Trademarks are product differentiators that help consumers recognize familiar brands that customers have come to associate with a certain perceived level of goodwill, reputation, quality, taste, consistency, and style. A form of shorthand, a unique signature of sorts, a trademark signals to consumers the source or origin of a particular good or service.

Walking into a McDonalds, we know how a cheeseburger is going to taste. Seeing a red and white striped curved awning with green domes that extend above the awning, we can expect to enjoy custard ice cream or Italian ice from Rita’s Italian Ice. Coffee served in a cup with a two tailed mermaid is, as we all know, from Starbucks.

Continue Reading Likelihood of Confusion: the <i>Sine Qua Non</i> of Trademark Infringement

Hurdles to Federal Trademark Registration Part 1 – Generic Marks

Despite being used lawfully in commerce, a trade or service mark may be refused registration by the United States Patent and Trademark Office (“USPTO”) under Section 2 of the Trademark Act of 1946 (the “Lanham Act”) if the proposed mark is “generic,” “merely descriptive or deceptively misdescriptive,” or likely “to cause confusion” with another registered or used mark.

Continue Reading You Shall Not Pass: Hurdles to Federal Trademark Registration

In recent years, various government branches and departments across the country who are responsible for policing the government’s own trademarks have been sending cease-and-desist letters and filing suit against local businesses that are using trademarks likely to either cause confusion as to the government’s sponsorship of or affiliation with the companies or dilute the famous qualities of the government’s distinctive marks.

Continue Reading Government Owned Trademarks: Give me Liberty or Give Me …a License?

In 2017, two registration prohibiting provisions of the Trademark Act of 1946 (“The Lanham Act”) were found unconstitutional under the First Amendment. These decisions raise important considerations for persons and companies whose trademarks may have been previously denied registration on such grounds or those considering registration of plausibly disparaging or scandalous marks.

In Matal v. Tam, 137 S. Ct. 1744, 1765 (2017), the lead singer of the rock group “THE SLANTS” appealed The United States Patent and Trademark Office’s (USPTO) refusal to register his band name as a trademark on the principal register due to a Lanham Act provision which prohibits 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 band members sought to take control of an Asian ethnic stereotype commonly used to criticize them but were denied registration because “slants” is a derogatory remark used to disparage those of Asian descent.

Continue Reading <i>Matal and Brunetti</i>: When Derogatory isn’t Derogatory

As you may have read in our last article, a color or a color scheme can sometimes fall under a company’s trademark if they can prove its distinctiveness. However, what isn’t enough to meet the trademark threshold?

General Mills sought registration of the predominant, yellow color of its well-known Cheerios boxes by attempting to prove the sunny yellow alone was distinctive to their brand. They argued that under Section 2(f) of the Lanham Act, the color yellow had acquired distinctiveness because consumers have come to identify the color yellow, when used in connection with toroidal, oat-based breakfast cereal, as coming specifically from the Cheerios brand, as evidenced through consumer surveys and expert reports. The United States Patent & Trademark Office (USPTO), however, refused registration of the color mark on the grounds that the General Mills had failed to demonstrate acquired distinctiveness.

Continue Reading Trademark Registration of Colors—Stay Mellow, Yellow

The average consumer has probably heard of terms like “trademark” and “copyright” before, but what falls under trademark? Do colors or color schemes fall under the category of a trademark? The answer may surprise you.

Trademarks and service marks are “any word, name, symbol, or device, or of any combination thereof” that identify and distinguish a mark owner’s goods or services from those manufactured or sold by others. They act as source indicators of the goods or services provided by the mark owner. See 15 U.S.C. § 1127. Dilution occurs when an infringer uses a mark similar to that of a famous trademark, thereby lessening or reducing a consumer’s ability to differentiate between the goods and services of each.

Continue Reading Trademark Registration of Colors—Only Once in a Blue Moon

A federal court in California agreed to remove the two songwriters of the Disney animated film Frozen from a copyright infringement lawsuit, for now. The lawsuit claims that the hit song “Let It Go” was copied from a Chilean song called “Volar,” and that the two songs are so strikingly similar that Disney could not claim its song was independently created.

The plaintiff, Jamie Ciero, originally filed the lawsuit in November 2017 wherein he alleged that the songwriters, Bobby Lopez and Kristen Anderson-Lopez, copied “quantitatively and qualitatively distinct, important, and recognizable portions of his song.” This included note combinations, hooks, and melodies that are, according to Ciero, almost identical to those in his song.

Continue Reading <i>Frozen</i> Songwriters Removed from Copyright Infringement Lawsuit

How long does a copyright owner have to bring suit for copyright infringement? The answer is three years from the date of the last infringement, regardless of when the very first infringement occurred. Copyright law follows the “separate-accrual rule,” which provides for a new three-year statute of limitations each time an infringement occurs. While the three-year look back period allows copyright owners to maintain actions years or decades after the initial infringement occurs (assuming subsequent infringements), the copyright holder would only be entitled to damages for that three-year period, rather than the entire period of time the infringing activity had occurred.

Continue Reading Delay in Bringing Suit Is No Bar to Copyright Infringement Claims

Trade secrets, amorphously defined as any confidential business information which gives an enterprise a competitive edge, have not had much federal protection as compared to other intellectual property vehicles such as copyrights, trademarks and patents. Traditionally, trade secret misappropriation cases have been litigated in state court using state law. Even though the majority of states have adopted the Uniform Trade Secrets Act (“UTSA”), there are still notable differences among the various version of the UTSA implemented by the individual states. This has resulted in inconsistent and sometimes contradictory decisions regarding what a state court considers a “trade secret,” what constitutes “misappropriation” of a trade secret, and what the proper recourse is for a proven misappropriation.

Continue Reading Uniform Federal Protection for Trade Secrets Under the Newly Passed Defend Trade Secrets Act Of 2016