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LexBlog
Paul Bost
April 21, 2020

On April 8, 2020, in In re: Forney Industries, Inc.,[1] the Federal Circuit reversed the Trademark Trial and Appeal Board’s finding that a color mark can never be inherently distinctive.  By so holding, the Federal Circuit controverts what had become conventional wisdom since the Supreme Court’s decisions in Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159 (1995) and Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000).

…

Based on its reading of the above precedent, the panel held that color marks on product packaging can be inherently distinctive.  In the instant case, Forney’s mark – a black bar followed by a yellow-to-red gradient – could be considered inherently distinctive.  Accordingly, the panel held that the Board erred by not assessing whether Forney’s mark was inherently distinctive.

The panel’s precedential decision is significant.  Persons interested in protecting color marks used on product packaging may now be able to obtain registration without showing secondary meaning.  Likewise, the holding may be adopted by other courts to allow plaintiffs asserting common law rights in color marks to do so without proof of secondary meaning.

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LexBlog
Sarah Bro
April 15, 2020

Reviewing a decision from the United States Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board, the Federal Circuit vacated and remanded the Board’s refusal to register a trademark consisting of a gradient of multiple colors applied to product packaging, and relied on Supreme Court precedent in concluding that color marks can be inherently distinctive when used on product packaging “depending upon the character of the color design.” In re Forney Industries, Inc., Case No. 2019-1073 (Fed. Cir. Apr. 8, 2020) (O’Malley, J.)[precedential].

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The content in this post was found at https://www.lexblog.com/2020/04/15/federal-circuit-confirms-color-marks-of-certain-character-can-be-inherently-distinctive-for-product-packaging Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com

Technology & Marketing Law Blog
Eric Goldman
April 3, 2020

It has unexpectedly turned into Videogame Law week here at the Technology & Marketing Law blog. This is my third videogame IP blog post this week. See my prior posts on tattoo copyrights and signature moves. All three rulings are decisive defense wins, a sign of how bogus videogame litigation has flooded the courts.

Today’s case involves the game Call of Duty, which prominently features Humvee vehicles throughout the game. Humvee asserted its trademark rights against Call of Duty, which is the kind of claim that can vex courts because trademark law wasn’t designed to regulate this kind of conduct. The court turns to the constantly baffling Rogers v. Grimaldi test to navigate the First Amendment overlay to the trademark claims. This turns into a trademark doctrine SNAFU. At least the court gets to the right conclusion.

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Case citation: AM General LLC v. Activision Blizzard, Inc., 1:17-cv-08644-GBD-JLC (S.D.N.Y. March 31, 2020)

The content in this post was found at https://blog.ericgoldman.org/archives/2020/04/humvee-cant-stop-depictions-of-its-vehicles-in-the-call-of-duty-videogame-am-general-v-activision-blizzard.htm Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com

LexBlog
John Mueller
April 11, 2020

[ed: this is not a new media case. However, it clarifies aspects of fair use as they relate to trademark, so is included here]

In an August 2019 decision, the 7th U.S. Circuit Court of Appeals upheld the earlier finding by the Northern District of Illinois of summary judgment that PepsiCo’s Gatorade division’s use of the phrase “Gatorade The Sports Fuel Company” on its Gatorade family of products did not infringe SportFuel Inc.’s SPORTFUEL trademark because the use of the “Sports Fuel” term by Gatorade was descriptive, not used in a source-indicative manner and thus a “fair use” of that term.

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The content in this post was found at https://www.lexblog.com/2020/04/11/7th-circuit-upholds-trademark-fair-use-doctrine/ Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.c

IP Watchdog
Nouvelle Gonzalo & Nyja Brown & Eleanor LeBeau & Brittany George
April 13, 2020

One of a company’s most valuable assets is its trademark – its name, logo, color or slogan. A trademark or service mark establishes your company as the source of certain products (trademark) or services (service mark). This helps establish your company brand so consumers can easily recognize it. As we consider international trademark registration, there are some important lessons we can learn from the Duke and Duchess of Sussex, who tried to register a SUSSEX ROYAL trademark.

The content in this post was found at https://www.ipwatchdog.com/2020/04/13/international-trademark-registration-nine-lessons-learned-harry-meghan/id=120530/ Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com

IP Watchdog
IPWatchdog
March 27, 2020

On March 13, the United States Patent and Trademark Office (USPTO) filed a reply brief urging the Supreme Court on to reverse a judgment of the U.S. Court of Appeals for the Fourth Circuit that held BOOKING.COM to be a registrable trademark. The case was set to be argued on Monday, March 23, but was postponed due to the coronavirus pandemic. Fifteen parties have filed amicus briefs in the case, most of those in support of Booking.com. In response to Booking.com’s brief of February 20, the USPTO primarily argued that, 1) Goodyear Co. v. Goodyear Rubber Co. remains good law and resolves the question presented in the present case, 2) Sound trademark policy supports the conclusion that adding a top-level domain, such as .com, to a generic term does not lead to a protectable trademark, and 3) Booking.com’s survey evidence does not provide a sound basis for treating the term “Booking.com” as a registrable trademark.

The content in this post was found at https://www.ipwatchdog.com/2020/03/27/uspto-urges-supreme-court-reverse-now-delayed-booking-com-case/id=120205/ Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com

LexBlog
Mike Willee
January 7, 2020

There’s a dichotomy to being big, a paradox that comes with size relative to those around you: it’s understood and expected that you should take the care to look out for those smaller than you as you make your way through the world, and yet being big gives you the option to simply do as you choose by virtue of the fact that you can make others get out of your way, lest they be knocked over or crushed.

In these terms, Disney would be the Gulliver of Jonathan Swift’s famous tome, with the overwhelming majority of other companies Lilliputians, to say nothing of us ordinary citizens who would be smaller still. Disney can choose to watch its step so as to not trod on other companies, or it can do and go as it pleases, unconcerned that any real damage could be done to it by the diminutive bodies barely perceptible from its perspective.

It’s unclear whether Disney choose to take the latter approach in this particular case, but whatever its intent, it has found itself caught in a copyright case involving its latest billion-dollar blockbuster hit. The suit comes from a Nevada-based cancer charity called Trust Your Journey, which is claiming that Disney is infringing upon its trademark on its company name by using that phrase in both Frozen 2 and merchandise related to the film.

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The content in this post was found at https://www.lexblog.com/2020/01/07/disney-sued-in-trademark-spat-over-frozen-2/ Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com

Technology & Marketing Law Blog
Eric Goldman
Jan. 7, 2020

It’s increasingly hard to find good news in Internet law, so I organized this year’s Internet Law roundup by categories of doom. Trigger warning: you should grab some tissues before proceeding.

Doomed (in a Bad Way)

Doomed: User-Generated Content.

Doomed: Print-on-Demand Services.

Doomed: Online Marketplaces.

Doomed: Internet Access Providers.

Doomed: Cybersecurity.

Doomed: Sex Workers and Sex Trafficking Victims.

Doomed: the CCPA. 

Doomed (in a not-terrible sense)

Doomed: “Must-Carry” Obligations for Publishers Who Aren’t State Actors. 

Doomed: the Roommates.com Section 230 Exception.

Doomed: Cases Against Social Media Services for Terrorist Content.

Doomed: the Liebowitz Copyright Litigation Machine.

Doomed: Politicians Banning Constituents on Social Media. T

Other

Online Political Content and Ads.

hiQ v. LinkedIn.

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The content in this post was found at https://blog.ericgoldman.org/archives/2020/01/top-internet-law-developments-of-2019.htm Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com

LexBlog
Jason Oliver
January 15, 2020

The legal battle between Booking.com BV and the U.S. Patent and Trademark Office (USPTO) began more than five years ago and concerns whether the online hotel booking company can secure a trademark registration for its name. After filing for trademark protection, Booking.com commenced a federal lawsuit in connection with the USPTO’s refusal to issue a trademark on the grounds that “BOOKING.COM” was too generic. Thereafter, the U.S. District Court for the Eastern District of Virginia held that the company’s “BOOKING.COM” trademarks could be registrable as descriptive trademarks that have acquired distinctiveness. The district court reasoned that the trademark “BOOKING.COM” had the potential to be non-generic when the public understood the trademark in its totality to refer to Booking.com’s brand. Significantly, the district court reviewed Booking.com’s survey evidence to conclude that the consuming public did not associate “BOOKING.COM” with general online hotel booking services. Rather, the district court noted that survey evidence indicated that participants associated the trademark, which included the top-level domain “.COM” with the specific source of the services.

The U.S. Court of Appeals for the Fourth Circuit affirmed the lower court’s ruling on this issue. The appellate court wrote that “when [“.COM”] is combined with [a second term], even a generic [second term], the resulting composite may be non-generic where evidence demonstrates that the mark’s primary significance to the public as a whole is the source, not the product.”

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The content in this post was found at https://www.lexblog.com/2020/01/15/can-booking-com-trademark-its-company-name-how-will-the-u-s-supreme-court-resolve-whether-a-generic-term-plus-a-top-level-domain-is-protectable/ Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com

LexBlog
Nicole M. Jantzi, Sarah Bro, Eleanor B. Atkins & Rebecca Harker Duttry
February 6, 2020

In the continuously evolving world of intellectual property law, 2019 was another milestone year. For our 2019 IP Law Year in Review, we will be breaking out the year into four separate reports, the first being “Trademarks.”

This report provides a summary of 2019’s most important questions and answers when it comes to trademark law, and serves as a useful guide for navigating trademark prosecution and enforcement efforts into the year ahead.

2020 Outlook

We anticipate that this year will bring unique opportunities to apply traditional tenets of trademark law to modern-day disputes and business considerations. Trademark practitioners and the courts will need to be creative in applying traditional interpretations of relevant trademark laws and policies to trademark protection strategies and infringement disputes.

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The content in this post was found at https://www.lexblog.com/2020/02/06/2019-ip-law-year-in-review-trademarks/ Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com