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 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.

Written by: Susan Neuberger Weller

As we all know, Super Bowl XLIX will be played this Sunday in Phoenix, Arizona between the defending Champion Seattle Seahawks and the New England Patriots. There will be events of all kinds organized all around the country focused on this football game. If you are planning something, just remember: do not use “Super Bowl” by itself or in conjunction with other words or terms in any commercial promotions of any kind including your own events, third-party events, contests, games, product promotions, or sales. You just can’t do it. Continue Reading Don’t Even Think About Advertising a SUPER BOWL Party!

Written By: Susan Neuberger Weller

Further to our April 23 post on the Pom Wonderful-Coca-Cola U.S. Supreme Court case, the  Court on Thursday June 12 issued an unanimous decision (with Justice Breyer taking no part in the consideration or decision of the case) reversing the Ninth Circuit  and holding that competitors may bring Lanham Act claims, like those brought by Pom, challenging food and beverage labels regulated by the FDCA. Continue Reading U.S. Supreme Court Allows Pom Wonderful to Pursue Lanham Act Claims against Coca-Cola

Written by Jamison Arterton

As any recent college graduate knows, upon graduation you join an alumni network that carries with it a certain perception.   While your GPA, field of study and extracurricular are key in obtaining that all-important first job, your tuition payments during your college stint have also bought you access to a brand.

Trademarks in academia are big business.  Academic institutions live and breathe by their brand reputation, particularly in the Ivy League.  Not surprisingly, these institutions are ever-ready to vigorously defend their trademark rights, particularly where a programmatic relationship is implied by such infringement. As the New York Times recently reported, Yale University took on Yale Academy, a small preparation school for college entrance exams with locations in suburban shopping malls in New Jersey, Pennsylvania and Delaware.  Yale Academy claimed that it chose its name by combining the names of its owners, Mr. Yang and Ms. Lee.  Notably, Yale Academy’s logo also contained the same blue and white color scheme as that of the famous university.  Needless to say, Yale University was not pleased about the coincidence and filed suit in Federal District Court in New Jersey in May.  The case recently settled and Yale Academy agreed to change its name to Y2 Academy in August, although it appears to have already begun the process of rebranding.  Yale Academy recently altered its name on its website and noted that “[d]ue to business expansion and Trade Mark registration, Yale Academy will be replaced by Y2 Academy from Sep. 1, 2013. But all academic systems, teaching staff, and ownership remain unchanged. Y2 stands for the 2nd generation of Yale Academy.”

Yale University is not the only Ivy League institution to take potential trademark infringement seriously – even where small-time institutions are involved.  Harvard University has previously successfully challenged academic institutions in Korea and India carrying the Harvard name.

As noted in the recent New York Times article, while the Yales, Harvards and Browns of the world may have an easier time defending their trademark rights, academic institutions that share their name with the name of their location (e.g., Princeton University, Columbia University, Stanford University, etc.) have a more limited ability to protect their trademark rights.  While universities, such as Princeton University, have successfully protected their trademark rights in the past, such settlements often require the Ivy League institution to compromise.  For example, Princeton University previously entered into a settlement agreement with Princeton Review after challenging the test prep provider’s use of the Princeton name.

The bottom line is that, even in the Ivy League, a weaker trademark that contains a geographic or descriptive term limits a trademark holder’s ability to protect their mark and prevent its use by others.

Written by: Susan Neuberger Weller

 The Tenebaum copyright infringement file sharing case, about which we first reported in an earlier blog, reached another milestone this week when the First Circuit upheld the jury’s $675, 000 damages award. Tenenbaum had been found liable for illegally downloading 30 songs and a jury awarded statutory damages of $22, 500 for each song infringed. The award was appealed on grounds that it was so large that it violated Tenenbaum’s constitutional right to due process of law.

 The court analyzed the function and purpose for statutory damages under the Copyright Act, which are to provide “reparation for injury” and  “to discourage wrongful conduct.” The court rejected Tenebaum’s argument that the amount of the award violated due process because it was not tied to the actual injury that he caused, stating that such an argument disregarded the intended deterrent effect of statutory damages. Moreover, the award of $22, 500 per song was only 15% of the maximum award possible for willful copyright infringement and even less than the maximum award for non-willful violations. Accordingly, the court held that the jury’s award did not violate the Constitutional right to due process and the judgment was affirmed.

Unless this decision is appealed to the US Supreme Court, this dispute is concluded. It is unlikely the Court would review any such appeal since review of similar cases have previously been declined.

If It Involves Your Customer, It Could be Your Problem Too

Written by: Susan Neuberger Weller

Right on the heels of our blog on trademarks and contributory infringement, comes a case in which the court refused to dismiss a claim against Amazon for sales by third parties of allegedly infringing photographs on its site. The case, Masck v. Sports Illustrated, et al., involves multiple claims against multiple parties for copyright infringement based upon the unlawful reproduction of a famous photograph of Desmond Howard taken on November 23, 1991 during a football game between the University of Michigan Wolverines and the Ohio State Buckeyes. Howard, after running back a punt for a Michigan touchdown, struck what is now known as “the Heisman pose” just before crossing into the end zone. Plaintiff Masck took a photograph of Howard in this pose and sent it to Sports Illustrated, which paid Masck for use of the photograph in a 1991 SI article about Howard, for which he was properly credited. The negative for the photograph was never returned to Masck.

Since that time, Masck became aware of many unauthorized uses of the photograph by various third parties, and eventually brought suit for copyright infringement and other claims. Included among those claims were claims for vicarious and contributory copyright infringement against Amazon for allowing third-party sales of infringing photographs on its site. Amazon moved to dismiss the claims on grounds that it had neither the ability to supervise the sale of infringing photos on its site nor an obvious direct financial interest in the sale, emphasizing that as an “e-commerce platform provider” through which thousands of sellers posted thousands of items for sale, it had no “practical ability” to assess which of those items may or may not be infringing.

As with trademarks, a claim for vicarious copyright infringement requires that the alleged infringer have the “right and ability to supervise the infringing conduct” and has “an obvious and direct financial interest in the infringement.” If these facts are demonstrated, liability may exist even in the absence of actual knowledge of the infringement. On the facts alleged in this case, the court dismissed the vicarious infringement claim for Plaintiff’s failure to demonstrate that Amazon had the ability to supervise the infringing conduct.

However, the court refused to dismiss the contributory infringement claim against Amazon. Contributory infringement occurs when one “with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another.” Since the photographer Masck had specifically requested that Amazon take down the infringing merchandise, the court found that Amazon had knowledge of the infringing activity and yet continued to sell or allow the sale of the merchandise nonetheless. The court stated that selling the infringing merchandise is a material contribution to the direct copyright infringement so that the claim would not be dismissed.

The lesson here is never to ignore an allegation that you are in some way involved, directly or indirectly, with conduct considered to be an infringement of another’s intellectual property rights. Such a claim should be vetted by competent counsel so appropriate steps can be taken, if necessary, to address the issue promptly and thoroughly. Moreover, ignorance is not always bliss where a direct financial interest in activities subject to your supervision and control are present. We will keep you posted on further developments in this case.

Written by: Susan Neuberger Weller

 Christian Louboutin filed suit last week in Federal District Court in New York against Charles Jourdan Fashion Footwear and unnamed companies and John and Jane Does for trademark counterfeiting and infringement and other related claims based upon the Defendants’ sales of women’s shoes bearing red soles. As we previously reported, Louboutin was unsuccessful in its bid to claim exclusivity in the color red when used in any capacity for women’s shoes in its action against Yves Saint Laurent, but still owns valid US trademark Registration No. 3,361,597 for the color red when used on the sole of women’s shoes. The allegedly infringing Charles Jourdan shoes appear to use the color red only on the souls of the shoes. No response to the Complaint has yet been filed by the Defendants.

 Claiming color as a trademark is certainly possible, but can be tricky as noted in our earlier blog on the subject.

We will keep you updated as this new case unfolds. Stay tuned. Continue Reading Louboutin Sees Red Again: Protecting Color as a Trademark

My colleagues in our Litigation practice, Harvey Saferstein and Nada I. Shamonki, recently authored an alert “Another Shoe Drops in Washington: Ninth Circuit Expands Personal Jurisdiction over Willful Copyright Infringers”.

On December 17, in Washington Shoe Co. v. A-Z Sporting Goods, Inc., the Ninth Circuit expanded the exercise by Federal District Courts of personal jurisdiction over out-of-jurisdiction defendants in federal copyright cases. Building on the Supreme Court’s seminal 1945 decision in Int’l Shoe Co. v. Washington, the court explained how an Arkansas shoe retailer that had never done business in the state of Washington could nonetheless be subject to personal jurisdiction in that state.

To read the full alert please click here.