In Commodores Entertainment Corporation v. Thomas McClary, Fifth Avenue Entertainment, LLC, Case No. 16-15794 (11th Cir. 2018) (Available Here), the Court of Appeals for the Eleventh Circuit held that when McClary left the Commodore band, he also left behind his common law rights … [Read more...] about “The Commodores” Mark Remains Owned by the Active Band
11th Cir.: Extends Protection for Fed Registered Service Marks to Goods
In Savannah College of Art and Design, Inc. v. Sportswear, Inc. d/b/a Prep Sportswear, No. 15-13830 (11th Cir. 2017)(Available Here), the Court of Appeals for the 11th Circuit found that, relying upon prior case law, protection for federally-registered service marks extends to … [Read more...] about 11th Cir.: Extends Protection for Fed Registered Service Marks to Goods
Attorneys Fees Under Patent Act and Trademark (Lanham) Act Are Identical
The Court of Appeals for the Federal Circuit, in a case involving patent infringement, trademark infringement, and violations of an unfair trade practices act, ruled that an award of attorneys fees under the Patent Act, 35 U.S.C. § 285, and the Lanham Act, 15 U.S.C. § 1117(a), … [Read more...] about Attorneys Fees Under Patent Act and Trademark (Lanham) Act Are Identical
“FIRST TUESDAY” trademark descriptive of new lottery games
In the case In re: North Carolina lottery, Case No. 2016-2558, Fed. Cir. August 10, 2017 (Available Here), the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (“TTAB”) decision refusing to register the mark FIRST TUESDAY in connection with lottery services and … [Read more...] about “FIRST TUESDAY” trademark descriptive of new lottery games
Proving Trademark Use for Services Through Software as a Service (“SaaS”)
In the case of In re: JobDiva, Inc., 2015-1960 (Fed. Cir. 2016) (Available here), the Federal Circuit held that in connection with proving use of JobDiva’s mark for “personnel placement and recruitment,” the proper question is whether JobDiva, through its software, performed … [Read more...] about Proving Trademark Use for Services Through Software as a Service (“SaaS”)
Multi-Color Packaging Trade Dress NOT Inherently Distinctive
In Forney Industries, Inc. v. Daco of Missouri, Inc., D.C. No. 1:14:-cv-01326 (10th Cir. 2016)(Available Here), the Court affirmed the district court and found Foreny Industries, Inc.’s (herein “Forney”) use of color , which was not associated with any particular shape, pattern … [Read more...] about Multi-Color Packaging Trade Dress NOT Inherently Distinctive
Watercraft Mark Distinctive and Registrable for Online Retail Store Services
The USPTO Trademark Trial and Appeals Board (TTAB), reversing the Examining Attorney, finds that the mark WATERCRAFT SUPERSTORE is registrable for online retail stores services featuring personal watercraft parts and accessories because Watercraft used the mark for seven years, … [Read more...] about Watercraft Mark Distinctive and Registrable for Online Retail Store Services
Geographic Scope of Trademark Injunction and the Boundaries of Internet Sales
The Court of Appeals for the Second Circuit reversed the trial court’s decision which enjoined Defendant’s use of its marks in Plaintiff’s geographic territory area, but placed no restriction on Defendant's use on the Internet or outside Plaintiff’s service area. Guthrie … [Read more...] about Geographic Scope of Trademark Injunction and the Boundaries of Internet Sales
Competitors’ Consent to Use Agreement Does Not Always Overcome Likelihood of Confusion
In the case of In re Bay State Brewing Company, Inc., Serial No. 85826258 (TTAB February 26, 2016) (Available Here), the Trademark Trial and Appeal Board (“TTAB”) found the parties consent agreement was outweighed by other relevant likelihood of confusion factors, namely, that … [Read more...] about Competitors’ Consent to Use Agreement Does Not Always Overcome Likelihood of Confusion
Trademark Claims Preempted by Copyright Act
A federal district court dismissed plaintiff’s trademark infringement claims over an ad campaign using the phrase “Nobody Puts Baby in a Corner” because the Copyright Act preempted all aspects of the trademark claim. In Lions Gate Entertainment, Inc. v. TD Ameritrade Services … [Read more...] about Trademark Claims Preempted by Copyright Act
