patron Spirits International. Continue Reading Trademark Trial and Appeal Board: Non-Spanish Speakers Would Confuse PATRON and PORTON Trademarks

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

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