Take Home Points A distinctive registered trademark can become generic over time meaning it is no longer protectable as a registered mark. Such a mark can also be subject to cancellation. Ceasing the opportunity to overcome negative press can alleviate bad press in the court of public opinion. In 1978, the trademark TACO JOHN’S was registered with the USPTO. In 1989, the owner of the TACO JOHN’S mark Read More
International Trademark Registration Strategy After SCOTUS’s Decision in Abitron Austria v. Hetronic International
The blog provides a detailed analysis of the U.S. Supreme Court’s June 29, 2023 decision in Abitron Austria v. Hetronic International, a case which involves international trademark rights. Justice Sotomayer’s concurrence, reading more like a dissent, is, in this commentator’s opinion, the correct legal application of the Lanham Act. Quick Overview of Abitron’s Take Home Points: More than ever before, trademark Read More
Pop Culture Goes to Court: The Top Gun Maverick Copyright Infringement Lawsuit
On June 6, 2022 a copyright infringement lawsuit was filed in the U.S. District Court for the Central District of California over the new blockbuster film Top Gun Maverick by the heirs of deceased Israeli author Ehud Yonay. The lawsuit involves a relatively unknown area of copyright law – the recapture doctrine – codified in § 203 of the Copyright Act. This law gives authors and their heirs the right to recapture Read More
The Hard Rock Hotel and Casino’s guitar-shaped hotel and casino is granted trademark protection as inherently distinctive trade dress.
Key Points: Product packaging and product design may qualify for trademark protection as trade dress. However, different sections of the Lanham Act apply. Product packaging may be granted trademark registration under the Lanham Act on inherently distinctive grounds if the other requirements for trademark registration are met. A product design may be granted trademark registration under Section 2f of the Lanham Act Read More
Are You Sure Your Company Owns Its Intellectual Property?
Intellectual property assets (patents, copyrights, trade secrets, and trademarks) can be sold, assigned, or licensed by the IP’s owner. For companies, IP ownership issues may arise where steps are not taken to ensure that any IP created by or developed by an employee or independent contractor will belong to the company or hiring party. Such issues could have a devastating effect on the company Read More
Ten Tips for Avoiding Legal Problems When Selecting a Company or Product Name
Selecting a company name or a name for a new product is no easy task. Both types of names have the potential to become the company’s valuable intellectual property assets, i.e., valuable brands. A haphazard name selection process, however, may result in legal problems and/or prevent registration of the name as a trademark or service mark with the United States Patent & Trademark Office. Clearly Read More
Unicolors, Inc. v. Hennes & Mauritz, LP: U.S. Supreme Court Rules That Mistakes of Law Do Not Invalidate a Copyright Registration
On Feb. 24, 2022 in a 6 to 3 decision, the U.S. Supreme Court held that mistakes of law – and not only mistakes of fact – could protect copyright infringement lawsuit plaintiffs from losing their copyrights on grounds of inaccurate registrations. The decision is a win for creators who own registered copyrights. Remember, since 2019, copyright registration is an absolute requirement for commencing a copyright Read More
Patent Law’s Enablement Requirement and Genus Claims: What Will SCOTUS Have to Say in Amgen v. Sanofi?
This blog discusses a patent law case which SCOTUS has decided hear on the enablement requirement as it applies to genus claims. The anticipated decision will have ramifications in particular in the life sciences industry which includes the biotech and pharmaceutical industries. Background Even if the invention described in a patent application meets the subject matter eligibility (35 U.S.C § 101), novelty (35 Read More
New business formation tip – avoid the mistake of choosing a company name with trademark issues, domain name problems, or other potential conflicts.
Picking a company name that meets the above criteria is often easier said than done. The last thing a new company needs is a legal dispute involving the alleged infringement of someone else’s trademark. Anybody who has been involved in a lawsuit understands that they are costly, stressful, and can take on a life of their own. A registered trademark owner may of course give you the chance to comply with an initial Read More
Beware of patent law’s on-sale bar, which can jeopardize patent rights.
Take Home Points File at least a provisional patent application before taking steps to commercialize and sell an invention. Understand the ramifications of the on-sale bar to patentability. If engaging in experimentation with others prior to filing a patent application, ensure that contracts are very clear concerning the experimentation purpose. Be very careful about making an offer for sale of the invention prior Read More
