United States trademark law
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On this special collaborative episode of Ropes & Gray's Non-binding Guidance and Talkin' Trade podcast series, life sciences regulatory and compliance partner Josh Oyster is joined by intellectual property litigation partner Matt Rizzolo to discuss the complex world of false advertising and unfair competition disputes involving drugs, medical devices, and other FDA-regulated products. Together, they explore recent developments in Lanham Act competitor lawsuits, ITC investigations, and the shifting regulatory landscape. Discover the nuances of private litigation, the powerful remedies available through Section 337 investigations, and the potential impact of recent changes at FDA.
We are back with anew round of show floor interviews from Coffee Fest! This time we were in NYC at the Keys to the Shop booth and got four wonderful presenters and experts to chat about training, entrepreneurship, and trademarking law! First up to talk about effective barista training strategies we have our friend Antoine Franklin! Antoine Franklin (better known as “Twizz”) born and raised in Cleveland, OH has 19 years of experience working in the coffee industry. Having many different job titles from barista to operations partner, to wholesale manager, LAWCO judging panel he's got a ton of experience and knowledge doing almost everything in the industry. Instagram: @Twizz_3seas Next we are chatting about training across multiple cafes with Mo Hashmi! Mo Hashmi works at Hidden Grounds Coffee as their Director of Coffee & Education. Since beginning his career in coffee, Mo has trained countless baristas in advanced coffee brewing techniques across New Jersey and New York. Currently Mo leads the roasting operation of Hidden Grounds Coffee and is in charge of sourcing, profiling, and quality control. In 2023, Mo received his SCA Roasting certification. https://www.instagram.com/momakescoffee/ https://thehiddengrounds.com/ Now we get to dive into the history and lessons learned from one of the founders of famed NYC coffee company, Cafe Grumpy! Caroline Bell is the Co-Founder and CEO of Café Grumpy, a specialty coffee company founded in Greenpoint, Brooklyn, in 2005. A Certified Q Grader and PCQI, Caroline leads the green coffee buying and fosters relationships with coffee producers, with a focus on Central America. Since its launch, Café Grumpy has expanded to 11 locations across New York City, Miami, and New Jersey. Passionate about quality, sustainability, and community, Caroline is dedicated to building a supportive team and fostering a positive work environment. Through her continued work, she is helping to shape the specialty coffee industry—one cup at a time. https://cafegrumpy.com/ https://www.instagram.com/cafegrumpy Lastly we get into the land of trademarks and the legal protections your brand needs with Maria Sinatra! Maria Sinatra focuses her practice on offensive and defensive Lanham Act and Copyright Act litigation in federal courts throughout the country. Maria has experience with disputes involving anti-counterfeiting actions, trademark and trade dress infringement actions, trademark dilution claims, false advertising issues, and copyright infringement litigation. She regularly advises clients on brand management issues, including how to secure, protect, and police trademark rights. Reach out to and follow Maria on Linkedin: https://www.linkedin.com/in/maria-sinatra-86b851163/ All these interviews took place at Coffee Fest and you should a trade sho you should seriously consider attending! www.coffeefest.com INTERESTED IN CONSULTING AND COACHING? If you are a cafe owner and want to work one on one with me to bring your shop to its next level and help bring you joy and freedom in the process then email chris@keystothshop.com of book a free call now: https://calendly.com/chrisdeferio/30min
In this case, the court considered this issue: Does an award of the “defendant's profits” under the Lanham Act allow a court to require the defendant to disgorge profits earned by legally separate, non-party corporate affiliates?The case was decided on February 26, 2025.The Supreme Court held that the Lanham Act limits recovery of profits in trademark infringement cases to those earned by the named defendant, not its separately incorporated affiliates. Justice Elena Kagan authored the unanimous opinion of the Court.The text of the Lanham Act authorizes recovery of the “defendant's profits,” which refers only to profits of parties named in the lawsuit. This interpretation aligns with fundamental corporate law principles that treat separately incorporated organizations as distinct legal entities with separate rights and obligations, even when they share common ownership. While exceptions exist through corporate veil-piercing doctrines, Dewberry Engineers never pursued this legal pathway. Courts may not, as the lower courts here did, disregard corporate separateness and treat a party and its non-party affiliates as “a single corporate entity” when calculating the profit award.Justice Sonia Sotomayor authored a concurring opinion.The opinion is presented here in its entirety, but with citations omitted. If you appreciate this episode, please subscribe. Thank you.
Navigating Trademark Disputes and Content Creation Challenges. When is it worth your time to go after someone who uses your trademark in a grey area or fair use manner that is not referencing your brand?At the end of the day, just be a human being when you do business. If you have an issue with someone's content, try having a simple conversation before taking action that could hurt a creator, especially a small business owner. I have no hard feelings toward anyone, I'm just sharing what happened because the story is helpful to keep in mind for your own content. Content moderation is usually run by bots who don't understand nuance.I discuss a personal experience of having a YouTube video removed for an apparent trademark violation. I delve into the complexities of trademark law, Lanham Act and fair use. I highlight the importance of diversifying content platforms and building a resilient outreach strategy via your email list.Chapters:(00:29) Understanding Trademark Fair Use(01:50) The Lanham Act Explained(03:02) Personal Reflections on Trademark Issues(05:37) YouTube's Response, and Content Strategy(07:58) Building a Resilient Online Presence(10:15) The Future of Social Media and AILinks mentioned:41k impressions LinkedIn video post: "Let's talk openly about fees"Full video: ROI of Transparent Pricing + Marketing (Financial Advisors and AUM): YouTubeMy podcast tools:Record: emilybinder.com/riversideEdit with AI: emilybinder.com/descriptShop my gear: beetlemoment.com/gearHire me:Speaking: emilybinder.com/speakingCoaching: emilybinder.com/callBring me into your next meeting: thinkersone.com/emilybinderConnect:This podcast | My website | Beetle Moment Marketing | LinkedIn | X | Instagram | TikTok | YouTube | Email updates Hosted on Acast. See acast.com/privacy for more information.
Hello Everyone! Today we will be looking at Vidal v. Elster (2024), a case involving trademark rights and the Lanham Act of 1946. This case examined if a living individuals' name can be trademarked without their consent! Especially with all of the merchandise that was being made leading up to the 2024 Election, it's a very current and interesting issue to look at. Hope you all enjoy!
QUESTION PRESENTED:Whether an award of the “defendant's profits” under the Lanham Act can include an order for the defendant to disgorge the distinct profits of legally separate non-party corporate affiliates. ★ Support this podcast on Patreon ★
Civil Procedure: Can an award of the "defendant's profits" under the Lanham Act include an order for the defendant to disgorge profits from legally separate non-party corporate affiliates? - Argued: Wed, 11 Dec 2024 8:19:9 EDT
A case in which the Court will decide whether an award of the “defendant's profits” under the Lanham Act can include an order for the defendant to disgorge the distinct profits of legally separate non-party corporate affiliates.
Each month, a panel of constitutional experts convenes to discuss the Court’s upcoming docket sitting by sitting. The cases covered in this preview are listed below. Food and Drug Administration v. Wages and White Lion Investments, LLC (December 2) - Federalism & Separation of Powers; Issue(s): Whether the court of appeals erred in setting aside the Food and Drug Administration’s orders denying respondents’ applications for authorization to market new e-cigarette products as arbitrary and capricious. U.S. v. Miller (December 2) - Bankruptcy; Issue(s): Whether a bankruptcy trustee may avoid a debtor’s tax payment to the United States under 11 U.S.C. § 544(b) when no actual creditor could have obtained relief under the applicable state fraudulent-transfer law outside of bankruptcy. Republic of Hungary v. Simon (December 3) - International Law & Financial Services; Issue(s): (1) Whether historical commingling of assets suffices to establish that proceeds of seized property have a commercial nexus with the United States under the expropriation exception to the Foreign Sovereign Immunities Act; (2) whether a plaintiff must make out a valid claim that an exception to the FSIA applies at the pleading stage, rather than merely raising a plausible inference; and (3) whether a sovereign defendant bears the burden of producing evidence to affirmatively disprove that the proceeds of property taken in violation of international law have a commercial nexus with the United States under the expropriation exception to the FSIA. U.S. v. Skrmetti (December 4) - Federalism & Separation of Powers& SOGI; Issue(s): Whether Tennessee Senate Bill 1, which prohibits all medical treatments intended to allow “a minor to identify with, or live as, a purported identity inconsistent with the minor’s sex” or to treat “purported discomfort or distress from a discordance between the minor’s sex and asserted identity,” violates the equal protection clause of the 14th Amendment. Kousisis v. U.S. (December 9) - Environmental Law & Financial Services; Issue(s): (1) Whether deception to induce a commercial exchange can constitute mail or wire fraud, even if inflicting economic harm on the alleged victim was not the object of the scheme; (2) whether a sovereign’s statutory, regulatory, or policy interest is a property interest when compliance is a material term of payment for goods or services; and (3) whether all contract rights are “property.” Feliciano v. Department of Transportation (December 9) - Federal Employment Law; Issue(s): Whether a federal civilian employee called or ordered to active duty under a provision of law during a national emergency is entitled to differential pay even if the duty is not directly connected to the national emergency. Seven County Infrastructure Coalition v. Eagle County, Colorado (December 10) - Environmental Law & Financial Services; Issue(s): Whether the National Environmental Policy Act requires an agency to study environmental impacts beyond the proximate effects of the action over which the agency has regulatory authority. Dewberry Group v. Dewberry Engineers (December 11) - Civil Procedure; Issue(s): Whether an award of the “defendant’s profits” under the Lanham Act can include an order for the defendant to disgorge the distinct profits of legally separate non-party corporate affiliates. Featuring: Boyd Garriott, Associate, Wiley Rein LLP Eric N. Kniffin, Attorney, Kniffin Law PLLC, Fellow, Ethics and Public Policy Center Michael Pepson, Regulatory Counsel, Americans for Prosperity Foundation Alexandra Shapiro, Partner, Shapiro Arato Bach LLP Jeff Stier, Senior Fellow, Consumer Choice Center (Moderator) Tessa Shurr, Committee Staff, U.S. House of Representatives
Welcome to Supreme Court Opinions. In this episode, you'll hear the Court's opinion in Vidal v Elster. In this case, the court considered this issue: Does the refusal to register a trademark under 15 U.S.C. § 1052(c) when the mark contains criticism of a government official or public figure violate the Free Speech Clause of the First Amendment? The case was decided on June 13, 2024. Steve Elster sought to register the trademark "Trump too small" for use on shirts and hats, drawing from a 2016 Presidential primary debate exchange. The Patent and Trademark Office (PTO) refused registration based on the "names clause" of the Lanham Act, which prohibits the registration of a mark that identifies a particular living individual without their written consent. Elster argued that this clause violated his First Amendment right to free speech. The Trademark Trial and Appeal Board affirmed the PTO's decision, but the Federal Circuit reversed. The Supreme Court of the United States reversed the Federal Circuit's decision, holding that the Lanham Act's names clause does not violate the First Amendment. The Court found that while the names clause is content-based, it is not viewpoint-based, as it does not discriminate against any particular viewpoint. The Court also noted that the names clause is grounded in a historical tradition of restricting the trademarking of names, which has coexisted with the First Amendment. The Court concluded that this history and tradition are sufficient to demonstrate that the names clause does not violate the First Amendment. The Court emphasized that its decision is narrow and does not set forth a comprehensive framework for judging whether all content-based but viewpoint-neutral trademark restrictions are constitutional. The opinion is presented here in its entirety, but with citations omitted. If you appreciate this episode, please subscribe. Thank you. --- Support this podcast: https://podcasters.spotify.com/pod/show/scotus-opinions/support
Welcome to Supreme Court Opinions. In this episode, you'll hear the Court's opinion in Abitron Austria GmbH v Hetronic International, Inc. In this case, the court considered this issue: Does the Lanham Act permit the owner of a U.S.-registered trademark to recover damages for the use of that trademark when the infringement occurred outside the United States and is not likely to cause confusion in the United States? The case was decided on June 29, 2023. The Supreme Court held that the Lanham Act extends trademark protection only to claims where the infringing “use in commerce” is domestic. Justice Samuel Alito authored the majority opinion of the Court. Unless Congress explicitly states otherwise, U.S. laws are generally presumed to apply only within the territorial jurisdiction of the United States. This presumption helps avoid conflicts with other countries and is premised on the idea that Congress typically legislates with domestic matters in mind. To apply the presumption against extraterritoriality, courts apply a two-step framework. First, a court must ask whether Congress has explicitly indicated that the statute should apply to foreign conduct. If not, then the second step is to ask whether the lawsuit seeks a permissible domestic or impermissible foreign application of the law. Applying that two-step framework here, the Court concluded that the Lanham Act applies only to claims where the infringing use is domestic. First, neither § 1114(1)(a) nor § 1125(a)(1) explicitly indicates that the statute should apply to foreign conduct. They prohibit the use “in commerce” of protected marks that are likely to cause confusion. A mere reference to “foreign commerce” does not make a statute extraterritorial. Second, the focus of the statute is on the “use in commerce” that is likely to cause confusion, which is domestic conduct. Justice Ketanji Brown Jackson filed a concurring opinion to elaborate on what it means to “use a trademark in commerce.” Justice Sonia Sotomayor filed an opinion concurring in the judgment, in which Chief Justice John Roberts and Justices Elena Kagan and Amy Coney Barrett joined, arguing that while the majority reached the correct conclusion, in her view the Lanham Act extends to activities carried out abroad when there is a likelihood of consumer confusion in the United States. The opinion is presented here in its entirety, but with citations omitted. If you appreciate this episode, please subscribe. Thank you. --- Support this podcast: https://podcasters.spotify.com/pod/show/scotus-opinions/support
Welcome to Supreme Court Opinions. In this episode, you'll hear the Court's opinion in Jack Daniel's™ Properties, Inc. v VIP Products LLC. In this case, the court considered this issue: Is humorous use of another's trademark as one's own on a commercial product subject to the Lanham Act's likelihood-of-confusion analysis, or instead entitled to heightened First Amendment protection? The case was decided on June 8, 2023. The Supreme Court held that The parodic use of another's trademark as one's own on a commercial product is subject to the Lanham Act's likelihood-of-confusion analysis, not the threshold Rogers test, and is not automatically excluded from a claim of trademark dilution. Justice Elena Kagan authored the unanimous opinion of the Court. The Lanham Act creates federal causes of action for trademark infringement and trademark dilution. In a typical infringement case, the question is whether the defendant's use of a mark is “likely to cause confusion, or to cause mistake, or to deceive.” In a typical dilution case, the question is whether the defendant “harmed the reputation” of a famous trademark. However, even before answering these questions, courts apply a threshold test developed by the Second Circuit in Rogers v Grimaldi, Under the Rogers test, when a trademark infringement claim targets an expressive work, the claim must be dismissed unless the complainant can show either (1) that the challenged use of a mark “has no artistic relevance to the underlying work” or (2) that it “explicitly misleads as to the source or the content of the work.” The Rogers test is limited, however. It does not insulate from ordinary trademark scrutiny the use of trademarks as trademarks. A primary purpose of trademark law is to protect against consumer confusion about source, and the risk of consumer confusion is highest when someone uses another's trademark as a trademark, as VIP did with Jack Daniel's iconic bottle. The parodic nature of VIP's use may affect the ultimate determination of the likelihood of consumer confusion, but it does not automatically shield the use from claims of dilution. Thus, dismissal of the infringement and dilution claims under the Rogers test was erroneous. Justice Sonia Sotomayor authored a concurring opinion, in which Justice Samuel Alito joined, to warn courts to view surveys, such as the one provided as evidence of consumer confusion in this case, with caution and as merely one piece of a multifaceted analysis of the likelihood of confusion. Justice Neil Gorsuch authored a concurring opinion, in which Justices Clarence Thomas and Amy Coney Barrett joined. Although the Court's decision left the Rogers test intact, Justice Gorsuch warned lower courts to view it “with care” and expressed doubt that Rogers is “correct in all its particulars.” The opinion is presented here in its entirety, but with citations omitted. If you appreciate this episode, please subscribe. Thank you. --- Support this podcast: https://podcasters.spotify.com/pod/show/scotus-opinions/support
Listen as intellectual property attorneys Tiffany Gehrke and Kelley Gordon of Marshall Gerstein in Chicago share their insights into three matters relevant anyone watching copyright and trademark law, or anyone fond of branded t-shirts and fancy French beverages. I talk to Tiffany Gehrke about two cases. One is Vidal v. Elster, better known as the “TRUMP TOO SMALL” case. Just decided by the Supreme Court, this deals with whether a mark containing criticism of a government official or public figure – which is barred by the “names clause” of the Lanham Act – violates free speech. Justice Thomas wrote the majority opinion, which Tiffany outlines. The other case is Penn State v. Vintage Brands, which is pending in Pennsylvania federal court and is expected to have wide-reaching implications for retailers and brand owners alike. Vintage Brand uses Penn State's registered Nittany Lions trademarks on t-shirts, hats, and other goods, and argues that use of the trademarks constitute a defensible “ornamental use.” We shall see! Finally, I ask Kelley Gordon for her take on a dispute between a popular Instagram influencer, Lauren Holifield, and champagne brand Veuve Clicquot. Holifield temporarily and surprisingly lost her IG account after Veuve Clicquot raised trademark infringement concerns on three of Holifield's videos. This was a big deal for her. She was earning six figures. OMG. Hear what Kelley has to say. *******This podcast is the audio companion to the Journal of Emerging Issues in Litigation. The Journal is a collaborative project between HB Litigation Conferences and the vLex Fastcase legal research family, which includes Full Court Press, Law Street Media, and Docket Alarm.If you have comments, ideas, or wish to participate, please drop me a note at Editor@LitigationConferences.com.Tom HagyLitigation Enthusiast andHost of the Emerging Litigation PodcastHome PageFollow us on LinkedInSubscribe on your favorite platform.
In this episode, host Tom Dunlap discusses the landmark Supreme Court case, Matal v. Tam, and its profound implications on trademark law and free speech. Through the story of Simon Tam and his band The Slants, Tom explores the journey of challenging the disparagement clause of the Lanham Act—a case that ultimately led to a unanimous Supreme Court decision supporting the right to re-appropriate racially disparaging terms under the First Amendment. Join Tom as he unpacks the intricacies of trademark regulations, the concept of commercial speech, and how this case has reshaped legal precedents and cultural dialogues around offensive trademarks.
Trump too Small Trademark Barred by Supreme Court https://www.reuters.com/legal/us-supreme-court-bars-trump-too-small-trademark-2024-06-13 https://www.haynesboone.com/news/alerts/supreme-court-in-trump-too-small-case-leaves-intact-the-lanham-act-restriction https://www.scotusblog.com/2024/06/supreme-court-rejects-trump-too-small-trademark https://ipwatchdog.com/2024/06/13/scotus-reverses-cafcs-trump-small-ruling-names-clause-constitutional/id=178027 https://www.jdsupra.com/legalnews/lanham-act-s-personal-names-restriction-9837342/?origin=CEG&utm_source=CEG&utm_medium=email&utm_campaign=CustomEmailDigest&utm_term=jds-article&utm_content=article-link Griner's “Success Kid” Lawsuit Prevails over King for Congress https://law.justia.com/cases/federal/appellate-courts/ca8/23-2117/23-2117-2024-06-07.html Griner v. King, No. 22-3623 (8th Cir. June 7, 2024) Bacardi and Company Limited v. USPTO … Read the rest The post “Trump Too Small” trademark refusal under Lanham Act ‘Names' Clause is Constitutional – ELU 169 appeared first on Entertainment Law Update.
In recent years, the Supreme Court has decided two cases in which it held that certain restrictions against registering certain kinds of marks violate the Free Speech Clause of the First Amendment. In Matal v. Tam (2017), it invalidated the Lanham Act proscription against registering marks containing terms disparaging toward a person or institution. In Icanu v. Brunetti (2019), it invalidated the Lanham Act proscription against registering marks containing scandalous or immoral terms. The Supreme Court has now decided Vidal v. Elster, in which it adopted this question presented: “Whether the refusal to register a mark under Section 1052(c) [Lanham Act section 2(c)] violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.” At issue was an application to register the mark TRUMP TOO SMALL on various clothing items. Lanham Act section 2(c) prohibits registration of a mark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.” The Federal Circuit held that this proscription violates the Free Speech Clause as applied in this mark-registration application. This Courthouse Steps presentation will discuss the background leading to Vidal v. Elster, review the Court's decision, and discuss its implications for trademark law and free speech. Featuring: Michael K. Friedland, Founding Partner, Friedland Cianfrani LLP Moderator: John B. Farmer, Attorney, Leading-Edge Law Group, PLC
Suspicion of Fraud Cannot Support Qui Tam Action Post 4770 Richard Campfield, suing for the State of California, appealed the trial court sustained the demurrer of defendants Safelite Group, Inc. and its subsidiaries, Safelite Solutions LLC and Safelite Fulfillment, Inc. (collectively, Safelite) without leave to amend. Campfield contends he adequately alleged a cause of action under the Insurance Fraud Prevention Act (Ins. Code, § 1871 et seq.) (IFPA) within the statute of limitations. In State Of California, ex rel. Richard Campfield v. Safelite Group, Inc., et al., A168101, California Court of Appeals, First District, Fourth Division (March 29, 2024) explained the requirements to plead a Qui Tam action under the IFPA. Campfield owns a windshield repair company that licenses and sells products for repairing vehicle windshield cracks. Safelite is the nation's largest retailer of vehicle glass repair and replacement services. Safelite also serves as the third party administrator for over 175 insurance and fleet companies, including 23 of the top 30 insurers in California and the country, for processing and adjusting policyholders' vehicle glass damage claims, and it has direct electronic access to over 20 insurance company databases. In 2015, Campfield sued Safelite in federal district court in Ohio, alleging Safelite's continued reliance on its six-inch rule violated the Lanham Act's (15 U.S.C. § 1051 et seq.) Safelite admitted in responses to interrogatories in the Ohio action that it has never conducted studies on the safety or viability of repair of cracks longer than six inches. Campfield filed under seal the complaint in the present action against Safelite, alleging a single qui tam cause of action for violation of the Insurance Frauds Prevention Act (IFPA). The Insurance Commissioner and the San Francisco County District Attorney declined to intervene, so in September 2022 the trial court unsealed the complaint. Safelite demurred, arguing, among other things, that the complaint failed to allege facts constituting a cause of action under the IFPA. Campfield failed to plead his claim with sufficient particularity, and the statute of limitations barred the complaint. After briefing and a hearing, the trial court sustained the demurrer without leave to amend based on the statute of limitations and noted that Safelite had raised "substantial arguments" that the complaint had not stated a cognizable claim and that the action was barred by the IFPA's public disclosure bar. The trial court then dismissed the action. The IFPA was enacted to prevent automobile and workers' compensation insurance fraud in order to, among other things, significantly reduce the incidence of severity and automobile insurance claim payments and therefore produce a commensurate reduction in automobile insurance premiums. The sole cause of action in the complaint is based on Insurance Code section 1871.7, subdivision (b), which allows for the imposition of civil penalties and other remedies against anyone who violates Insurance Code section 1871.7 or Penal Code sections 549, 550, or 551. Campfield alleges Safelite violated Penal Code section 550, subdivision (b)(1) and (2). As in any action sounding in fraud, an IFPA action must be pleaded with particularity. To effectively state his IFPA cause of action, Campfield must allege facts showing that Safelite presented, or caused to be presented, a false statement as part of, or in support of or opposition to, a claim for payment or other benefit pursuant to an insurance policy or prepared or made a false statement intended to be presented to any insurer or any insurance claimant in connection with, or in support of or opposition to, any claim or payment or other benefit pursuant to an insurance policy. --- Support this podcast: https://podcasters.spotify.com/pod/show/barry-zalma/support
Each month, a panel of constitutional experts convenes to discuss the Court's upcoming docket sitting by sitting. The cases covered in this preview are listed below.Culley v. Marshall (October 30) - Due Process; What test should district courts apply to determine whether a state or local government must provide a hearing to someone who has had property seized under a civil asset forfeiture law?Lindke v. Freed (October 31) - Civil Rights, First Amendment; Whether a public official's social media activity can constitute state action only if the official used the account to perform a governmental duty or under the authority of his or her office.O'Connor-Ratcliff v. Garnier (October 31) - Civil Rights, First Amendment; Are public officials acting as government officials, so that they can violate the First Amendment, when they block people on their personal social media accounts that they use to communicate with the public?Vidal v. Elster (November 1) - First Amendment, Intellectual Property; Does Section 2(c) of the Lanham Act, which bars the registration of a trademark which uses the name of another living person without that person's permission, violate the Constitution when used to reject a trademark that contains criticism of a government official or public figure?Department of Agriculture Rural Development Rural Housing Service v. Kirtz (November 6) - Fair Credit Reporting Act, Sovereign Immunity; Whether the civil-liability provisions of the Fair Credit Reporting Act clearly waive the sovereign immunity of the United States.United States v. Rahimi (November 7) - Second Amendment; Whether a federal ban on the possession of guns by individuals who are subject to domestic violence restraining orders violates the Second Amendment.Rudisill v. McDonough (November 8) - GI Bill; Whether a veteran who has served two separate periods of qualifying service under the Montgomery GI Bill and the Post-9/11 GI Bill is entitled to receive a total of 48 months of education benefits as between both programs.Featuring: Braden Boucek, Director of Litigation, Southeastern Legal FoundationProf. Christa Laser, Professor, Cleveland State University of Law Gary Lawkowski, Counsel, Dhillon Law GroupAmy Swearer, Senior Legal Policy Analyst, Meese Center for Legal and Judicial Studies, The Heritage FoundationModerator: Laura Stanley, Judicial Law Clerk, US Court of Appeals, Ninth Circuit
The opinion of the Supreme Court in Abitron Austria GmbH v. Hetronic Int'l, Inc. (2023) in which the Court was asked whether the Lanham Act permits the owner of a U.S.-registered trademark to recover damages for the use of that trademark when the infringement occurred outside the United States and is not likely to cause confusion in the United States. Access Additional resources about this case at oyez.org: https://www.oyez.org/cases/2022/21-1043 Follow What SCOTUS Wrote Us for audio of Supreme Court opinions. Anywhere you listen to podcasts.
Stanford's Evelyn Douek and Alex Stamos weigh in on the latest online trust and safety news and developments:X-Twitter CornerTwitter followed through on its threat to sue the Center for Countering Digital Hate (CCDH). The rationale has changed from a violation of the Lanham Act, a federal trademark statute, to a breach of contract and violations of the Computer Fraud and Abuse Act (CFAA). It's still a bad idea and not at all free-speechy. - Bryan Pietsch/ The Washington Post But in a pleasant surprise, X appealed an Indian court ruling that it was not compliant with federal government orders to remove political content, arguing it could embolden New Delhi to block more content and broaden the scope of censorship. Does Musk know about this? - Aditya Kalra, Arpan Chaturvedi, Munsif Vengattil/ ReutersMeanwhile, Apple removed Meduza's flagship news podcast, “What Happened,” from Apple Podcasts and then reinstated it two days later without explaining… what happened. - MeduzaEarlier this summer, the Russian state censorship authority asked Apple to block the Latvian-based, independent Russian- and English-language news outlet's show.About a month ago, the Oversight Board told Meta to suspend Cambodian Prime Minister Hun Sen from Facebook and Instagram. He originally threatened to leave the platform altogether, but instead is back and posting. Meta has three more weeks until the deadline to respond to the Board's recommendation. (Shoutout to Rest of World for being one of the only outlets covering this!) - Danielle Keeton-Olsen, Sreynat Sarum/ Rest of World TikTok announced a number of new measures that it is rolling out in the EU to comply with the Digital Services Act, which comes into effect for major platforms at the end of the month. Especially ironic in light of our discussion last week, one of the measures is a chronological feed. - Natasha Lomas/ TechCrunch, TikTokGoogle said demand for its free Perspective API has skyrocketed as large language model builders are using it as a solution for content moderation. But Perspective is a blunt tool with documented issues, including high false-positives and bias, and a lack of context that can be easily fooled by adversarial users. (Shoutout to Yoel Roth for skeeting about this on Bluesky) - Alex Pasternack/ Fast Company, @yoyoel.comThis is scary: A lawsuit brought by the adult entertainment industry group Free Speech Coalition (FSC) against the state of Utah to stop enforcement of a new state law requiring age verification to access adult websites was dismissed. - Sam Metz/ Associated PressThe court held that the law can't be challenged and paused with an injunction before it goes into effect because it's not enforced by the government, but with private lawsuits. Not only that, but the court said the group can't raise the constitutional arguments it made against the law until a resident uses it to file a lawsuit.This has to be wrong as a matter of First Amendment law, which is usually very concerned about chilling effects. FSC appealed the ruling, so we'll have to wait and see. If this survives, it will be a scary loophole to First Amendment scrutiny.Sports CornerAussie Aussie Aussie! Oi Oi Oi! The Matildas are through to the Women's World Cup quarter finals with a 2-0 win over Denmark and Sam Kerr's return to the pitch for the final 10 minutes of play. - Jon Healy, Simon Smale/ ABC News (Australia)We send our commiserations to the U.S. Women's team for bowing out of the World Cup in the worst possible way. Hold your head up high, Megan Rapinoe, you've left an indelible mark on the sport and U.S. women's athletics! - Issy Ronald/ CNNStanford Athletics is in rare company, but not the kind you want to be in. All but three other teams will leave the Pac-12 as the historic college athletics conference faces an uncertain future. - John Marshall/ Associated PressJoin the conversation and connect with Evelyn and Alex on Twitter at @evelyndouek and @alexstamos.Moderated Content is produced in partnership by Stanford Law School and the Cyber Policy Center. Special thanks to John Perrino for research and editorial assistance.Like what you heard? Don't forget to subscribe and share the podcast with friends!
Kona Coffee Must be From the Big Island of Hawaii L&K Coffee claimed its various insurance companies erroneously denied coverage to defend it against a Lanham Act false-advertising lawsuit brought by Hawaiian coffee growers. The district court concluded the applicable insurance policies did not obligate a defense and entered summary judgment in the insurance companies' favor. In L&K Coffee LLC, dba Magnum Roastery; Kevin Kihnke v. LM Insurance Corporation; Liberty Insurance Corporation; Selective Way Insurance Company; Valley Forge Insurance Company; Continental Casualty Company, No. 22-1727, United States Court of Appeals, Sixth Circuit (June 1, 2023) the Sixth Circuit resolved the coverage dispute. FACTS L&K Coffee, LLC, a Michigan-based company, roasts and sells coffee products throughout the United States. Defendants are insurance companies from whom L&K purchased general commercial liability and umbrella insurance policies. Coffee growers from the Kona region of the Island of Hawai'i sued L&K and other coffee companies for "false designation of origin, false advertising, and unfair competition" in violation of the Lanham Act, 15 U.S.C. § 1125(a), in the Western District of Washington. These "Kona Plaintiffs" alleged that the defendants falsely designated the origin of the coffee they branded and distributed as "Kona" coffee "when most of the coffee beans contained in the coffee products were sourced from other regions of the world." The Kona Plaintiffs' operative complaint summarized their contentions as to L&K as follows: "L&K falsely designates the geographic origin of its "Kona" coffee products with the prominent placement of KONA on the front of the packaging." ANALYSIS The duty of an insurance company to provide a defense depends upon the allegations in the complaint and extends to allegations which even arguably come within the policy coverage. An insurer's duty to defend does not depend solely upon the terminology used in a plaintiff's pleadings. Rather, it is necessary to focus on the basis for the injury and not the nomenclature of the underlying claim in order to determine whether coverage exists. The term "disparage" means an untrue statement directed towards another's property. A disparagement claim requires a company to make false, derogatory, or disparaging communications about a competitor's product." (emphasis in the opinion) The Kona Plaintiffs alleged L&K violated the Lanham Act's prohibition on false designation of one's own product. See 15 U.S.C. § 1125(a)(1). The Sixth Circuit concluded that this is not "disparagement." ZALMA OPINION It never pays to lie to your customers. When doing so harms someone else you are subject to damages from those your lie harms. By falsely designating its product of "Kona" coffee when L&K claimed its cheap, generic coffee was "Kona" Coffee it was involved in a tort that was not covered by the policies of insurance. (c) 2023 Barry Zalma & ClaimSchool, Inc. Please tell your friends and colleagues about this blog and the videos and let them subscribe to the blog and the videos. Subscribe and receive videos limited to subscribers of Excellence in Claims Handling at locals.com https://zalmaoninsurance.locals.com/subscribe. Consider subscribing to my publications at substack at https://barryzalma.substack.com/publish/post/107007808 Go to Newsbreak.com https://www.newsbreak.com/@c/1653419?s=01 Barry Zalma, Esq., CFE, is available at http://www.zalma.com and zalma@zalma.com Follow me on LinkedIn: www.linkedin.com/comm/mynetwork/discovery-see-all?usecase=PEOPLE_FOLLOWS&followMember=barry-zalma-esq-cfe-a6b5257 --- Support this podcast: https://podcasters.spotify.com/pod/show/barry-zalma/support
In Jack Daniel's Properties, Inc. v. VIP Products LLC, the Supreme Court is considering "Whether humorous use of another's trademark as one's own on a commercial product is subject to the Lanham Act's traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims; and (2) whether humorous use of another's mark as one's own on a commercial product is “noncommercial” and thus bars as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act."IP expert Adam Mathews joined us to break down the case and oral argument.Featuring:Adam Mathews, State Representative, Ohio, and Attorney, Ashbrook Byrne Kresge
In our innovation economy, trademarks and trademark protection are likely to play a significant role in an intellectual property strategy. We know companies spend lots of time and money investing in brands as they compete for consumer attention and recognition. We also know that surveys play an important role in trademark and unfair competition cases. In particular, that's because so many inquiries are focused on the perceptions of the average, reasonably prudent consumer. How do we measure that? How do we assess that? It sets the stage for a potential consumer survey, which introduces both technical and strategic questions. Featured guest Mike Keyes is uniquely qualified to help us better understand the effective use of trademark surveys, both from an academic and a practical litigation perspective.In this episode, Jeff Harty and Mike Keyes discuss: The evolution of survey evidence in court cases. Common ways surveys are used in trademark and advertising litigation. The role lawyers and survey experts play in consumer surveys. Why surveys are approachable subject matter and evidence for jurors (and how they can be looked upon unfavorably). Hurdles to the admissibility of survey evidence. Key Takeaways: The treatment of expert testimony under Federal Rules of Evidence 702 and 703 contributed to the growth of consumer surveys in litigation, and now it is not unusual for judges to expect to see surveys in Lanham Act cases. When it comes to secondary meaning and likelihood of confusion, surveys can be beneficial and can be powerful and persuasive pieces of evidence. Different types of trademark survey designs can be used depending on what litigators are trying to show, such as genericism, acquired distinctiveness, or likelihood of confusion. There's both art and science to putting together a survey questionnaire that's clear, concise, and not leading or biasing survey respondents. “Survey evidence doesn't show actual confusion—what it's trying to test for. It's a tool to assess how consumers' perceptions are in the real-world marketplace. And because it's really trying to get at that issue, it's important to replicate marketplace conditions in terms of how consumers encounter the marks at issue during the survey process.” —Mike Keyes About Mike Keyes: Mike Keyes is the co-head of Dorsey's trial group and a go-to intellectual property and commercial litigation trial attorney with a vast reservoir of experience in cases involving trademarks, copyrights, and false advertising, including individual consumer and class action claims. Mike and his team have represented some of the world's most recognized brands and companies in high-stakes litigation in federal courts across the country including Washington, Oregon, California, Colorado, Minnesota, Illinois, New York, Massachusetts, Utah, and Florida. These disputes have encompassed subject matters including medical diagnostics software, online games and apps, Google Ads, social media, e-books, consumer products, food and beverage, fashion, sports equipment, educational testing tools, and hospitality services. Connect with Mike Keyes: Website: https://www.dorsey.com/ LinkedIn: https://www.linkedin.com/in/mike-keyes-7b6a134/ Email: keyes.mike@dorsey.com Connect with Jeff Harty: Website: https://nyemaster.com/attorney-directory/jeffrey-d-harty/Email: jharty@nyemaster.comLinkedIn: https://www.linkedin.com/in/jeff-harty-5a9a1643/
In Jack Daniel's Properties, Inc. v. VIP Products LLC, the Supreme Court is considering "Whether humorous use of another's trademark as one's own on a commercial product is subject to the Lanham Act's traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims; and (2) whether humorous use of another's mark as one's own on a commercial product is “noncommercial” and thus bars as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act."Following oral arguments in the case, IP expert Adam Mathews joined us to break down the case and answer audience questions.Featuring:- Adam Mathews, State Representative, Ohio, and Attorney, Ashbrook Byrne Kresge
Trade dress is the characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers. Trade dress is an aspect of trademark law, which is a form of intellectual property protection law. Overview. Trade dress is an extension of trademark protection to "the design and shape of the materials in which a product is packaged, . 'Product configuration,' the design and shape of the product itself, may also be considered a form of trade dress." Product configuration applies particularly to situations where the product can be seen within the packaging (for example a toy car sold in packaging that operates as a shadow box for commercial display within—the collective look it creates is trade dress), or where the packaging is part of the product (for example the bottle of a soft drink, along with its visible contents, are trade dress, though the bottle is actually part of the product that retains its value to the consumer for as long as its contents last). Like all intellectual property law other than patent law, trade dress and other trademark elements are subject to the bar on functional features (for example a handle cannot be protected, though it may contain trade dress features that can prevent exact replicas of a particular trade dress handle). It is a question of which elements of the packaging are intrinsic to the basic function of the packaging. In the United States, the Lanham Act protects trade dress if it serves the same source-identifying function as a trademark. It is possible to register a trade dress as a trademark, but for practical reasons most trade dress and product configurations are protected without registration under 15 U.S.C. § 1125(a). United Kingdom. Trade dress can be protected as getup under the law of passing off in the UK. Passing off is a common law remedy for protecting an unregistered trade mark. Getup, packaging, business strategy, marketing techniques, advertisement themes etc. can also be protected under passing off. United States. Trade dress protection is intended to protect consumers from packaging or appearance of products that are designed to imitate other products; to prevent a consumer from buying one product under the belief that it is another. For example, the shape, color, and arrangement of the materials of a children's line of clothing can be protectable trade dress (though, the design of the garments themselves is not protected), as can the design of a magazine cover, the appearance and décor of a chain of Mexican-style restaurants, and a method of displaying wine bottles in a wine shop. --- Send in a voice message: https://podcasters.spotify.com/pod/show/law-school/message Support this podcast: https://podcasters.spotify.com/pod/show/law-school/support
Respondent VIP Products LLC markets and sells dog toys that trade on the brand recognition of famous companies such as petitioner Jack Daniel's Properties, Inc. The district court found that VIP's use of Jack Daniel's trademarks to sell poop-themed dog toys was likely to confuse consumers, infringed Jack Daniel's marks, and tarnished Jack Daniel's reputation. The Ninth Circuit, however, held that VIP's First Amendment interest in using Jack Daniel's trademarks as its own marks on funny dog toys conferred special protection from infringement claims and rendered VIP's commercial dog toys "noncommercial" and thus exempt from dilution-by-tarnishment claims. The questions presented are: I. Whether humorous use of another's trademark as one's own on a commercial product is subject to the Lanham Act's traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims. 2. Whether humorous use of another's mark as one's own on a commercial product is "noncommercial" under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act. https://www.supremecourt.gov/search.aspx?filename=/docket/docketfiles/html/public/22-148.html
Issue(s): (1) Whether humorous use of another's trademark as one's own on a commercial product is subject to the Lanham Act's traditional likelihood-of-confusion analysis, 15 U.S.C. § 1125(a)(1), or instead receives heightened First Amendment protection from trademark-infringement claims; and (2) whether humorous use of another's mark as one's own on a commercial product is “noncommercial” and thus bars as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act, 15 U.S.C. § 1125(c)(3)(C). ★ Support this podcast on Patreon ★
Issue(s): Whether the U.S. Court of Appeals for the 10th Circuit erred in applying the Lanham Act, which provides civil remedies for infringement of U.S. trademarks, extraterritorially to Abitron Austria GmbH's foreign sales, including purely foreign sales that never reached the United States or confused U.S. consumers. ★ Support this podcast on Patreon ★
A case in which the Court held that humorous use of another's trademark as one's own on a commercial product is subject to the Lanham Act's likelihood-of-confusion analysis.
A case in which the Court will decide whether humorous use of another's trademark as one's own on a commercial product is subject to the Lanham Act's likelihood-of-confusion analysis, or instead receives heightened First Amendment protection.
Petitioners-all foreign nationals-were subjected to a $90 million damages award under the Lanham Act, 15 U.S.C. § 1051 et seq., for allegedly infringing respondent's U.S. trademarks. While trademark rights are distinctly territorial, the accused sales occurred almost entirely abroad. Of approximately $90 million in sales, 97% were purely foreign: They were sales in foreign countries, by foreign sellers, to foreign customers, for use in foreign countries, that never reached the United States or confused U.S. consumers. The Tenth Circuit nonetheless held that the Lanham Act applies extraterritorially to all of petitioners' foreign sales. Recognizing that the circuits have splintered in this area, the Tenth Circuit adopted an expansive view that other courts, including the Fourth Circuit, have concededly rejected. Under the Tenth Circuit's view, the Lanham Act applies extraterritorially whenever foreign defendants' foreign conduct allegedly diverts foreign sales from a U.S. plaintiff. Such an effect, the court held, sufficiently affects U.S. commerce because it prevents foreign revenue from flowing into the U.S. economy. The question presented is: Whether the court of appeals erred in applying the Lanham Act extraterritorially to petitioners' foreign sales, including purely foreign sales that never reached the United States or confused U.S. consumers.
Let's meet the halfway point in the week head-on and take a peek at today's legal news. The US Supreme Court is deciding whether US trademark law applies to foreign conduct in a case involving a $90m infringement award over radio remote controls. The Tenth Circuit upheld a $115m award, including $90m in trademark infringement damages, to Hetronic International against Abitron Germany for infringing radio remote controls for heavy-duty construction equipment sold worldwide. While Abitron maintained that nearly all its conduct was international and therefore the Tenth Circuit had overreached, Hetronic argued the focus should be on whether actions caused consumer confusion in the US. The case has raised concerns about the reach of US trademark law into other jurisdictions, but the justices have also indicated that Congress' authority over US commerce becomes difficult to square with arguments limiting the reach of trademark law in a global, internet-connected context. IP attorney Mark Lezama of Knobbe Martens said the majority of justices appeared to be in favour of reversing the Tenth Circuit's judgment in large part and limiting the extraterritorial reach of the Lanham Act.By way of brief background, the Lanham Act, also known as the Trademark Act of 1946, is a United States federal law that governs trademarks, service marks, and unfair competition. It provides for the registration of trademarks and service marks with the United States Patent and Trademark Office (USPTO) and establishes procedures for enforcing trademark rights. The Lanham Act prohibits false advertising, false designation of origin, and other deceptive practices that may confuse consumers about the source or quality of goods or services. It also provides for remedies such as injunctions, damages, and attorney's fees in cases of trademark infringement. The Lanham Act has been amended several times over the years to keep pace with changes in technology and commerce, but it remains an important tool for protecting intellectual property rights in the United States and, maybe now, worldwide. Justices Weigh Trademark Law's Reach Against Global Commerce (1) Texas and Idaho will operate under a federal waters rule that was in place before March 20, after a federal court barred the Biden administration's 2023 waters of the US (WOTUS) rule from being implemented in those states. The new rule is designed to protect water quality in major waterways across the US, and impacts housing, agricultural, mining and other development projects in every state, as a permit is required to disturb federally protected waters and wetlands. The definition of federally protected waters under the Clean Water Act has been subject to a complex series of challenges and revisions, including a 2008-15 rule, the Obama administration's expansion of federally protected waters and wetlands, a subsequent court decision rejecting that rule, and the Trump administration's changes to WOTUS. The Biden administration is facing five lawsuits challenging its 2023 rule, brought by at least 26 states and industry groups. Although the injunction against the rule in Texas and Idaho is not expected to affect the other lawsuits, a Supreme Court case, Sackett v. EPA, could undermine the significant nexus test that is currently used to determine whether waters and wetlands are protected under the law, potentially prompting further litigation.‘Bizarre' Texas Injunction Means Past US Waters Rule in Effect Manhattan prosecutors are expected to decide within days whether to bring charges against former President Donald Trump for his role in hush-money payments made by his former lawyer, Michael Cohen, to Stormy Daniels in the run-up to the 2016 presidential election. Trump denies having had an affair with Daniels. The inquiry into the payments opened and closed several times, leading to the case being referred to as a "zombie case". Doubts had arisen as to whether state felony charges could be brought against a candidate for federal office, and whether the conduct could be considered money laundering. Manhattan District Attorney Alvin Bragg launched the probe after his predecessor Cyrus Vance twice looked into the payment and did not bring charges. The new prosecutor is reportedly approaching the case with a different legal theory. Trump, who is seeking the Republican nomination for the presidency again in 2024, has called the probe a "witch hunt" – which is probably accurate … if there really was a witch and it really had paid off an adult film actress. Trump hush-money charges would bring 'zombie case' back to lifeContent warning here for a hateful law enacted by a hateful person, with my condolences to all the good people in Arkansas that aren't currently governor. If you want to hop off here and catch up with us tomorrow, this is our last story of the day. Have a great one.On Tuesday, Arkansas Governor Sarah Huckabee Sanders signed a law that prohibits transgender individuals from using public school restrooms that match their gender identity. The law applies to multi-person restrooms and locker rooms in public schools and charter schools serving pre-K through grade 12. The law requires schools to provide reasonable accommodations, such as single-person restrooms and changing areas, and school authorities that violate the law can face fines of at least $1,000, while parents can file lawsuits to enforce the measure. A spokesperson for Sanders said that the governor is focusing on protecting and educating children, not “indoctrinating” them – and indoctrinating should be viewed with huge sarcastic air quotes. This law is similar to ones in Alabama and Oklahoma that are aimed at making life miserable for transgender youth, while Republican legislators across the United States have been campaigning to ban healthcare for them. Some are even seeking to charge parents and doctors with child abuse if they provide treatment, all are aiding and abetting their most extreme colleagues by putting party loyalty ahead of basic human decency. Arkansas enacts law restricting school bathroom use by transgender people Get full access to Minimum Competence - Daily Legal News Podcast at www.minimumcomp.com/subscribe
A case in which the Court held that the Lanham Act does not permit the owner of a U.S.-registered trademark to recover damages for the use of that trademark when the infringement occurred outside the United States and is not likely to cause confusion in the United States.
A case in which the Court will decide whether the Lanham Act permits the owner of a U.S.-registered trademark to recover damages for the use of that trademark when the infringement occurred outside the United States and is not likely to cause confusion in the United States.
Civil Procedure: Does the Lanham Act apply extraterritorially to foreign sales that never reached the United States or confused U.S. consumers? - Argued: Tue, 21 Mar 2023 14:2:6 EDT
In this episode of Law, disrupted, John is joined by John Hueston and Moez Kaba, Co-Founders and Partners at Hueston Hennigan LLP. Chambers has described John Hueston as “one of the top trial attorneys” in the United States and Moez as “a master in the courtroom.” Together they discuss an arbitration in which they obtained both a $175 million plus 5% ongoing royalty (an estimated $50 million annually) award in arbitration – one of the largest U.S. trademark awards ever – and a federal jury trial verdict for more than $271 million (a potential record for a Lanham Act case) for clients Monster Energy and Orange Bang against Vital Pharmaceuticals, Inc. (VPX), the maker of Bang energy drinks. The conversation begins with John Hueston explaining the background of the dispute. He discusses how for 40 years, Orange Bang had a widely known trademark for the term “Orange Bang” as a beverage. He then explains that VPX licensed the use of the term “Orange Bang” but only in connection with creatine-based beverages in the nutrition market. The discussion turns to the rise of VPX to become the third largest competitor in the energy drink market, thanks to their product, Bang Energy. The discussion then turns to the issues in play in the arbitration, including how John and Moez had to prove both the licensing agreement's validity and that the trademark had been infringed. They explain their strategy of making the three-week arbitration about the science creatine and how they used VPX's own documents and witnesses' depositions to work in their favor. Moez and John discuss how they proved trademark infringement using survey evidence, historical admissions, and strong equitable stories, including how VPX signed the licensing agreement knowing confusion would ensue. They explain why they decided to take a conservative approach to monetary damages rather than asking for more than $1 billion, which expert analysis could have supported. This approach resulted in an award of $175 million plus 5% royalties going forward.John then moves the discussion to the Lanham Act jury trial. Moez begins by noting the nine-month time difference between the arbitration and the federal trial and that Monster had filed its lawsuit in California in 2018 before the arbitration proceedings began. In the lawsuit, Monster alleged that VPX advertised its product as a game-changing beverage, which was "nothing short of a miracle drink that delivers benefits and cures that have evaded scientists for decades." Monster also alleged that VPX had misappropriated Monster's trade secrets by hiring Monster employees and telling them to bring Monster's confidential information over with them.John Hueston and Moez then explain their unique approach to mock jury exercises in which they overweight the other side's arguments to help develop their approach both before starting discovery and to prepare for the trial. They also discuss the strict time limits the Court placed on the trial and how they were able to present their case involving complex health, science, and legal issues. Moez explains how they developed their themes that VPX was lying to consumers about what they put in their beverages, cheating competitors by taking confidential information and stealing shelf space away from Monster Energy in supermarkets. They discuss how instead of calling VPX's CEO to the stand first, they targeted high-level executives who could confirm VPX's false statements.Finally, the discussion turns to the two critical points of the trial that gave John & Moez the confidence to believe the jury would rule for them: the jury's reaction to John Hueston's cross-examination of VPX's CEO and Moez's ability to reduce the scientific issues to a level that was understandable and compelling to a working-class jury. Ultimately, the jury awarded Monster more than $271 million on its Lanham Act claim.
In this episode, we discuss defense strategies for UCL and FAL claims based on law developed under the federal Lanham Act, and the relationship between those statutes.
We may not give much thought to how trademark laws affect our daily lives, but the Lanham Act has played a huge role in protecting us as consumers. How? Rocky Dhir welcomes intellectual property experts Joe Cleveland and Craig Stone to discuss the evolution of trademark law and its functions in our economy. They also honor Texas Congressman Fritz Lanham's contributions to this area of the law and explain how his namesake Act has promoted trust and reliability in United States commerce and inspired other countries to model their laws after its statutes. Joe Cleveland is a director and shareholder at Brackett & Ellis, P.C., and has practiced in the area of commercial and intellectual property litigation for over 20 years. Craig Stone is Senior Counsel, Intellectual Property at Phillips 66 Company. Special thanks to our sponsor, Clio.
We may not give much thought to how trademark laws affect our daily lives, but the Lanham Act has played a huge role in protecting us as consumers. How? Rocky Dhir welcomes intellectual property experts Joe Cleveland and Craig Stone to discuss the evolution of trademark law and its functions in our economy. They also honor Texas Congressman Fritz Lanham's contributions to this area of the law and explain how his namesake Act has promoted trust and reliability in United States commerce and inspired other countries to model their laws after its statutes. Joe Cleveland is a director and shareholder at Brackett & Ellis, P.C., and has practiced in the area of commercial and intellectual property litigation for over 20 years. Craig Stone is Senior Counsel, Intellectual Property at Phillips 66 Company. Special thanks to our sponsor, Clio.
"Can we long exist as a society if we lose our tradition in the roots of faith?" My guest on this episode of Law and Legitimacy is Ron Coleman. Ron Coleman is a partner at The Dhillon Law Group and has a robust practice including business law, commercial litigation, trademarks, intellectual property, antitrust, appellate issues and the occasional appearance in front of SCOTUS, anchored out of New York City. Ron is also the host of his own new podcast, The Coleman-Nation Podcast, and is the brilliant mind behind the massive catalogue of blog material you can find at Likelihood of Confusion. Ron is a lawyer's lawyer, without a doubt. But although our conversation was anchored in the obvious pretense of the practice of law, you will find a transcendent discussion emerge—almost from the moment this episode begins. I took great pleasure in learning of Ron's commitment to Talmudic scholarship and his willingness to share the insight embedded in what he terms to be the "codified fact patterns" of scripture. Among the most poignant queries: what is Inspiration? What does it mean to be Inspired? And is modern man inspired in his current state? This is the central question of this podcast. Ron and I together attempt to lay forth the nihilistic trajectory of the current era—a sort of anarchy—and opine on the existential importance of common conceptions of right and consensus to a society. And if two seasoned attorneys with minimal overlap in practice can colocate around these themes, where are the rest of the people in our profession? Yes. We really attacked the theme of Legitimacy. Our discussion floats effortlessly from our shared philosophical bents into more concrete topics, such as legal realism, the Lanham Act (wherein Ron teaches me and the rest of you what a trademark is in less than 90 seconds), Ron's representation of The Slants before SCOTUS in Matal v. Tam, the evolving trends in Speech, and the Giuliani law license suspension. I cannot overstate the pleasure we took here at Law and Legitimacy in hosting such engaging content. Perhaps that is the real magic of Ron Coleman. You can find him raising hell on Socials: @RonColeman, @ColemanNation1, and @Likely2Confuse. You may follow the firm, @DhillonLaw, and the Coleman-Nation Podcast producer, Jeremy Corr, @JeremyCCorr. Join Norm Pattis's growing subscriber base on Patreon. And give Law and Legitimacy a 5-Star rating on your platform of choice and leave a review! --- Support this podcast: https://anchor.fm/norm-pattis/support
"Can we long exist as a society if we lose our tradition in the roots of faith?" My guest on this episode of Law and Legitimacy is Ron Coleman. Ron Coleman is a partner at The Dhillon Law Group and has a robust practice including business law, commercial litigation, trademarks, intellectual property, antitrust, appellate issues and the occasional appearance in front of SCOTUS, anchored out of New York City. Ron is also the host of his own new podcast, The Coleman-Nation Podcast, and is the brilliant mind behind the massive catalogue of blog material you can find at Likelihood of Confusion. Ron is a lawyer's lawyer, without a doubt. But although our conversation was anchored in the obvious pretense of the practice of law, you will find a transcendent discussion emerge—almost from the moment this episode begins. I took great pleasure in learning of Ron's commitment to Talmudic scholarship and his willingness to share the insight embedded in what he terms to be the "codified fact patterns" of scripture. Among the most poignant queries: what is Inspiration? What does it mean to be Inspired? And is modern man inspired in his current state? This is the central question of this podcast. Ron and I together attempt to lay forth the nihilistic trajectory of the current era—a sort of anarchy—and opine on the existential importance of common conceptions of right and consensus to a society. And if two seasoned attorneys with minimal overlap in practice can colocate around these themes, where are the rest of the people in our profession? Yes. We really attacked the theme of Legitimacy. Our discussion floats effortlessly from our shared philosophical bents into more concrete topics, such as legal realism, the Lanham Act (wherein Ron teaches me and the rest of you what a trademark is in less than 90 seconds), Ron's representation of The Slants before SCOTUS in Matal v. Tam, the evolving trends in Speech, and the Giuliani law license suspension. I cannot overstate the pleasure we took here at Law and Legitimacy in hosting such engaging content. Perhaps that is the real magic of Ron Coleman. You can find him raising hell on Socials: @RonColeman, @ColemanNation1, and @Likely2Confuse. You may follow the firm, @DhillonLaw, and the Coleman-Nation Podcast producer, Jeremy Corr, @JeremyCCorr. Join Norm Pattis's growing subscriber base on Patreon. And give Law and Legitimacy a 5-Star rating on your platform of choice and leave a review! --- Support this podcast: https://anchor.fm/norm-pattis/support
Signed into law in July of 1946, the Lanham Act has, for 75 years, governed U.S. trademark, servicemark, and unfair competition matters. In this edition of the Jones Day Talks Women in IP series, Meredith Wilkes, Anna Raimer, and Carrie Kiedrowski discuss how trademark laws have changed and evolved since the Lanham Act's implementation, and … Continue reading JONES DAY TALKS®: 75 Years of the Lanham Act and Changes in U.S. Trademark Law →
On today's show, we talk with Ron Coleman, partner at Dhillon Law Group in New York. Ron is a commercial litigator working primarily in trademark infringement, unfair competition, and consumer law. He is a champion of free speech and is known throughout the legal profession for his First Amendment advocacy.Join us as Ron tells us the story of a case that would help to define his career. He shares with the events leading up to the landmark Matal v. Tam decision in which Ron represented the band "The Slants" in order to fight the Lanham Act and defend the band's First Amendment rights.Have you got a story about your legal career that you'd like to share? Get in touch with us over at That One Case.For more information about Ron, check out his LinkedIn. Or to find out more about his work, head over to the Dhillon Law Group website.
This episode is all about fashion designer, director and style legend Tom Ford. I begin with a brief biography and history of Tom Ford's career. Then I provide a legal analysis of the trademark infringement case Chadwick McQueen v. Tom Ford International LLC over a Tom Ford shawl collar cardigan. Finally, I discuss and analyze how Tom Ford's counsel was able to register a trademark for Tom Ford's famous and controversial perfume name "fucking fabulous" overcoming the scandalousness provision of Section 2(a) of the Lanham Act including a discussion of the recent landmark Supreme Court decision in Iancu v. Brunetti. Enjoy and thank you for listening! Episode Notes: 1. Chadwick McQueen v. Tom Ford International LLC (2:19-cv-04074) (C.D. Cal. 2019) 2. Iancu v. Brunetti, No. 18-302 (U.S., June 24, 2019)
The Trademark Trial and Appeal Board (TTAB) has decided that a proposed mark incorporating the name “Trump” may not be federally registered as a trademark. Relying on the Lanham Act that doesn't allow registration of any mark that identifies “a particular living individual” without that person’s consent, the TTAB refused to register “Trump Too Small” for use on T-shirts and other apparel.
Moral rights. Moral rights are rights of creators of copyrighted works that are generally recognized in civil law jurisdictions and, to a lesser extent, in some common law jurisdictions. They include the right of attribution and the right to the integrity of the work, which bars the work from alteration, distortion, or mutilation without the author's permission. Paraphrasing without permission may be seen as violating moral rights. Moral rights are distinct from any economic rights tied to copyrights. Even if the author has assigned their copyright to a third party, they still maintain the moral rights to the work. Moral rights were first recognized in France and Germany. They were included in the Berne Convention for the Protection of Literary and Artistic Works in 1928. While the United States became a signatory to the Berne convention in 1989, it does not completely recognize moral rights as part of copyright law, which is seen as protecting commercial rights in intellectual property, but as part of other bodies of law such as defamation or unfair competition which protect the reputation of the author. Edward Gibbon published the last three volumes of his masterpiece The History of the Decline and Fall of the Roman Empire in 1788, at a time when both copyright and moral rights were poorly enforced. With a small private income, he was not dependent on sales but was more concerned about the damage to his reputation from poor translations, a form of paraphrasing. He wrote, "The French, Italian and German translations have been executed with various success; but instead of patronizing, I should willingly suppress such imperfect copies which injure the character while they propagate the name of the author. The Irish pirates are at once my friends and my enemies...." By the start of the twentieth century, U.S. decisions on unfair competition found that representing as the author's work a version of the work that substantially departed from the original was a cause of action. Section §43(a) of the Lanham Act, which protects brands and trademarks, also provides similar protection to laws based on moral rights. For any goods or services, it bans false designation of origin or a false description or representation. In Gilliam v American Broadcasting the British comedy group called Monty Python took action against the ABC network for broadcasting versions of their programs which had been correctly attributed to them but had been extensively edited, in part to remove content that their audience might consider offensive or obscene. The judgement of the United States Court of Appeals for the Second Circuit was in favor of Monty Python, finding the cuts might be an "actionable mutilation" that violated the Lanham Act. --- Send in a voice message: https://anchor.fm/law-school/message Support this podcast: https://anchor.fm/law-school/support
In this episode, we look at the case between the United State Patent and Trademark Office (USPTO) v Booking.com case where the Supreme Court upheld the decisions of the Circuit Court that Booking.com was not generic and had acquired secondary meaning over time and under the Lanham Act, the consumer is king,” Grounds for refusal to register a mark. Scope of protection. --- This episode is sponsored by · Anchor: The easiest way to make a podcast. https://anchor.fm/app Support this podcast: https://anchor.fm/rita-chindah/support
Seattle facial plastic surgeon William Portuese, MD and RealSelf CEO Tom Seery reflect on 13 years of collaboration from Dr. Portuese’s unique perspective as the first surgeon to answer a question on RealSelf, what he’s learned by answering over 30k consumer questions on RealSelf and why he’s still doing it today. On this episode, you’ll also hear why Dr. Portuese thinks BDD is the largest single challenge of his practice, why he openly posts his prices online, how he’s handled multiple thefts of his before and after photos by other surgeons, and more. Special Guests: Tom Seery and William Portuese, MD.
On July 3rd, the Washington Redskins announced that it would review its team name after nearly two decades of vigorously fighting legal challenges by Native Americans to keep it. Two registration cancellation actions filed in the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office[1] culminated in Pro-Football, Inc. v. Blackhorse, a decision by a federal district court in Virginia on July 8th, 2015, that the “REDSKINS” name and federally registered trademark was considered disparaging of Native Americans under Section 2(a) of the Lanham Act and therefore not eligible for federal trademark registration under U.S. trademark law. While the Redskins were appealing their registration cancellation decision to the Virginia federal appellate court, a landmark Supreme Court case, Matal v. Tam, held that the disparagement clause of Section 2(a) of the Lanham Act was unconstitutional for violating First Amendment free speech rights when it reviewed a trademark registration refusal by the USPTO of the “SLANTS” mark by an Asian-American music band. Thus, the law on which Native Americans were able to have the REDSKINS registered marks canceled was stricken, and the Redskins managed to preserve the team’s right to register its controversial marks. Enter the force of the market, arguably more significant than the force of law, and the Redskins suddenly have a change of heart. Companies that generate revenue for the Redskins began targeting what matters most to the team – its wallet. FedEx, which owns naming rights to the team’s stadium, announced the night before that it would exit the multimillion-dollar agreement if the team did not change its name. The Redskins were also under pressure from other big sponsors and resellers of its merchandise that featured their registered trademarks, including Amazon, Walmart, Nike, and Target, all of which stopped carrying the team’s merchandise. The monetary pressure mounted to the point where Dan Snyder, the team owner, was forced to wave the white flag. The team had maintained its controversial Redskins name since it was initially adopted in 1933. However, on Monday, the NFL’s Washington team officially announced that it would abandon its name and its 1970s-era logo, depicting the profile of a Native American man. Following the team’s announcement that it will abandon its name, speculation on what the new name will be has run rampant, and so have new trademark applications for possible names, similar to the situation discussed in our April 23rd, 2020 blog article entitled “Everybody “COVIDS” a CORONAVIRUS Trademark Registration But It’s Not That Easy.” A review of trademark applications demonstrates that McCaulay, an Alexandria, Virginia, realtor, has attempted to register trademarks on eight different Washington-themed names, several of which have new applications filed this month. McCaulay has received registrations for “WASHINGTON RED-TAILED HAWKS,” “WASHINGTON AMERICAN,” and “WASHINGTON FOOTBALL CLUB and he tried to register at least a couple of trademarks as early as 2014.” McCaulay owns pending applications to register ‘WASHINGTON RED WOLVES,” WASHINGTON REDTAILS,” “WASHINGTON MONUMENTS,” “WASHINGTON VETERANS,” WASHINGTON RENEGADES GRIDIRON FOOTBALL,” and “WASHINGTON WARRIORS.” McCaulay’s trademark registrations have made him a target of many football fans who are labeling him a trademark troll. However, as our previous blog in April blog pointed out, “trolling” to own trademark registrations for marks believed to be on the verge of extraordinary popularity has been increasingly trending for some time now and is rarely successful. After the widespread criticism of McCaulay for attempting to appropriate team names expected to be desired by the Redskins and thereby delay their renaming process – despite the Redskins’ negligence in failing to procure alternate names much earlier before being pressured to do so –McCauley has retained a sports attorney who has since sent Dan Snyder a letter stating that McCauley is not a trademark troll because “this was simply just an expensive hobby for him and he does not have any intention of holding up the Washington team’s process.” Interestingly enough, Las Vegas sportsbooks such as Bovada, have the Red Tails, Warriors, and Monuments listed as three of the top five betting favorites for Washington’s new NFL team name. Only time will tell if McCaulay’s tactics will lead to a settlement with the team and a huge paycheck. If you suspect that someone is squatting on trademark registrations to force a buyout before you use the name for your business, you may need to seek assistance from a trademark lawyer at Dunlap Bennett & Ludwig. There are avenues to challenge and even cancel weak trademark registrations that were only made as an impediment to someone else using the naming rights. One of our firm’s experienced trademark lawyers can help you secure the trademark you need today. Contact our team at 703-777-7319, or email clientservices@dbllawyers.com to schedule a consultation. [1] The first cancellation proceeding was determined to have been invalid for having been filed after the statute of limitations. The second cancellation proceeding was filed by recently emancipated minors for whom the statute of limitations was refreshed. https://www.dbllawyers.com/washington-redskins-trademark-registration-challenge/
In the first half of 2020, several significant decisions further shaped the course of trademark law, with rulings from the Supreme Court and circuit courts impacting USPTO proceedings, as described below: Romag Fasteners v. Fossil (U.S. Supreme Court): In April, the U.S. Supreme Court clarified what a plaintiff in a trademark infringement suit is required to prove to be granted a defendant’s ill-gotten profits. Romag Fasteners, Inc. and Fossil, Inc. signed an agreement to use Romag’s fasteners in Fossil’s leather goods. Romag later discovered that Chinese factories producing Fossil products were using counterfeit Romag fasteners and sued Fossil for trademark infringement under 15 U.S.C. § 1125(a). The district court relied on Second Circuit precedent and denied Romag’s request for an award of profits because the jury did not find that Fossil had acted willfully. Other circuits had also required a showing the defendant willfully infringed a plaintiff’s trademark to win a profits remedy. The Supreme Court, faced with the question of whether that categorical rule could be reconciled with the Lanham Act’s plain language, answered negatively. The high court noted that the statute requires a showing of willfulness as a precondition to a profits award when the plaintiff proceeds under § 1125(c), which creates a cause of action for trademark dilution. However, Romag alleged and proved a violation of § 1125(a), a provision establishing a cause of action for the false or misleading use of trademarks. In cases like this, the court emphasized that “the statutory language has never required a showing of willfulness to win a defendant’s profits.” USPTO v. Booking.com (U.S. Supreme Court): On June 30, in a significant win for potential online trademark owners, the Supreme Court ruled that the addition of “.com” to an otherwise generic term could transform it into a protectable trademark. A generic name—the name of a class of products or services—is ordinarily ineligible for federal trademark registration and protection. The long battle between these two parties centered on the USPTO’s conclusion that Booking.com is a generic name for online hotel-reservation services in its rejection of Booking’s request for trademark registration. The USPTO urged the Supreme Court to adopt a bright-line rule, arguing that a generic term adorned with “.com” should always be unprotectable. However, the justices were left unpersuaded by the USPTO’s exaggerated monopoly concerns and instead adopted a more flexible approach based on consumer perception. The court held that a term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. Here, because “consumers do not in fact perceive the term ‘Booking.com’” as a generic name for online hotel-reservation services, the company was able to secure a landmark victory that will likely incentivize more online companies to apply for federal trademark protection. Molson Coors v. Anheuser-Busch (Seventh Circuit): Early in 2019, after Super Bowl LIII, Anheuser-Busch advertised that Bud Light is made using rice while making fun of Miller Lite and Coors Light for using corn syrup. Molson Coors responded by filing suit under 15 U.S.C. §1125, alleging that Anheuser Bush violated the Lanham Act by implying that a product made from corn syrup also contains corn syrup. The Seventh Circuit rejected those claims, noting that Molson Coors identifies corn syrup as an ingredient in Miller Lite and Coors Lite. Although Molson Coors insisted that a list of ingredients differs from what the finished products contain, the court said that “common usage equates a product’s ingredients with its constituents” and even “some of Molson Coors’s managers testified that a beer ‘contains’ what’s on the ingredients list.” Because Molson Coors chose a word such as “ingredients” with multiple potential meanings, the court ruled that it “brought this problem on itself” and held that it is not false or misleading for a seller to say or imply, of a business rival, something that the rival says about itself. https://www.dbllawyers.com/top-trademark-decisions-2020/
QUESTION PRESENTED: Under the Lanham Act, 15 U.S.C. 1051 et seq., generic terms may not be registered as trademarks. The question presented is as follows: Whether the addition by an online business of a generic top-level domain (".com") to an otherwise generic term can create a protectable trademark. --- Support this podcast: https://anchor.fm/scotus/support
Today we're going to talk about a Supreme Court argument. The first one ever heard by telephone in the entire history of the United States Supreme Court. Due to the COVID-19 pandemic, the Supreme Court heard arguments on May 4th, 2020, in the case of the United States Patent and Trademark Office versus Booking.com. Booking.com says that the term Booking.com should not be considered generic. The United States Patent and Trademark Office, relying on a case from 1888, called Goodyear's India Rubber Glove Manufacturing Company versus the Goodyear Rubber Company. In 1888, the Supreme Court found that adding the word company to a name did not make that name unique and the name company, something generic, plus the word company left the mark generic. Booking.com is arguing that the addition of the.com or.org or something like that to the word booking in this case makes the term registrable at the USPTO. The Supreme Court Justices asked questions in terms of seniority, starting with the Chief Justice, who then acted as a panel moderator for the rest of the justices. Obviously after oral argument at the Supreme Court, the Court takes some time to consider the arguments of both sides and then issue a written opinion. There may be some telegraphing of that opinion based on the questions asked. The government was questioned about why the Supreme Court should rely on an 1888 Supreme Court opinion as opposed to the plain language of the Lanham Act statute on which this case is based. And Booking.com was asked why it needed to have Booking.com, why it was valuable as a trademark when just having the domain Booking.com itself seemed to be quite valuable and in fact many people would go online to Booking.com not knowing that it was the company itself, but just trying to book something.
A case in which the Court will decide whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark, despite the Lanham Act’s prohibition on generic terms as trademarks.
The 2020 Tokyo Olympics have been pushed off til next year, and the USOC, United States Olympic Committee, has said we're going to still use Tokyo 2020 as our brand and trademark. The same day the US Olympic Committee announced that, a company called Puma registered the trademark for Puma Tokyo 2021. This is interesting. First, there's nothing in their filing or anything that we can find that says they have permission of the US Olympic Committee. The US Olympic Committee has special rights that exceed what every other trademark owner gets into the Lanham Act. There's this special statute 36 USC 380, that gives the United States Olympic Committee the exclusive right to use Olympic. In fact, they were able to prevent a company, an organization called SFAA from using the word Olympic as part of the Gay Olympic Games, even though a regular trademark owner would probably be able to prove the distinction. The Supreme Court of the United States said, "Nope, this special statute gives the US Olympic Committee the right to prevent almost anyone from using the word Olympic in almost any context where it might be associated with sports." As of now, the United States Olympic Committee owns three trademark registrations for Tokyo 2020. They have not applied for a Tokyo 2021 trademark registration, but that's probably because they said they plan to keep using 2020 even after the postponement, but we'll see what happens.
With Call of Duty one of the most popular game franchises on the planet, it's no surprise that many want a piece of Activision Blizzard's massive profits. But how did the multinational video game publisher not only use Humvees throughout many of its franchise entries without a license, then defeat the challenge posed by the vehicle's manufacturer, AM General LLC, before litigation even truly began? The answer...requires some explaining. Trademark really isn't the same as copyright...in Virtual Legality. CHECK OUT THE VIDEO AT: https://youtu.be/LM2p2KmiPKo #CallofDuty #Humvee #Trademark *** Discussed in this episode: "Activision Wins 'First Amendment' Call Of Duty Lawsuit" Kotaku - April 1, 2020 - Luke Plunkett https://kotaku.com/activision-wins-first-amendment-call-of-duty-lawsuit-1842625317 "Hi Hoeg! Since time of day/day of week has lost all meaning during quarantine, here's a late night #VirtualLegality suggestion..." Tweet - April 2, 2020 - Joseph La Russa (@Joseph_La_Russa) https://twitter.com/Joseph_La_Russa/status/1245646711558569987 "Call of Duty allowed to include Humvees, as court rules in favor of Activision in trademark case" GameDailyBiz - April 2, 2020 - Sam Desatoff https://gamedaily.biz/article/1673/call-of-duty-allowed-to-include-humvees-as-court-rules-in-favor-of-activision-blizzard-in-trademark-case AM General v Activision Blizzard Summary Dismissal Order (March 31, 2020) https://www.documentcloud.org/documents/6823541-Humvee.html "Trademark, Patent, or Copyright?" USPTO Website https://www.uspto.gov/trademarks-getting-started/trademark-basics/trademark-patent-or-copyright "False designations of origin, false descriptions, and dilution forbidden" 15 USC 1125 (Lanham Act) https://www.law.cornell.edu/uscode/text/15/1125 Article 1, Section 8 US Constitution https://www.law.cornell.edu/constitution/articlei "United States trademark law" Wikipedia Entry https://en.wikipedia.org/wiki/United_States_trademark_law First Amendment US Constitution https://www.law.cornell.edu/constitution/first_amendment "Exclusive rights in copyrighted works" 17 USC 106 https://www.law.cornell.edu/uscode/text/17/106 "Limitations on exclusive rights: Fair use" 17 USC 107 https://www.law.cornell.edu/uscode/text/17/107 Rogers v Grimaldi 695 F. Supp 112 (1988) https://law.justia.com/cases/federal/district-courts/FSupp/695/112/2345732/ "Netflix: "Choose Your Own Adventure" is Too Generic to Live (Virtual Legality #185)" YouTube Video - March 4, 2020 - Hoeg Law https://www.youtube.com/watch?v=W3ZtxSpp2ig "Netflix Loses Bid to Dismiss $25 Million Lawsuit Over 'Black Mirror: Bandersnatch'" Hollywood Reporter - February 11, 2020 - Eriq Gardner https://www.hollywoodreporter.com/thr-esq/netflix-loses-bid-dismiss-25-million-lawsuit-black-mirror-bandersnatch-1278701 "Netflix Seeks Cancellation of "Choose Your Own Adventure" Trademark in 'Bandersnatch' Dispute" Hollywood Reporter - February 26, 2020 - Ashley Cullins https://www.hollywoodreporter.com/thr-esq/netflix-seeks-cancellation-choose-your-own-adventure-trademark-bandersnatch-dispute-1281305 *** "Virtual Legality" is a continuing series discussing the law, video games, software, and everything digital, hosted by Richard Hoeg, of the Hoeg Law Business Law Firm (Hoeg Law). CHECK OUT THE REST OF VIRTUAL LEGALITY HERE: https://www.youtube.com/playlist?list=PL1zDCgJzZUy9YAU61GoW-00K0TJOGnPCo DISCUSSION IS PROVIDED FOR INFORMATIONAL PURPOSES ONLY AND IS NOT TO BE CONSTRUED AS LEGAL ADVICE. INDIVIDUALS INTERESTED IN THE LEGAL TOPICS DISCUSSED IN THIS VIDEO SHOULD CONSULT WITH THEIR OWN COUNSEL. *** Twitter: @hoeglaw Web: hoeglaw.com Blog: hoeglaw.wordpress.com
On Dec 11, 2019 the Supreme Court decided Peter v. NantKwest Inc., a case considering whether a party opting to bring a challenge in federal district court to an adverse decision of the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB) must pay the PTO’s resulting attorney’s fees. When a patent applicant is rejected by the PTO, and the PTAB affirms that decision on appeal, the aggrieved applicant may either pursue further (but relatively constrained) review in the U.S. Court of Appeals for the Federal Circuit--or the applicant may file a more expansive challenge in federal district court. The latter option is authorized by 35 U.S.C. § 145, but the statute also provides that “[a]ll the expenses of the proceedings shall be paid by the applicant.”Here, NantKwest challenged an adverse PTAB decision in federal district court, but lost. After the judgment was affirmed by the Federal Circuit, the PTO sought reimbursement of its expenses from NantKwest, including nearly $80,000 in attorneys’ fees. The district court denied recovery based on the “American Rule” that parties in federal court typically bear their own fees unless otherwise directed by Congress. A divided en banc panel of the Federal Circuit ultimately affirmed the district court. This decision, however, was in tension with the U.S. Court of Appeals for the Fourth Circuit’s construction of similar language in the Lanham Act.By a vote of 9-0, the Supreme Court affirmed the judgment of the Federal Circuit. Justice Sotomayor, writing for a unanimous Court, held that the plain text of §145 did not provide the requisite “specific and explicit” indication that Congress had intended to depart from “the American Rule’s presumption against fee shifting.” Accordingly, the PTO could not recover attorneys’ fees from NantKwest under §145.To discuss the case, we have Robert J. Rando, Founder and Lead Counsel, The Rando Law Firm P.C.*As always, the Federalist Society takes no particular legal or public policy positions. All opinions expressed are those of the speakers. *Please note that Mr. Rando is co-Counsel on an Amicus brief filed on behalf of the Association of Amicus Counsel in this case.
On Dec 11, 2019 the Supreme Court decided Peter v. NantKwest Inc., a case considering whether a party opting to bring a challenge in federal district court to an adverse decision of the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB) must pay the PTO’s resulting attorney’s fees. When a patent applicant is rejected by the PTO, and the PTAB affirms that decision on appeal, the aggrieved applicant may either pursue further (but relatively constrained) review in the U.S. Court of Appeals for the Federal Circuit--or the applicant may file a more expansive challenge in federal district court. The latter option is authorized by 35 U.S.C. § 145, but the statute also provides that “[a]ll the expenses of the proceedings shall be paid by the applicant.”Here, NantKwest challenged an adverse PTAB decision in federal district court, but lost. After the judgment was affirmed by the Federal Circuit, the PTO sought reimbursement of its expenses from NantKwest, including nearly $80,000 in attorneys’ fees. The district court denied recovery based on the “American Rule” that parties in federal court typically bear their own fees unless otherwise directed by Congress. A divided en banc panel of the Federal Circuit ultimately affirmed the district court. This decision, however, was in tension with the U.S. Court of Appeals for the Fourth Circuit’s construction of similar language in the Lanham Act.By a vote of 9-0, the Supreme Court affirmed the judgment of the Federal Circuit. Justice Sotomayor, writing for a unanimous Court, held that the plain text of §145 did not provide the requisite “specific and explicit” indication that Congress had intended to depart from “the American Rule’s presumption against fee shifting.” Accordingly, the PTO could not recover attorneys’ fees from NantKwest under §145.To discuss the case, we have Robert J. Rando, Founder and Lead Counsel, The Rando Law Firm P.C.*As always, the Federalist Society takes no particular legal or public policy positions. All opinions expressed are those of the speakers. *Please note that Mr. Rando is co-Counsel on an Amicus brief filed on behalf of the Association of Amicus Counsel in this case.
QUESTION PRESENTED: Whether, under section 35 of the Lanham Act, 15 U.S.C. § 1117(a), willful infringement is a prerequisite for an award of an infringer's profits for a violation of section 43(a), id. § 1125(a). --- This episode is sponsored by · Anchor: The easiest way to make a podcast. https://anchor.fm/app Support this podcast: https://anchor.fm/scotus/support
A case in which the Court held that under Section 35 of the Lanham Act, a plaintiff does not need to show willful infringement to receive an award of an infringer’s profits for a violation of Section 43(a).
In this episode, Simon Tam, the founder and bassist for The Slants, an Asian-American dance-rock band, discusses his fight to register his band's name as a trademark with the USPTO, and how he helped changed trademark law. Tam begins by describing the origins and aesthetics of The Slants, including why he chose the band's name. He explains why he filed a trademark registration application, and why he chose to fight the USPTO's denial of his application. And he reflects on why he thinks the Supreme Court (mostly) got it right, when it held in Matal v. Tam (2017) that the Lanham Act's prohibition of the registration of "disparaging" trademarks violated the First Amendment. Tam is on Twitter at @SimonTheTam.This episode was hosted by Brian L. Frye, Spears-Gilbert Associate Professor of Law at the University of Kentucky College of Law. Frye is on Twitter at @brianlfrye. See acast.com/privacy for privacy and opt-out information.
On October 7, 2019, the Supreme Court heard oral argument in Peter v. NantKwest Inc., a case which considers whether a party opting to bring a challenge in federal district court to an adverse decision of the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB) must pay the PTO’s resulting attorney’s fees. When a patent application is rejected by the PTO, and the PTAB affirms that decision on appeal, the aggrieved applicant may either pursue further (but relatively constrained) review in the U.S. Court of Appeals for the Federal Circuit--or the applicant may file a more expansive challenge in federal district court. The latter option is authorized by 35 U.S.C. § 145, but the statute also provides that “[a]ll the expenses of the proceedings shall be paid by the applicant.”Here, NantKwest challenged an adverse PTAB decision in federal district court, but lost. After the judgment was affirmed by the Federal Circuit, the PTO sought reimbursement of its expenses from NantKwest, including nearly $80,000 in attorneys’ fees. The district court denied recovery based on the “American Rule” that parties in federal court typically bear their own fees unless otherwise directed by Congress. A divided en banc panel of the Federal Circuit ultimately affirmed the district court. This decision, however, was in tension with the U.S. Court of Appeals for the Fourth Circuit’s construction of similar language in the Lanham Act.Thereafter, the Supreme Court granted certiorari to consider whether the phrase “[a]ll the expenses of the proceedings” in 35 U.S.C. § 145 encompasses the personnel expenses the PTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation.To discuss the case, we have Robert J. Rando, Founder and Lead Counsel, The Rando Law Firm P.C.**Please note that Mr. Rando is co-Counsel on an Amicus brief filed on behalf of the Association of Amicus Counsel in this case. As always, the Federalist Society takes no particular legal or public policy positions. All opinions expressed are those of the speakers.
On October 7, 2019, the Supreme Court heard oral argument in Peter v. NantKwest Inc., a case which considers whether a party opting to bring a challenge in federal district court to an adverse decision of the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB) must pay the PTO’s resulting attorney’s fees. When a patent application is rejected by the PTO, and the PTAB affirms that decision on appeal, the aggrieved applicant may either pursue further (but relatively constrained) review in the U.S. Court of Appeals for the Federal Circuit--or the applicant may file a more expansive challenge in federal district court. The latter option is authorized by 35 U.S.C. § 145, but the statute also provides that “[a]ll the expenses of the proceedings shall be paid by the applicant.”Here, NantKwest challenged an adverse PTAB decision in federal district court, but lost. After the judgment was affirmed by the Federal Circuit, the PTO sought reimbursement of its expenses from NantKwest, including nearly $80,000 in attorneys’ fees. The district court denied recovery based on the “American Rule” that parties in federal court typically bear their own fees unless otherwise directed by Congress. A divided en banc panel of the Federal Circuit ultimately affirmed the district court. This decision, however, was in tension with the U.S. Court of Appeals for the Fourth Circuit’s construction of similar language in the Lanham Act.Thereafter, the Supreme Court granted certiorari to consider whether the phrase “[a]ll the expenses of the proceedings” in 35 U.S.C. § 145 encompasses the personnel expenses the PTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation.To discuss the case, we have Robert J. Rando, Founder and Lead Counsel, The Rando Law Firm P.C.**Please note that Mr. Rando is co-Counsel on an Amicus brief filed on behalf of the Association of Amicus Counsel in this case. As always, the Federalist Society takes no particular legal or public policy positions. All opinions expressed are those of the speakers.
Outraged over disclosures by Project Veritas that Jeff Zucker, president of CNN Worldwide, is using his CNN network to attack and bring down the Trump presidency, Donald Trump’s reelection campaign sent a scathing letter to Zucker and his attorney on Wednesday. When it was released to the public on Friday the letter revealed that it charged them and the network with violating the Lanham Act. Read the article here!
Law & Business - the podcast about legal issues and how they affect your business.
In this episode of the "Law & Business" podcast, Jim Cushing and Anthony Verna talk about judges. In a recent video blog post, Anthony Verna talked about one judge helping to settle one trademark and copyright infringement lawsuit. Sometimes, judges are able (under the rules of procedure of their court) to aid the parties in litigation to settle their lawsuits. Jim Cushing and Anthony Verna talk about some of the cases both have had in which judges have helped and have hurt in trying to settle cases. It is a little comparing and contrasting between family law (custody issues) and intellectual property issues and the different kinds of procedure and judges the two lawyers have experienced. Here is a lightly-edited transcript of the podcast episode: Anthony Verna: All right, welcome back to the Law and Business podcast and welcome back, Jim Cushing. How are you doing, sir? Jim Cushing: How ya doing, Anthony? Thanks for having me back, it’s been a while. Anthony Verna: Hey, I know it's been a while, but the podcast is a little intermittent than I would like. So, thank you so much for being back. Recently I had an appearance in federal court in the beautiful city of Binghamton, New York, where they're so used to intellectual property lawsuits. To the point that the magistrate judge was asking me about, about a provision in the Lanham Act that is little used and the look of shock and horror on his face was something I don't think I've ever seen before. Jim Cushing: It’s never good when you're teaching the judge the law. Anthony Verna: That's true. But I think that happens a little more for me than for you, which led to this magistrate saying, okay, this is a trademark and copyright infringement case. It's something that he was fully admitting that he was not used to, but that there two magistrates in the Northern District of New York that have intellectual property expertise and experience and wondering if the parties would want to have one of those magistrates hold a settlement conference. Andin this particular case, my client was all for it because we're dealing with a pro se litigants. So, a litigant who's representing himself. Right. And as I'm sure you're aware a pro se litigant can be a little on the extreme side. Jim Cushing: Well, you know, they go into it thinking this is going to be my day in court and I'm going to go all the way and they don't really understand the process or where they've got a weakness. Anthony Verna: Exactly. So, I think this was a smart time that, um, that a judge is forcing us into settlement. And, of course, since then, I think the litigant has realized that yes, he's not going to be going all the way and he's not going to be really getting his day in court. And so, he's actually sent me a couple different settlement options since then. So have there been times when a judge has forced you, someone who's in family law into settlements that you think are good and help the case rather than dealing with litigation? Jim Cushing: I think that as I said, I'm a family attorney or you said I'm a family attorney and I think family is kind of unique in the legal field because it really, a lot of the times the object of a family case is someone who's not even in court, you know, your son or your daughter or whomever and obviously not in divorce, but in the custody or support context, sure. Is you're dealing with somebody who's not present, who's the object to the case. It's not just money or like, no offense to your practice, but like a copyright. It's like a real human being whose life is going to be affected. And when it comes down to it, we're trying to do what's best for that person and sometimes what's best for that person, it's not necessarily some legal one-upsmanship. It's just a practical consideration. And you know, when you have a decent judge, they look at this and they see the legal arguments from both sides, but they're also, if they're worth their salt,
The Southern Poverty Law Center (501(c)(3)) and SPLC Action Fund (reportedly processing 501(c)(4) application) potentially comprise America’s most powerful and well-resourced public interest and advocacy operation. SPLC describes its mission as “fighting hate and bigotry and seeking justice for the most vulnerable members of our society.” SPLC distributes materials for public school educators that emphasize “anti-bias and social justice.” But a current op-ed in USA Today claims, to the contrary, that the SPLC operates to selectively target groups based upon agendized hate-naming and public shaming. SPLC has singled out 1020 “hate” groups and this labeling has been relied upon by government bodies, social media platforms, and non-governmental groups to act based upon ostensibly constitutionally protected expressive rights, rights of conscience, and association practices. Robert Muise, a presenter for this teleforum, is suing the Michigan Attorney General and Department of Civil Rights for utilizing SPLC characterizations to oversee activities of identified groups, including the one he co-founded, American Freedom Law Center.Featuring: -- Mat Staver, Liberty Counsel, sued Guidestar for branding LC an anti-LGBTQ hate group based upon SPLC designation; lost appeal in 4th Circuit based on Lanham Act analysis.-- Robert Muise, American Freedom Law Center, currently suing State of Michigan attorney general office for establishing hate unit to target SPLC-named groups, including AFLC-- Muhammud Rahim, Quilliam, settled with SPLC for 3.4M after threatened defamation suit for falsely naming Maajid Nawaz (reformist Muslim) a hater.-- Justin Danhof, National Center for Public Policy Research, responding to SPLC in the corporate context-- Moderator: Jeremy Tedesco, Alliance Defending Freedom, attorney on the Masterpiece Cakeshop litigation team -- and many other freedom of conscience matters.
The Southern Poverty Law Center (501(c)(3)) and SPLC Action Fund (reportedly processing 501(c)(4) application) potentially comprise America’s most powerful and well-resourced public interest and advocacy operation. SPLC describes its mission as “fighting hate and bigotry and seeking justice for the most vulnerable members of our society.” SPLC distributes materials for public school educators that emphasize “anti-bias and social justice.” But a current op-ed in USA Today claims, to the contrary, that the SPLC operates to selectively target groups based upon agendized hate-naming and public shaming. SPLC has singled out 1020 “hate” groups and this labeling has been relied upon by government bodies, social media platforms, and non-governmental groups to act based upon ostensibly constitutionally protected expressive rights, rights of conscience, and association practices. Robert Muise, a presenter for this teleforum, is suing the Michigan Attorney General and Department of Civil Rights for utilizing SPLC characterizations to oversee activities of identified groups, including the one he co-founded, American Freedom Law Center.Featuring: -- Mat Staver, Liberty Counsel, sued Guidestar for branding LC an anti-LGBTQ hate group based upon SPLC designation; lost appeal in 4th Circuit based on Lanham Act analysis.-- Robert Muise, American Freedom Law Center, currently suing State of Michigan attorney general office for establishing hate unit to target SPLC-named groups, including AFLC-- Muhammud Rahim, Quilliam, settled with SPLC for 3.4M after threatened defamation suit for falsely naming Maajid Nawaz (reformist Muslim) a hater.-- Justin Danhof, National Center for Public Policy Research, responding to SPLC in the corporate context-- Moderator: Jeremy Tedesco, Alliance Defending Freedom, attorney on the Masterpiece Cakeshop litigation team -- and many other freedom of conscience matters.
Good morning. In this guest episode, Brett talks with Simon Tam, bass player of the band that fought the Lanham Act in Lee v. Tam. Brett and Simon discuss what its like to bring a lawsuit before the Supreme Court, the state of Free Speech, the dynamics of playing in a rock band, the appropriate tenor for diss-tracks and what its like to rock on the front steps of the Supreme Court.
On June 24, 2019, the Supreme Court decided Iancu v. Brunetti, a case considering whether a provision of the Lanham Act prohibiting the registration of “immoral or scandalous” trademarks infringes the First Amendment.Business owner Erik Brunetti applied to register his clothing brand’s trademark, “FUCT,” (pronounced as the individual letters F-U-C-T) but was refused by the U.S. Patent and Trademark Office (PTO) because the Lanham Act prohibits registration of marks that consist of or comprise “immoral or scandalous” matter. The PTO Trademark Trial and Appeal Board deemed the mark vulgar and indicated that it carried “negative sexual connotations,” and in association with Brunetti’s website imagery and products conveyed misogyny, depravity, and violence. Brunetti then appealed to the U.S. Court of Appeals for the Federal Circuit, which held that the Lanham Act’s prohibition violated the First Amendment. The Supreme Court then granted certiorari to address the lower court’s invalidation of the federal statute.By a vote of 6-3, the Supreme Court upheld the judgment of the Federal Circuit. In an opinion delivered by Justice Kagan, the Court held that the Lanham Act prohibition on the registration of “immoral” or “scandalous” trademarks constitutes viewpoint discrimination that infringes the First Amendment. Justice Kagan’s majority opinion was joined by which Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh. Justice Alito filed a concurring opinion. Justice Breyer and Chief Justice Roberts filed opinions concurring in part and dissenting in part. Justice Sotomayor filed an opinion concurring in part and dissenting in part, in which Justice Breyer joined.To discuss the case, we have Thomas Berry, Attorney at the Pacific Legal Foundation.
On June 24, 2019, the Supreme Court decided Iancu v. Brunetti, a case considering whether a provision of the Lanham Act prohibiting the registration of “immoral or scandalous” trademarks infringes the First Amendment.Business owner Erik Brunetti applied to register his clothing brand’s trademark, “FUCT,” (pronounced as the individual letters F-U-C-T) but was refused by the U.S. Patent and Trademark Office (PTO) because the Lanham Act prohibits registration of marks that consist of or comprise “immoral or scandalous” matter. The PTO Trademark Trial and Appeal Board deemed the mark vulgar and indicated that it carried “negative sexual connotations,” and in association with Brunetti’s website imagery and products conveyed misogyny, depravity, and violence. Brunetti then appealed to the U.S. Court of Appeals for the Federal Circuit, which held that the Lanham Act’s prohibition violated the First Amendment. The Supreme Court then granted certiorari to address the lower court’s invalidation of the federal statute.By a vote of 6-3, the Supreme Court upheld the judgment of the Federal Circuit. In an opinion delivered by Justice Kagan, the Court held that the Lanham Act prohibition on the registration of “immoral” or “scandalous” trademarks constitutes viewpoint discrimination that infringes the First Amendment. Justice Kagan’s majority opinion was joined by which Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh. Justice Alito filed a concurring opinion. Justice Breyer and Chief Justice Roberts filed opinions concurring in part and dissenting in part. Justice Sotomayor filed an opinion concurring in part and dissenting in part, in which Justice Breyer joined.To discuss the case, we have Thomas Berry, Attorney at the Pacific Legal Foundation.
Remember “The Slants,” the Asian-American rock band who were denied a trademark because the U.S. Patent and Trademark Office (PTO) thought the band’s name was “disparaging”? In Matal v. Tam (2017), the Supreme Court unanimously struck down the Lanham Act’s anti-disparagement provision. (That also resolved the battle over the Washington Redskins’ trademarks.) Well, here we go again, this time with a related provision that prevents registration of “immoral” or “scandalous” marks. It doesn’t take much imagination to figure out what the clothing brand “Fuct” is going for, and the PTO decided it did not pass muster. The Federal Circuit struck down the relevant provision—as it had in Tam—and the Supreme Court again took the case. On June 24, the Supreme Court affirmed 6-3, holding that the Lanham Act prohibition on the registration of “immoral” or “scandalous” trademarks infringes the First Amendment. Thomas Berry, who contributed to an interesting and entertaining amicus brief submitted by the CATO Institute, will share his thoughts on the decision and its implications on free speech and intellectual property.Featuring: Thomas Berry, Attorney, Pacific Legal Foundation Teleforum calls are open to all dues paying members of the Federalist Society. To become a member, sign up on our website. As a member, you should receive email announcements of upcoming Teleforum calls which contain the conference call phone number. If you are not receiving those email announcements, please contact us at 202-822-8138.
Remember “The Slants,” the Asian-American rock band who were denied a trademark because the U.S. Patent and Trademark Office (PTO) thought the band’s name was “disparaging”? In Matal v. Tam (2017), the Supreme Court unanimously struck down the Lanham Act’s anti-disparagement provision. (That also resolved the battle over the Washington Redskins’ trademarks.) Well, here we go again, this time with a related provision that prevents registration of “immoral” or “scandalous” marks. It doesn’t take much imagination to figure out what the clothing brand “Fuct” is going for, and the PTO decided it did not pass muster. The Federal Circuit struck down the relevant provision—as it had in Tam—and the Supreme Court again took the case. On June 24, the Supreme Court affirmed 6-3, holding that the Lanham Act prohibition on the registration of “immoral” or “scandalous” trademarks infringes the First Amendment. Thomas Berry, who contributed to an interesting and entertaining amicus brief submitted by the CATO Institute, will share his thoughts on the decision and its implications on free speech and intellectual property.Featuring: Thomas Berry, Attorney, Pacific Legal Foundation Teleforum calls are open to all dues paying members of the Federalist Society. To become a member, sign up on our website. As a member, you should receive email announcements of upcoming Teleforum calls which contain the conference call phone number. If you are not receiving those email announcements, please contact us at 202-822-8138.
In late June, the Supreme Court struck down the part of federal trademark law that prohibited the registration of “immoral or scandalous” trademarks. The case was called Iancu v. Brunetti, and it was a follow-up to the court's Matal v. Tam ruling two years ago. In Tam, the justices unanimously ruled that the Lanham Act's ban on disparaging trademarks was a violation of free speech rights under the First Amendment. In Brunetti, the justices used the First Amendment to strike down another ban: the one on “immoral or scandalous” trademarks. Mr. Erik Brunetti sought to register the word mark "FUCT," in connection with clothing. The examining attorney at the United States Patent and Trademark Office ("USPTO") refused registration under Section 2(a) of the Lanham Act, on the basis that the mark was vulgar, and therefore "immoral" or "scandalous." The Trademark Trial and Appeal Board ("TTAB") upheld the examining attorney's decision on appeal. Mr. Brunetti then appealed the TTAB's decision to the Federal Circuit. The Federal Circuit requested additional briefing from the parties following the Supreme Court's decision in Matal v. Tam, 137 S.Ct. 1744 (2017), which held that Section 2(a)'s prohibition on registering "disparaging" trademarks is unconstitutional under the First Amendment. In December 2017, the United States Court of Appeals for the Federal Circuit issued a unanimous ruling declaring unconstitutional Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), which prohibits the registration of "immoral" or "scandalous" trademarks. The issue came down to a key part of First Amendment law: is the regulation in question viewpoint-neutral? The First Amendment protects speech despite the viewpoint it expresses, so the government (in this case, the USPTO) cannot pick winners and losers because it likes some views better than others. Writing for a 6-3 majority, Justice Elena Kagan concluded that is exactly what the USPTO had been doing in applying the “immoral or scandalous” ban codified in the Lanham Act. Kagan examined the USPTO's treatment of trademarks related to drugs: trademark examiners rejected “YOU CAN'T SPELL HEALTHCARE WITHOUT THC,” “MARIJUANA COLA,” and “KO KANE.” But they approved “D.A.R.E. TO RESIST DRUGS AND VIOLENCE” and “SAY NO TO DRUGS—REALITY IS THE BEST TRIP IN LIFE.” According to the Court, those decisions are clearly viewpoint-based and, therefore, unconstitutional, even if they are “understandable” because of the trademarks' potential to offend. Justice Sotomayor in her dissenting opinion—anticipate a rush to register trademarks containing arguably vulgar, profane, or obscene words and images, with the PTO now powerless to say no. She's right! This ruling means that trademark registrations are open to any type of language. It's the Wild West in the dusty, old town of TrademarkVille. What do you want to say about your product? Does your product's branding have a viewpoint? Registrations at the USPTO now must be open to all, even those marks that will offend. Intellectual Property law seemed to be one area that was stuck in the past, even as technology keeps changing at a rapid pace. Not anymore. Bring on all the words that you may need to cover your ears to hear. They're registrable. Here is a lightly-edited transcript of the video blog: Trademark law generally does not change. In the last two years, however, trademark law has had a couple of really big changes, thanks to the Supreme Court. Several 6-3 decisions have basically allowed, well, some bolder language to come in and well, maybe some trademarks that don't actually treat people very well to be registered. How did this happen? A couple of years ago, a band called The Slants wanted to register the band name as trademark. It was rejected. Why? Because "The Slants" was deemed to be words that disparaged people. Specifically, it was deemed to be an ethnic slur and a trademark under the
A case in which the Court held that the Lanham Act’s prohibition on the federal registration of “immoral” or “scandalous” marks, in Section 2(a), violates the Free Speech Clause of the First Amendment.
AIPLA Podcast Network's Mike Cushman is joined by Ted Davis, partner at Kilpatrick Townsend & Stockton LLP, to discuss the Iancu v. Brunetti case. The US Supreme Court, on April 15, heard arguments over whether it should permit the registration of “scandalous” or profane trademarks, a move which critics say would be unconstitutional. The case is an appeal from the US Court of Appeals for the Federal Circuit which in 2017 overturned a decision of the Trademark Trial and Appeal Board (TTAB) and approved registration for the ‘Fuct’ mark.The USPTO refused registration for the mark on the grounds that it was immoral or scandalous under section 2(a) of the Lanham Act. This provision, also known as the disparagement clause, prohibits registration of trademarks covering “immoral, deceptive, or scandalous matter”. The Supreme Court will now rule on whether this clause is in breach of the First Amendment, which guarantees free speech.Support the show (http://www.aipla.org)
Remember “The Slants,” the Asian-American rock band who were denied a trademark because the U.S. Patent and Trademark Office (PTO) thought the band’s name was “disparaging”? In Matal v. Tam (2017), the Supreme Court unanimously struck down the Lanham Act’s anti-disparagement provision. (That also resolved the battle over the Washington Redskins’ trademarks.) Well, here we go again, this time with a related provision that prevents registration of “immoral” or “scandalous” marks. It doesn’t take much imagination to figure out what the clothing brand “Fuct” is going for, and the PTO decided it did not pass muster. The Federal Circuit struck down the relevant provision—as it had in Tam—and the Supreme Court again took the case. The government argues that it isn’t stopping Fuct from using its name, only declining to register it as a trademark. Under the First Amendment, should federal officials be making calls about what’s “scandalous” or “disparaging.” Ilya Shapiro, lead counsel of an amicus brief for the Cato Institute, P.J. O’Rourke, and other individuals and groups, is attending the April 15 argument and will share his thoughts afterwards. Featuring:Mr. Ilya Shapiro, Director, Robert A. Levy Center for Constitutional Studies, Cato Institute Teleforum calls are open to all dues paying members of the Federalist Society. To become a member, sign up on our website. As a member, you should receive email announcements of upcoming Teleforum calls which contain the conference call phone number. If you are not receiving those email announcements, please contact us at 202-822-8138.
A case in which the Court held that the Lanham Act’s prohibition on the federal registration of “immoral” or “scandalous” marks, in Section 2(a), violates the Free Speech Clause of the First Amendment.
Remember “The Slants,” the Asian-American rock band who were denied a trademark because the U.S. Patent and Trademark Office (PTO) thought the band’s name was “disparaging”? In Matal v. Tam (2017), the Supreme Court unanimously struck down the Lanham Act’s anti-disparagement provision. (That also resolved the battle over the Washington Redskins’ trademarks.) Well, here we go again, this time with a related provision that prevents registration of “immoral” or “scandalous” marks. It doesn’t take much imagination to figure out what the clothing brand “Fuct” is going for, and the PTO decided it did not pass muster. The Federal Circuit struck down the relevant provision—as it had in Tam—and the Supreme Court again took the case. The government argues that it isn’t stopping Fuct from using its name, only declining to register it as a trademark. Under the First Amendment, should federal officials be making calls about what’s “scandalous” or “disparaging.” Ilya Shapiro, lead counsel of an amicus brief for the Cato Institute, P.J. O’Rourke, and other individuals and groups, is attending the April 15 argument and will share his thoughts afterwards. Featuring:Mr. Ilya Shapiro, Director, Robert A. Levy Center for Constitutional Studies, Cato Institute Teleforum calls are open to all dues paying members of the Federalist Society. To become a member, sign up on our website. As a member, you should receive email announcements of upcoming Teleforum calls which contain the conference call phone number. If you are not receiving those email announcements, please contact us at 202-822-8138.
Law & Business - the podcast about legal issues and how they affect your business.
In Episode 36 of the "Law & Business" Podcast, Anthony and producer Marc Sterne talk about the MillerCoors lawsuit against AB InBev over its "corn syrup" campaign, which started during the Super Bowl. This episode (minisode? miniwebisode?) was recorded at Chatter in Washington, D.C. Thank you, Marc for recording and helping with all the episodes at Chatter. MillerCoors is suing Anheuser Busch InBev, seeking injunctive and other relief for what it calls "a false and misleading advertising campaign targeting Miller Lite and Coors Light." It's the latest step in a brewing marketing feud that began during the Super Bowl. Bud Light, in three spots that aired during the game, attacked MillerCoors' Coors Light and Miller Lite brands by name, noting that those brews use corn syrup. MillerCoors, in its complaint filed in federal court in Wisconsin, said the ads are meant to deceive beer drinkers into thinking its beers contain corn syrup and high-fructose corn syrup in order to boost sales of Bud Light. Plus, it says the ads dilute its trademarks, which would be in violation of the Lanham Act. MillerCoors seeks a halt to the "false and misleading" ad claims and "willful trademark dilution," saying that the ads have diluted the goodwill associated with its brands and have damaged the reputation of the brands. Anthony and Marc discuss the complaint, the false advertising claims, the possible harms to the MillerCoors trademark, and defenses for AB. "AB's purported rationale for this campaign, 'transparency,' is a classic example of corporate double-speak," says AB's complaint. A predicted defense for AB is going be the plain meaning of the words in the advertisement. AB is saying that its Bud Light is not brewed with corn syrup and that MillerCoors' Coors Light is. Predictably, AB will just stick with the plain meaning of those words and that consumers should only hear the words in their denotations, and not their connotations, which is what MillerCoors' lawsuit focuses on. Smaller businesses need to understand that advertising and the use of a competitor's trademark do come with risk. Managing the risk is necessary and understanding the limits of what is not a deceptive and not a misleading ad are necessary also. Here is a lightly-edited transcript of the podcast episode: Anthony Verna: Welcome to this mini episode of the Law and Business podcast. We're still recording from Chatter in DC. How you doing, Marc? Marc Sterne: I'm doing great. Technically, is this not a mini webisode? Anthony Verna: Oh, I see. Okay. Marc Sterne: I'm just trying to stay hip man. Anthony Verna: I know, I know. Marc, thank you for recording with us. And I know we've got a question from the audience. Marc Sterne: Yes, we do have a question regarding the lawsuit involving Budweiser, Miller Coors and corn syrup. Anthony Verna: Let's talk about this particular suit for a second because it's Miller Coors versus Anheuser Busch filed in federal court in Wisconsin and yes, it's about the no corn syrup ads. So, went from dilly dilly and do you have an impression of that one? Marc Sterne: I don't have it. I do like the ads. I don't have an impression for the dilly dilly. I hated them to start. And then they grew on me and I was like… Anthony Verna: No, I could easily see that because it's a very, it's a well-crafted campaign that, of course, has now mutated into a second campaign. And Anheuser Busch even did some really fun things with that ad campaign. Like when there was a trademark infringer on a dilly dilly, Anheuser Busch actually sent a guy in a knight's outfit and he even opened a scroll and he read aloud the cease and desist letter. Marc Sterne: And that's how you deal with issues. Anthony Verna: It was absolutely fantastic. And that turned into a viral video, so you could even find that online, but it's now mutated from this dilly dilly, but keeping the same characters and it started during th...
False Advertisement is a thing and its not just reserved for brand ambassadors. Under the Lanham Act, the same act that governs trademarks and services marks, businesses are prohibited from creating an unfair competitive advantage through misleading advertising or label. --- This episode is sponsored by · Anchor: The easiest way to make a podcast. https://anchor.fm/app
A real life conflict between bandits and the law! Pinkerton Consulting & Investigations has asked for a lump sum from Rockstar Games in connection with the use of their name in Red Dead Redemption 2. Rockstar (through parent Take Two Interactive) has sued to ask the court to throw out their request. Is this just a simple case of folks looking to steal a piece of Red Dead's massive success? Or does Rockstar's fictionalization of virtually everything except the Pinkerton name give the centuries' old detective agency a legal leg to stand on? Join us in Virtual Legality as we dive into the legal details of Rockstar's lawsuit, the Lanham Act, 1950s television and so much more! CHECK OUT THE VIDEO AT: https://youtu.be/R7h931Zg5Aw #RDR2 #Pinkertons #VirtualLegality *** Discussed in this episode: "The real Pinkertons aren't happy with 'Red Dead Redemption 2" Engadget, January 15, 2019 (https://www.engadget.com/2019/01/15/pinkerton-legal-fight-over-red-dead-redemption-2/) Take Two Interactive vs. The Pinkertons US District Court Filing (SDNY), January 11, 2019 (https://www.scribd.com/document/397458834/Take-Two-Interactive-vs-Pinkerton?campaign=SkimbitLtd&ad_group=66960X1514734X807bfeeee66a78a4e189c932928dbffc&keyword=660149026&source=hp_affiliate&medium=affiliate) "Nominative Use" Wikipedia (https://en.wikipedia.org/wiki/Nominative_use) "Guns of Red Dead Redemption 2" Range 365, November 9, 2018 (https://www.range365.com/guns-red-dead-redemption-2) "Wapiti Indians" Red Dead Wiki (http://reddead.wikia.com/wiki/Wapiti_Indians) First Amendment to the US Constitution (https://www.law.cornell.edu/constitution/first_amendment) Trademark (Lanham) Act 15 USC 1125 (https://www.law.cornell.edu/uscode/text/15/1125) Trademark (Lanham) Act 15 USC 1115 (https://www.law.cornell.edu/uscode/text/15/1115) *** THANKS FOR WATCHING! FOR MORE CHECK US OUT: On Twitter @hoeglaw At our website: https://hoeglaw.com/ On our Blog, "Rules of the Game", at https://hoeglaw.wordpress.com/ On "Help Us Out Hoeg!" a regular segment on the Easy Allies Podcast (formerly GameTrailers) (https://www.youtube.com/channel/UCZrxXp1reP8E353rZsB3jaA) Biweekly on "Inside the Huddle with Michael Spath" on WTKA 1050
Simon Tam named his band “The Slants” as a way to fight back against racism and take back the word as a form of self-empowerment. But when he tried to register the name as a trademark, the United States Patent and Trademark Office (PTO) denied the application and refused to register the trademark under Section 2(a) of the Lanham Act. This law allowed the PTO to refuse a trademark if it could be considered disparaging. No one outside of the PTO actually found the band name disparaging. In this episode of Make No Law, the First Amendment Podcast by Popehat.com, host Ken White examines the Matal v. Tam case in which the Supreme Court vindicated Simon Tam and The Slants, finding that Section 2(a) of the Lanham Act -- which allows the PTO to deny trademarks it finds offense -- violates the First Amendment. In the episode, Simon Tam himself explains how the PTO substituted its own judgment for the advocacy of Asian-Americans trying to highlight and fight back against racism. This episode also features quotes from the justices involved and music from The Slants.
Hannah speaks with Anne Gilson LaLonde. Anne is the author of the trademark treatise Gilson on Trademarks. She took over authorship of the book from her father, Jerome Gilson, in 2006. Anne has also written articles on a variety of trademark-related topics, many co-authored with her father. You can find some of the materials referenced during our interview below: Anne’s website http://www.annegilsonlalonde.com/ Anne’s Twitter account https://twitter.com/GilsonOnTMs Trademark Reporter article “Adios! To the Irreparable Harm Presumption in Trademark Law” by Anne Gilson LaLonde and Jerome Gilson https://www.inta.org/TMR/Documents/Volume%20107/Issue%20No.%205/vol107_no5_a1_gilson_lalonde.pdf Resolution of the INTA Board of Directors, “Amendment of the Lanham Act to Include a Rebuttable Presumption of Irreparable Harm” https://www.inta.org/Advocacy/Pages/Amendment%20of%20the%20Lanham%20Act%20to%20Include%20a%20Rebuttable%20Presumption%20of%20Irreparable%20Harm.aspx Office of Law Revision Counsel codification of Lanham Act http://uscode.house.gov/codification/t35/index.html Erik Brunetti Oral Arguments http://www.cafc.uscourts.gov/oral-argument-recordings/search/audio.html?title=In+Re+Erik+Brunetti&field_case_number_value=15-1109&field_date_value2%5Bvalue%5D%5Bdate%5D=2017-08-29 ADLON surname decision from the TTAB http://ttabvue.uspto.gov/ttabvue/ttabvue-85831682-EXA-36.pdf National Novel Writing Month https://nanowrimo.org/ John Welch’s TTABlog http://thettablog.blogspot.com/ Ron Coleman’s Likelihood of Confusion Blog http://www.likelihoodofconfusion.com/ The IPKat Blog http://ipkitten.blogspot.com/ Rebecca Tushnet’s 43(B)log http://tushnet.blogspot.com/ Lexology https://www.lexology.com/
Darrell Castle discusses the Supreme Court's recent decision involving the First Amendment and the Freedom of Speech Clause. Transcript SCOTUS SAYS IT'S OK TO HATE AGAIN Hello this is Darrell Castle with today's Castle Report. Today is Friday July 14, 2017. In this Report I will be talking about the recent United States Supreme Court decision in which the court unanimously held that so called hate speech is protected under the 1st amendment. The decision was 8-0 since Justice Gorsuch had not taken his seat at the time of the ruling. This case arose eight years ago when an Asian rock band out of Portland Oregon decided to call itself “The Slants”. The U.S. Patent and Trademark Office kept the band from registering its name and rejected its appeal citing the Lanham Act which prohibits any trademark that could disparage or bring into contempt or disrepute any person living or dead. A lower Federal Court agreed with the band but then the Patent and Trademark Office filed suit to avoid being compelled to register the name. On Monday June 19, the Supreme Court sided with The Slants. Writing for four of the judges, Justice Samuel Alito said “The idea that the government may restrict speech expressing ideas that offend strikes at the heart of the first amendment. Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful, but the proudest boast of our free speech jurisprudence is that we protect the freedom to express the thought that we hate.” Writing for the other four Justice Anthony Kennedy wrote, “A law found to discriminate based on viewpoint is an egregious form of content discrimination, which is presumptively unconstitutional. A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all.” The Justices, had a problem with the idea that commercial speech can be cleansed of any content deemed offensive by the government. Cleansing commercial speech of anything offensive or even determining what is offensive is not the government's responsibility. This decision, will have far reaching results. For example, one benefactor of the decision is the Washington Redskins of the National Football League. In June 2014, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office ordered that all registrations for the Redskins trademark be canceled under the disparagement clause. That decision was the result of the decades long battle with various Native American heritage groups who believed the name Redskins to be offensive and disparaging to Native Americans. The Redskins filed suit challenging the Constitutionality of the disparagement clause but that suit was stayed pending the outcome of The Slants case. I imagine that Redskins owner Dan Snider's team of lawyers was in the Trademark Office the next business day after this decision came out. Other business people whose brands have been rejected or who didn't file because of the disparagement clause can now file freely. The Redskins have fought to keep their trademark in the face of claims that the name is a racial slur. The Slants had its trademark rejected first in 2010 on the grounds that it was hurtful to a stigmatized community. The band contended that marginalized groups should “determine what's best for ourselves”. Whether or not Asian Americans are a marginalized group in America is another argument but with this decision the Supreme Court has unanimously ruled that it is not up to the government to manipulate the rules and punish individuals in order to correct perceived societal injustices. This decision by the Supreme Court was a major victory for the First Amendment and for freedom of speech in general. The American Civil Liberties Union called the ruling “a major victory for the First Amendment”. What then is freedom of speech as it is set out in the First Amendment.
Fordham Intellectual Property, Media & Entertainment Law Journal
Former Online Editor Anthony Zangrillo and Former Senior Notes and Articles Editor Joey Gerber take a break from BAR prep in order to discuss "one of the most important First Amendment free speech cases to come along in many years" Matal v. Tam.1 In the past, the U.S. Patent and Trademark Office (PTO) has refused to register trademarks considered that disparage a particular person, group or institution. On June 19, the Supreme Court unanimously held (8-0) that the disparagement clause (Section 2(a) of the Lanham Act), is an unconstitutional violation of the First Amendment’s Free Speech Clause. The specific case in controversy involved a Portland, Oregon, rock band “The Slants.” All the members of the band are of Asian decent and the name represents a move of empowerment in reclaiming a historically derogatory term. Simon Tam filed a trademark application to federally register the band’s name, “The Slants.” The PTO refused to register the mark as “derogatory or offensive” based on the dictionary meaning of ‘slants’ or ‘slant-eyes.’ Tam lost an appeal to the PTO’s Trademark Trial and Appeal Board (TTAB), but this ruling was reversed in the Court of Appeals for the Federal Circuit, holding that the disparagement clause is unconstitutional under the Free Speech Clause. On this podcast, Anthony and Joey discuss the Supreme Court decision and the ramifications this could have on future trademark applications, as well as other decisions such as the recent controversy over the Washington Redskins.2 Don’t forget to also subscribe to the podcast on iTunes (https://itunes.apple.com/us/podcast/fordham-intellectual-property/id1158550285?mt=2) and leave a review!
Trademark and first amendment at issue - Matal v. Tam In this exciting episode of Vondran Legal Hour, Attorney Steve discusses the recent United States Supreme Court case which rules that the Lanham Act "disparagement clause" is unconstitional as to the First Amendment right of free speech in regard to an asian band called "the slants" who wanted to register the trademark and try to change views as to the negative sterotypes. The USPTO denied the registration of the mark and so did the TTAB. The case then moved to the Federal Courts which found for the applicant finding the trademark to be registerable and the right of free speech to be the primary source (government has no right to engage in viewpoint censorship). This same type of discretion goes on when driver's license plates are reviewed for content and sometimes denied on graounds that the speech is hateful, offensive, slanderous or dispaging to racial and ethnic moniorities. Wil this prompt a new slew of filings of what some may see as Offensive or Derogatory trademarks? Time will tell. Will this have any impact on the Washington Redskins trademark denial. Resources 1. AttorneySteve.com (our corporate homepage) 2. AttorneySteveVideos.com (our popular youtube channel nearing 4,000 subscribers) 3. Our Washington Redskins case analysis This is an advertisement and communication and not legal advice or a substitute for legal advice. For help with trademark issues, responses to office action letters, TTAB appeal, mediation, arbitration or litigation call(877) 276-5084.
On June 19, 2017, the Supreme Court decided Matal v. Tam. Simon Tam of The Slants, an Asian American rock band, applied to register the band’s name with the U.S. Trademark Office, but the application was denied. The Office claimed that the name would likely be disparaging towards “persons of Asian descent,” citing the Disparagement Clause of the Lanham Act of 1946, which prohibits trademarks that “[consist] of or [comprise] immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Tam appealed to a board within the Office but was again denied. On appeal, the U.S. Court of Appeals for the Federal Circuit, ultimately held en banc that the Disparagement Clause violated the First Amendment on its face. -- By a vote of 8-0, the Supreme Court affirmed the judgment of the Federal Circuit. In an opinion by Justice Alito, the Court held that the Disparagement Clause of the Lanham Act violates the First Amendment's Free Speech Clause. Parts I, II, and III-A of Justice Alito’s majority opinion were joined by the Chief Justice and Justices Kennedy, Ginsburg, Breyer, Sotomayor, and Kagan. Justice Thomas joined except for Part II. Parts III-B, III-C, and IV of Justice Alito’s majority opinion were joined by the Chief Justice and Justices Thomas and Breyer. Justice Kennedy filed an opinion concurring in part and concurring in the judgment, in which Justices Ginsburg, Sotomayor, and Kagan joined. Justice Thomas filed an opinion concurring in part and concurring in the judgment. Justice Gorsuch took no part in the consideration or decision of the case. -- To discuss the case, we have Michael R. Huston, who is Associate Attorney at Gibson Dunn & Crutcher LLP.
On January 18, 2017, the Supreme Court heard oral arguments in Lee v. Tam. Simon Tam of The Slants, an Asian American rock band, applied to register the band’s name with the U.S. Trademark Office, but the application was denied. The Office claimed that the name would likely be disparaging towards “persons of Asian descent,” citing the Disparagement Clause of the Lanham Act of 1946, which prohibits trademarks that “[consist] of or [comprise] immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Tam appealed to a board within the Office but was again denied. On appeal to the U.S. Court of Appeals for the Federal Circuit, a panel of judges determined that the Office officials were within their rights to refuse the application. The Federal Circuit then reviewed the case en banc and found that the Disparagement Clause violated the First Amendment and that the Office should not have refused the application. -- The question before the Supreme Court is whether the disparagement provision of the Lanham Act, 15 U.S.C. 1052(a), which provides that no trademark shall be refused registration on account of its nature unless, inter alia, it “[c]onsists of . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” is facially invalid under the Free Speech Clause of the First Amendment. -- To discuss the case, we have Megan L. Brown, who is Partner at Wiley Rein LLP.
On this episode, we review the oral arguments last week in Lee v. Tam. Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), provides that no trademark shall be refused registration on account of its nature unless, inter alia, it "[c]onsists of . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." The question presented by the case is whether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment.
Can the government police speech it thinks is offensive, even when members of the group the government seeks to protect disclaim any offense? Section 2(a) of the Lanham Act allows the government to deny trademark registration to "disparaging" speech. On Wednesday, January 18, the Supreme Court will hear oral argument in Lee v. Tam, a case challenging the constitutionality of this statute. -- In Lee, an Asian-American rock band called “The Slants” was denied trademark registration after the Patent and Trademark Office found the trademark disparaging to Asians. A panel of the U.S. Court of Appeals for the Federal Circuit affirmed the decision. But the en banc Federal Circuit—without being asked—decided to vacate that decision and consider whether § 2(a) violates the First Amendment. The full Federal Circuit ultimately reversed the panel decision. The federal government then asked the Supreme Court to weigh in. -- Is the Court likely to affirm the Federal Circuit decision striking down the disparagement clause as violative of the First Amendment? And what will be the implications if it does? Megan Brown and Dwayne Sam of Wiley Rein LLP attended the oral arguments and offered their impressions and predictions during this Courthouse Steps Teleforum conference call. -- Featuring: Ms. Megan L. Brown, Partner, Wiley Rein LLP and Mr. Dwayne D. Sam, Associate, Wiley Rein LLP.
This term the Court considers the case of Lee v. Tam, which considers whether Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), is constitutional. Section 2(a) prohibits the registration of a trademark that “may disparage ... persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” In this case, the Government denied a trademark to "The Slants," an Asian-American rock band based in Portland. In choosing to name the band "The Slants," Simon Tam sought to make a statement on discrimination against Asian-Americans.
Our lightning round panel will discuss the key takeaways from new developments in topics critical to clients publishing, monetizing, and utilizing digital content, including: (1) the Lanham Act (including commercialization of online content), (2) the Computer Fraud and Abuse Act (including delegation and authorization to access on behalf others), (3) copyrightability (including APIs, and also […]
A case in which the Court held that the Lanham Act allowed any party to sue for injuries relating to false advertising, as long as the party bringing suit has an interest that falls in the zone of interest that is protected by law.
When your business category is dominated by a single brand and all the other brands put together don't equal them, it's time to create a counter-brand. Counter-branding – business judo – is rare and dangerous. But when you're overwhelmingly dominated, what have you got to lose? Prior to the creation of their “Uncola” counter-brand in 1967, 7-Up had survived for 38 years as a lemon-lime soft drink with the slogan, “You Like It. It Likes You.” Yippee Skippy call the press, a soft drink likes me. As in Judo, the secret of counter-branding is to use the weight and momentum of your opponent to your own advantage. In other words, hook your trailer to their truck and let them pull you along in their wake. The steps in counter-branding are these: 1. List the attributes of the master brand. In the case of 7-Up, the master brand was “Cola: sweet, rich, brown.” Everything else was either a fruit flavor or root beer and all of those put together were relatively insignificant. “Cola” overwhelming dominated the mental category “soft drinks.” 2. Create a brand with precisely the opposite attributes. To accomplish this, 7-Up lost their lemon-lime description and became “The Uncola: tart, crisp, clear.” 3. Without using the brand name of your competitor, refer to yourself as the direct opposite of the master brand. 7-Up didn't become UnCoke or UnPepsi as that would have been illegal, a violation of the Lanham Act. But when you're up against an overwhelming competitor, you don't need to name them. Everyone knows who they are. Let's look at a current example: Starbucks. Notice how I didn't have to name the category? All I had to say was “Starbucks” and you knew we were talking about coffee. That's category dominance. In the February 2005 issue of QSR magazine, Marilyn Odesser-Torpey writes about Coffee Wars, opening with the question, “Starbucks will certainly remain top dog among coffee purveyors, but who is next in line?” A little later we read, “Many of the competitors in the coffee segment are Starbucks look-alikes; if you take the store's signage down, it would be hard to tell the difference.” Traditional wisdom tells us to (1.) study the leader, (2.) figure out what they're doing right, (3.) try to beat them at their own game. This strategy can actually work when the leader hasn't yet progressed beyond the formative stages, but when overwhelming dominance has been achieved, as is currently the case with Starbucks, such mimicry is the recipe for disaster. Are all competitive coffee houses forever doomed to occupy the sad “me-too” position in the shadow of mighty Starbucks? Yes, until one of them launches a counter-brand. To determine what a Starbucks counter-brand would look like, we must first break Starbucks down into its basic brand elements: 1. Atmosphere: quiet and serene, a retreat, a vacation, like visiting the library. Bring your laptop and stay awhile. They've got wi-fi. 2. Color Scheme: muted, romantic colors. Every tone has black added. 3. Auditory Signature: music of the rainforest, soft and melodious 4. Lighting: subdued and shadowy, perfect for candles or a fireplace. 5. Pace: slow and relaxed. This is going to take awhile, but that's part of why you're here. 6. Names: distinctly foreign and sophisticated. Sizes include 'Grande' and 'Venti.' (No matter how you pronounce these, the 'barista' will correct you. It's part of the whole Starbucks wine-bar-without-the-alcohol experience.) Counter-brands succeed by becoming the Yin to the master brand's Yang, the North to their South, the equal-but-opposite 'other' that neatly occupies the empty spot that had previously been in the customer's mind. Here's what a Starbuck's counter-brand would look like: 1. Atmosphere: energetic and enthusiastic. Running shoes instead of bedroom slippers. Leave the car running because we won't be here long. 2. Color Scheme: bright, primary colors such as are...
Discuss this episode in the Muse community Follow @MuseAppHQ on Twitter Show notes 00:00:00 - Speaker 1: You can also be notified just based on an algorithm, you know, if somebody files something that’s similar to your trademark to trigger a notification to you. The interesting thing about the trademark office, at least from a government perspective, is it’s the most government 2.0 out there in the sense that the data is publicly available and can be downloaded every single day. 00:00:24 - Speaker 2: Hello and welcome to Meta Muse. M UUE is a tool for deep work on iPad and Mac. This podcast isn’t about Muse product, it’s about the small team and the big ideas behind it. I’m Adam Wiggins here with my colleague Mark McGranaghan. Hey Adam. And we’re joined today by Josh Gurbin of Gurban Intellectual Property. 00:00:42 - Speaker 1: Thanks for having me, guys. 00:00:44 - Speaker 2: And Josh, I understand you have 4 kids. How in the world do you manage life work balance with that and being a business owner? 00:00:51 - Speaker 1: That is incredibly difficult. I will say that the plan was maybe not to have as many kids initially, but these are the things that happen as life goes on. And one of the great benefits I have is that I get to work from home every day. So I don’t have a commute into the office or home from the office, so I can wake up, get to work, and You know, when the kids get home from school, I have a little time, but, you know, I’m not wasting an hour or 2 hours a day commuting to and from an office in a big city and having that time back is really the critical element I think in making it all work. 00:01:23 - Speaker 2: That’s huge. Now have you found some good techniques for communicating boundaries around your office slash, you’re on a call or just need to focus, especially, you know, I don’t know how old your kids are, but the younger they are, the less they understand, you know, closed door means you can’t come in. 00:01:39 - Speaker 1: Absolutely, so in my house we actually have an office, you know, that I work from that’s dedicated for me and everybody understands that the doors closed, you know, you just don’t come in, I’ll come out when I’m ready, and luckily, you know, when you work from home and you talk about those boundaries with your kids every day, they really understand what you’re doing. Now, of course, there’s gonna be a situation here and there where they run in and They probably shouldn’t be, but the benefit of COVID is so many people have had to work from home and deal with that now that it’s not unusual for anybody to kind of see a kid running around on a call here and there, so it’s almost an enduring quality these days, so I find it works pretty well and for the most part, you know, we’re able to sort of separate in our house. 00:02:17 - Speaker 2: Absolutely, I almost wonder, yeah, every time my kids run in and jumps in front of the screen and everyone sees her, you know, it’s obviously always like a very positive reaction, but I almost wonder if that’s a positive reinforcement for what ultimately is not a good behavior, which is, you know, violating the boundary of the closed door or the workspace. But yeah, then you can’t resist it. Everyone’s just entertained to see an unexpected cute face pop up on the screen. 00:02:42 - Speaker 1: And honestly, if you have kids, you appreciate what’s going on and you understand what’s going on, and I think that that’s something that, you know, to me it doesn’t bother me if I’m talking to somebody and their kids budging. I like to see what their life is like. I like to see that they’re a human being too, right? And I think that that humanizing aspect of things can even make relationships stronger between people. So I personally have no issue with it, and I think if somebody does and they’re probably got ice in their veins, you know, it’s. 00:03:08 - Speaker 2: And tell us a little about your firm and your background. 00:03:12 - Speaker 1: Yeah, sure, so I started the law firm in 2008 in the middle of the Great Recession. I had a steady job, a good job at the time. I was 2 years out of law school and everybody thought I was absolutely crazy as 27 years old and they’re like, you’re gonna start your own law firm? I mean, most people don’t want to hire a lawyer and it looks like he’s 12 years old and I definitely looked like I was 12 years old at the time, but I said, look, I can offer pretty low-cost service and I’m not gonna have any overhead and I wanna really be out on my own. I’ve always wanted to have my own business. And basically started by using Google AdWords and going out there and putting up a website and slowly but surely got clients and If you’re just building brick by brick day by day, ultimately you build up some clients, you get some repeat and referral work, you continue to take a new work and slowly but surely you grow a law firm, and now we’ve got 13 employees, we file around 1000 US trademarks every year plus hundreds of trademarks in other countries around the world. So it’s been quite a ride and just something we’ve built very methodically and slowly over the last 14 years. 00:04:15 - Speaker 2: Nicely done. I feel with a services business, which I for a few years was a software consultant, and the common wisdom there and certainly reflected my experience was you get business through referrals, essentially through your network and ideally clients that refer you to other ones, but they tend to be all word of mouth. But we found you. Because you have a good website and I basically just Googled US trademark when we were thinking about filing for Muse and now we have a multi-year business relationship. I don’t know, is that unusual that we came in that way, or is this kind of reflecting a new reality of the internet world which is you can actually essentially get randos from the internet that come to hire you for your service. 00:04:57 - Speaker 1: Well, yeah, absolutely, and that was a lot of the disbelief that I had amongst the legal community because lawyers, you know, they tend to be really reticent to adapt to new technologies and new techniques of advertising and things, and everyone said, who are you gonna find online that’s looking to hire a lawyer? Who are you gonna really get? And well, obviously, you know, we’ve gotten some really good clients, you included and One thing that we invested in very early on was search engine optimization. So you likely found us through an organic search and not necessarily an ad. I will say that in my experience, you know, the clients that come to us when we were doing the Google ads, which we don’t really do anymore, were harder to kind of parse through all the leads and finding sort of the good. Ones in that bag of leads that would come in every day. But because we have such a great organic presence and work really hard on that, we find that the clients we obtain from that presence tend to be really, you know, great clients, and we’ve built a business that way. I will say probably now, to grow a service business, I certainly agree you need the referrals because it’s very hard. You know, there’s a lot of work that goes into building a new relationship with a new client that’s found you online and has their own suspicions about you and building that trust factor is really challenging. But if someone comes in through a referral and it’s a warm referral, they have the trust already, they’re like, oh, this person has worked with Josh, they know his firm, they trust him, I’m gonna trust him, right? And so there’s a lot less work that has to be done to build up that relationship and that’s really what’s allowed us to grow is that warm referral business that we have. 00:06:24 - Speaker 2: One thing I noted right away on the embrace of technology side is you had a calendly link or some kind of automated form for basically asking for your time, asking for a call, and I think I’m not sure how common that is nowadays. It’s very, very common in the tech industry, but this. It was 3 years ago or something like that, and so I was quite impressed by that and it seemed to signal that you were embracing technology to make lives easier for everyone, and that implied to me that we would be sort of compatible in terms of working together, a working relationship. 00:06:55 - Speaker 1: That’s so interesting to me to hear that because I have gotten mixed feedback on that Coly link over the years. Some people really hate it. They take it as an insult that you won’t take the time to schedule a call with them, and I’m just shocked because I’m like, well, how many emails do we need to trade to find what time works for you and what time, and this is just you go in there and you just, you know, yeah, I mean I think that’s a nice. The thing about working with people in tech is that you appreciate those tools and, you know, we do offer a lot of our services at a flat rate, so we are incentivized as a law firm to be more efficient, and that is actually, you know, the reverse of the way a lot of law firms think, because a lot of law firms are like, well, we want to be as inefficient as possible and build as many hours as we possibly can to get this task done, and we’ve always been designed of, we need to get this done as quickly and as good as we can, but we need to get it done as quickly as we can. When you’re focused on that, you look at all the different tools that are available and you start to use them because they’re really helpful in keeping your time down and letting you move through projects. 00:07:51 - Speaker 3: This is very interesting to me. So, for the listener context, Adam has sort of reached out and established the relationship with Josh, so I wasn’t involved in that, and I wasn’t aware actually Adam, that you had reached out sort of cold over the internet, and my experience with almost all Lawyers and accountants and similar professional services firms is that they basically don’t talk to you unless you have a referral. They don’t quite come out and say that, but that’s really the MO of most folks, but I think it’s notable that Josh and I think the law firm that we worked at, we both found through their online presence basically and reached out, and then our accountant we’ve known for like 10 years, so that’s a different case, but it is one little data point in the changing world of professional services. 00:08:30 - Speaker 1: Yeah, it’s interesting to hear. I mean, I think that it depends on the size of the professional services firm because a lot of the firms are set up to have these really significant overheads, and they have a very developed client base that they’re billing every year, and these are retainer clients and they have these very set budgets. So when they take on somebody new, that new person needs to have a certain budget in order for it to make sense for that firm to take on. And where we differ is we have a very low overhead structure and we’re actually focused on serving. A lot more diverse of a client base and let’s say 100 big clients a year. We’re focused on serving 1000 smaller clients a year. And to us, that’s a great benefit because if one client for some reason leaves, we’re not looking at having to lay people off or having a huge loss of revenue, you know, we still have the 999 other clients that year that are gonna be, you know, keeping us afloat and keeping the lights on and our people paid. And so when you’re not reliant on these like large whale clients, then you are more apt to really want to take in, you know, new work every single day because you are relying on more or less the volume. 00:09:38 - Speaker 2: We went through something exactly like that with our software consultancy, which is we got some. Bigger projects, in particular, one big client and we had to staff up to serve their needs, but then when things changed with them out of the project or whatever, and then suddenly we’re scrambling around to find enough work to keep these folks fed and so yeah, I mean, it’s of course it’s always the case that professional services and you know it’s kind of like a scaled up version of freelancing, which is feast and famine. That’s right, but the more you can diversify and spread out a little bit. But yeah, you get that client that comes in and, you know, basically is well has like exactly as he said, and that’s it’s really compelling, that’s how a lot of services businesses do what they do. 00:10:19 - Speaker 1: Oh, for sure, and I mean you know we had in the last 2 years, we had 3 or 4 of our largest clients get acquired, and when that happens a lot of times you lose the trademark work because the business that’s acquiring them is much larger and has their own lawyers already and so, you know, we have to be prepared that even when we build up and work with a particular Client and they become a larger client, they’re eventually gonna leave. So you have to always kind of have what you call a farm system of clients you’re developing and hopefully getting into the next big client to take the place of the one that will eventually leave for one reason, either through a sale of the company or they get so big that some other lawyer poaches the work or whatever it might be. 00:10:55 - Speaker 3: Yeah, I wouldn’t be surprised that even if you don’t have outsized clients in terms of work, you probably have some clients that give you an outsized amount of referrals. I’d be curious if that’s the case. 00:11:06 - Speaker 1: Yeah, you know, actually other lawyers are our best source of referrals because a lot of other lawyers don’t have a specialty in trademark law and they’ll get a question from a client about a trademark, and there’s this ethics rule that applies to all lawyers that you can’t do work for somebody unless you really feel competent to do it, and if you’re not feeling competent to do it, you might have to charge your client to get competent, whereas they could just call us and we could do something really quick and easy for their client and the client gets great customer service. And at the end of the day, the lawyer doesn’t lose their client because we’re not looking to take, you know, somebody on for more than the trademark work. So when we start working with our lawyers and other law firms, they’re like, wow, this is great, we can send these things over to Gurin and they turn it around and get everything taken care of and the client’s happy and they’re staying with us for their other corporate work or whatever it might be. And so those law firms and lawyers tend to be our best referral source. 00:11:59 - Speaker 2: Well, that’s certainly a benefit of the tight specialization that you have, and maybe that is a good transition into our topic today, which is trademarks. So maybe this is a slightly surprising one for our listeners who are used to a lot of our focus tends to be on design, product, tools for thought, research, things like that, but at least one of my goals with this podcast is really to document all of the aspects of building a business that Mark and I and all the others on the Muse team are going through here and the trademark is. One corner of that, but I found a surprisingly intriguing and intellectually engaging one. And just in our conversations, Josh, just on the phone working through our case of getting our various trademarks filed, I’ve been just fascinated by the mechanics of it even past what’s necessary for the purpose of doing the project, so I hope we can share that with our audience here. 00:12:49 - Speaker 1: Yeah, absolutely. That’s my everyday. 00:12:53 - Speaker 2: Now of course, I’d like to tell a little bit about the Muse journey in our trademarking and why we’re motivated on all that and so forth, but we always like to start really at the beginning, which is just definitional. What is a trademark? 00:13:06 - Speaker 1: Yeah, so a trademark is a source identifier, meaning that it identifies the source of goods or services. So if you see a Nike logo on a shoebox, you know that the shoes in there were made by Nike Inc, the corporation, and you know that the shoes have a certain quality about them and where they come from. And so trademarks, and many business owners are surprised to hear this, but trademarks and trademark law exist to protect the consumer, not the business owner. So the test of whether you ever have trademark infringement is whether consumers might be confused as to the source of the goods or services because the trademarks are so similar. And that is why trademark law exists in the United States. But yes, so a trademark is meant to identify what company is behind whatever product or service is being offered. 00:13:55 - Speaker 2: And I’ll do a quick call back to our episode on brand, where I spoke there about some historical examples, and a notable one here is Heinz, which actually started as a jarred pickle business, later went to their now what they’re known for with ketchup, but the big innovation there was that you had these door to door salesmen that would sell these canned foods, but you didn’t know where it was from. That’s the source that you’re talking about there. And Heinz came along and came up with the idea of I’m going to put my name on it in a very particular typeface and a very particular kind of recognizable color scheme, and I’m really going to stand behind the quality on this and get people to trust. I guess trust me, trust, you know, Mr. Heinz, but really they’re trusting the brand, and that was maybe the birth of the modern concept of brand, but that pretty naturally leads into why you need trademarks in that circumstance, which is like, OK, if you built a bunch of trust around a label with a typeface and some colors, well, that’s pretty easy to duplicate. And so then legal protection to prevent that as sort of a form of, I guess, defrauding the consumer or tricking someone in a way that harms them, it makes sense for the law to provide that protection. 00:15:03 - Speaker 1: Yeah, absolutely, you know, I’ve never heard that story before, but that is an amazing way to kind of paint the picture of why trademark law exists and how it helps protect consumers. 00:15:13 - Speaker 2: And just very broadly speaking, how do you think about when a business owner should register a trademark for one or more of their products? 00:15:23 - Speaker 1: So, I’m gonna be completely biased because I’m a trademark attorney and this is how I make my living, but it should arguably be the first thing that someone does in connection with starting a business. And that’s because if you have a name for your company or a name for your product or service, you should not start investing in that. You should not be creating logos around it. You shouldn’t be buying signs, you shouldn’t, you know, you shouldn’t be building brand equity into it until you know that trademark is clear for you to use, meaning there’s not any other conflicts. And you’ve got a trademark application filed, which gives you a priority date in that particular mark, meaning if anybody else comes and tries to use the name or file for the name, they’re all gonna be subject to your rights from the date you had filed that trademark application. So we typically, if we can get to a client early enough, we remind people that you want to do this as sort of number one A on your list of things to do when you’re starting a new company or starting a new product or service line. 00:16:20 - Speaker 2: So maybe you would lump it in with registering a domain name, setting up your Corp or LLC, some of those other just basic mechanics of getting a business started. 00:16:31 - Speaker 1: Absolutely, especially, you know, if you’re ever going to spend a nickel on buying a domain, you know, you’re not just getting it for $1299 because nobody else wants it, but you’re actually investing a couple $1000 or whatever it might be to buy a domain, you really wanna make sure that the name is clear, because if you buy a domain that somebody else may have a trademark registered around or a similar trademark registered around, they would actually be able to come and take that domain from you potentially down the road. So, Just making sure that name is clear and also again getting an application file to set a priority date in place, absolutely critical to protecting yourself whenever you’re setting all those things up. 00:17:08 - Speaker 2: And give me the simplest possible case. I have a name that is very unambiguous, you know, maybe it’s long, it contains my personal name or something like that, no confusion with, you know, something that’s, for example, a single English word will come to why that’s challenging. You’re in just one jurisdiction, let’s say the US since you know that well. What’s the simple case in terms of like time and cost to get your trademark filed? 00:17:32 - Speaker 1: Yeah, sure. So depending on the service provider you use, the cost can vary pretty significantly. You know, you could go online, as you mentioned, and find a lawyer like myself. There’s other lawyers that now hawk their services online as well, there’s plenty of them. You could use a service like a LegalZoom, which is technically in most cases a non-legal service, meaning you’re just, you know, using a software that people have created to kind of help you with the search and help you with the filing, and you pay a fee for that, or you can hire a really large institutional law firm. And depending on which path you go, your fee structure is gonna be a lot different. The way that we view ourselves in the market is that we’ve always tried to set ourselves up to provide the same style of service you’re gonna get from a large institutional firm and the same know-how, but do it at a rate in between what a non-legal service like a LegalZoom charges and what a large institutional firm charges as many times as, you know, priced out a small business owner. So just to put numbers out there. We typically charge $950 to run a US trademark search, provide an opinion, provide consultation time, and then ultimately file the application. And in most cases, your filing fees are going to be around $250 or $500 with the government. So, a $1500 budget is pretty sufficient in most cases and whether it’s our firm or some other small law firms, you probably find the prices to be pretty similar. Time wise, Typically it takes about a week or two to run a trademark search properly. So you can go online and do this yourself, you know, and there’s a lot of information about, well, go to this website and run a trademark search or what have you, but those searches are very inconclusive because they only are looking for identical matches, and the thing that will cause the most problem for anybody that’s trying to register a trademark is not an identical match, but something that just sounds like your trademark or slightly spelled a little bit differently than your trademark, because those are all things that can create a conflict. And so a professional search is gonna look for all those things and takes a little bit of time. So typically it takes our firm about 3 hours of staff time. There’s some paralegal time and there’s some attorney time in there, and it takes us that kind of time to get a search done. So, again, it might take a week or so to get that turned around, but then shortly after that you can get an application filed. Let’s call it 2 or 3 weeks from the time you’re engaging somebody to the time you get your application filed. Now, once the application is filed, this is where it’s kind of a process these days. The United States Patent and Trademark Office, which is the government agency that processes these filings, they take about 10 months to even process your trademark application now. It used to be 3 to 4 months, of course, now it’s 10. So you’re gonna wait a really long time to get an answer. But once you get that answer, if they approve it and move the application forward to registration, typically around month 12 to month 14, you end up with the registration certificate and you’re all set. 00:20:19 - Speaker 2: As you mentioned before, actually being in the line, having the application submitted itself is worth something that kind of reserves your place, so to speak, and furthermore, I hadn’t realized this until we’d worked together, but I think there’s these two different symbols you can if you want. Use together with your trademark. One is the little TM kind of superscript and one is the R. And tell me if I’m remembering this right, the TM you can actually do as soon as you have filed the application and the R means it’s been registered and accepted. Am I remembering that right? 00:20:52 - Speaker 1: Yeah, absolutely, matter of fact, you can use the TM before you even file, if you want to. So the TM stands for, hey, I’m claiming a trademark right of some kind. It might be what we call a common law right, meaning a right that is an unregistered right, or it could mean I’ve got a federal trademark application filed and I’ve got a pending registration. So that TM can be thrown up at any time. The circled R can only be used once you actually get the registration back from the USPTO. So again, a year plus down the road. People are often surprised to find that if you use that circle R before you receive the registration, that’s actually a violation of federal law. No, they’re not gonna arrest you and throw you in jail, but it can actually cause a refusal of your trademark application if the government finds that you’re using that in their examination process, so you don’t want to use it before you get the registration. 00:21:41 - Speaker 3: That’s interesting. I feel like I’ve seen TM in places where almost certainly they’ve filed and gotten the registration. Is that just because they like the TM or maybe there’s never filed, or maybe I’m just misremembering it? 00:21:55 - Speaker 1: No, you’re remembering it properly in all likelihood, because two things tend to happen. One, folks set their marketing and forget it, so they never change to the circle of R, and that’s fine too, like you don’t have to. I mean, it’s not a requirement, you can still just use a TM. The other thing is for a business that touches internationally, if you are registered in the United States, but let’s say you also use the trademark in Europe or Australia or South Africa and you don’t have the mark registered there yet, don’t want to use the circled R there yet either. So it’s a little easier to keep just using the TM symbol if you’re in jurisdictions where you haven’t yet registered the mark or still trying to register the mark. And sometimes that’s why that happens too. 00:22:32 - Speaker 2: That makes sense. Now those markers, I don’t know how it is for others or maybe beyond the tech world or whatever, but I do think of them as being something that nowadays people would find a little corny, you know, if you stick that into your product marketing materials or whatever on your website that I don’t know. You sound kind of old school or fully yourself or something like that, like we’re not going to put MTM for example, up on our website. Now, maybe a little more classy way would be at the bottom, you know, there’s some gray text that says, you know, X is a registered trademark of dust and such corp. I don’t know if your other clients feel that way, but I can’t imagine myself using either of those symbols regardless of any trademark status we have. 00:23:13 - Speaker 1: It’s so funny you say that because that is like one of the most polarizing questions that I think I get, because there’s people on either end of the spectrum and no one in the middle. So either people love putting the trademark symbols next to their name because they feel it makes them look official, or they hate it because they think it junks it up and it’s corny. And there’s no in between on that, you know, it’s like you either far right or far left. And so I personally like them. I mean, I’m a trademark attorney, I think they look great when I see them, and we advise clients to use them because there’s a technicality to using these symbols, which is that when you use them, you’re putting the public on notice that you’re claiming a trademark right. So if somebody does infringe on your trademark, that quote unquote notice has already been given, which could enhance damages and awards should you, you know, have to sue somebody in federal court. So, Legally speaking, the advice is always to use them. I certainly understand where some folks feel like that is not the aesthetic that they’re going for or the look that they’re going for, in which case we advise them to just try to get it in somewhere like you say, maybe it’s in the footer of your site instead of on the masthead or something like that. 00:24:14 - Speaker 3: And this reminds me, I feel like there’s some branch of intellectual property law and maybe it’s trademarks, maybe it’s something else where it’s like fight it or lose it, and that if you don’t contest other people infringing basically on your whatever IP then you sort of lose the claim to it, so you can’t come back 10 years later and say, wait a minute, you know, I want this back. Are trademarks like that? 00:24:32 - Speaker 1: Yes, they are. So basically, there’s a policing requirement with a trademark in that if you don’t police the marketplace and you don’t police the federal register and other people register trademarks that are similar or same as yours, it will basically erode your rights over time. So the benefit of any kind of trademark registration is that you think of your trademark and then draw like a big circle around it, and you have a lot of elbow room that you can enforce, right? So if somebody uses a phonetically similar trademark, you can ask them to stop. If somebody uses a spelling of your trademark that’s very similar, but maybe, you know, not the same, you could ask them to stop. For example, let’s say someone tries to register Muse with a Y, and they’re offering a similar service or product that you are, you could ask them to stop. But if you don’t, and you allow them to go forward and register their mark or use it, and a certain amount of time passes, typically about 3 to 5 years, you could be stopped from ever making that claim in the future. So once somebody uses a trademark for so long and you sleep on your rights, the law basically says you can’t sleep on your rights for 5 or 10 years and show up and tell someone they can’t use their name. So you have this window in which you have to actually police it. And then if you don’t police it and that person uses your name and somebody else uses a similar name, basically that circle we’ve drawn around your trademark gets much, much smaller and smaller and smaller over time. So your rights just erode, and they get to a point where maybe you can only do policing on a very, very narrow type of infringement that might occur, and not some of these sort of fringe cases, if you will. It becomes very common for clients to get a trademark registration certificate and kinda just be done, you know, they’re just like, uh, we got it, we’re good, we’ll see you later, we’ll see you in 5 years when we got to renew this thing, and that’s fine, but the challenge with that is, is that over time, again, if they’re not doing that policing work, the rights just won’t be as broad and to most companies that may never matter until you have a problem, right? And then you’re like, ah, I would say it’s like wearing a seatbelt. If you put the seatbelt on every day, Hopefully you’re not gonna have an accident, you know, ever, but when you do, you’re really glad you put the seatbelt on every day. If you’re not wearing a seatbelt and you just have an accident, you start to go through the windshield, there’s no like going back in time and putting it on, you know, and that’s kind of the same concept here. Once you start to have the accident and the problem and you haven’t been doing all the preventative work, it can be really hard to kind of unwind that. 00:26:50 - Speaker 2: One way we can anchor the discussion a little bit here is to talk a bit about Muse’s journey on this and some of our motivations and some of the particular challenges. Josh, you mentioned that one of the things your firm does is this search, and indeed when I came to you and said, you know, we’d like to register this word, and you basically said before even doing the search, all right, you’ve got a short English word, this is going to be a challenge, but let us look into it for you. And you came back with a report that had a big red banner that basically said like high risk and listed a bunch of similar ones again different spellings, some are older, some are newer, some were for big firms and so on, and indeed I reinforced. That for myself by just going to the US trademark search page, we’ll link that in the show notes. You can do this yourself and just search and there’s hundreds of entries. Now many of them are defunct or businesses that aren’t around anymore or whatever, but that seems to be true for almost any simple English word like this. There’s a lot of businesses in the world that people have registered for a long time and some of these are active and so you basically came back and we did a process of, OK, could we Add a word, could it be the muse canvas? Could it be something else to make this an easier process for us, but ultimately we decided to go ahead and for there I’ll rewind even a little further back in time. Which is Mark, you and I had taken a walk while we were on basically our very first team summit in Dublin, Ireland, which is when me, you and Julia had gotten together to say, OK, we think there’s business potential here. Do we want to spin this research project we’ve been doing out of the lab? And indeed we decided there and the name you, I think you would come up with Mark, but it was kind of a placeholder for this research project, but he argued, you know, this is a good. I think it captures a lot about the spirit of the project and I’d like to use it if at all possible, and that includes obviously the defending against any risk that either we’re stepping on the toes of someone else who’s already in the space or someone else that might come up behind us and that’s why we decided to go on this what has now been a multi-year journey of filing this trademark in several different jurisdictions. 00:29:04 - Speaker 3: Yeah, names have always been super important to me. I mean, there’s a whole business reason, of course, why names matter, but for me, whenever I’m starting or in the early days of a project or a library, There’s an incredibly important milestone where you come up with a name that feels really good. You always start with something generic or goofy, or maybe you pick some character from a novel you just read or whatever, right? You got the kind of placeholder name, and we had that with Capstone a while back, which was a prototype that would eventually become used. But I remember quite vividly, I sat down at one point and thought from first principles, what should the name of this thing be? You know, it should connote thinking and deliberateness. But have sort of this creative, not too mechanical feel. And I wrote down a whole list and man, you really felt like the right name. But I knew it was gonna be tough. It was gonna be very tough to get a domain, and I assumed it was gonna be tough in terms of the VIP side. But I really wanted to have a good name, both for the business and for the sort of psychological value of saying it for the next 5 years or whatever. And I specifically didn’t want to do something like use Canvas software apps. I wasn’t gonna cut it for me. So I’m really glad that we did try to pursue the single word. 00:30:13 - Speaker 1: Yeah, and there’s always this pool between marketing and legal with any trademark. I deal with this a lot, where from a marketing perspective, the single word muse, four letters, that’s ideal, right? It’s an easy to remember word, it’s short, it’s sweet, it’s to the point. From a trademark perspective, when you’re trying to register a four-letter word against millions of trademarks that have been filed before you, the chances that there’s gonna be a completely clear path are pretty slim. And so that’s where the challenge comes in between what’s good for marketing versus what’s good for legal. I always give people the data point that in 2021, there was 669,397 trademarks filed with the USPTO, so nearly caught almost 700,000. That’s one year, you know, so you could just imagine going back now, we’ve filed more and more trademarks now than we ever had before for various reasons, but You know, when you have this many trademarks getting filed every year and you’re trying to get a four-letter word registered, you’ve got a lot of potential complications and competition to worry about. The one thing I always tell folks about name selection is that Most great names didn’t really mean much or wouldn’t be great unless the company really built a great product or service behind it. I look at Nike for shoes, I don’t think there’s anything great about Nike. It’s a four-letter word, but it doesn’t strike me as like a great brand name if I didn’t know that there was a huge shoe company behind it. Same thing with Google, it’s like, what does that even mean, you know, but And famously, Google is a mathematics term, 00:31:52 - Speaker 2: you know, Google is where it comes from, yeah, but it’s actually misspelled, you know, a misspelling by one of their angel investors that, yeah, yeah. 00:31:56 - Speaker 1: So those are sometimes, you know, I do think people put a lot of value in the names that really sometimes they shouldn’t until they actually build the brand equity into the name, and then that’s when the value is there. 00:32:09 - Speaker 2: Yeah, well, maybe there’s a mix there for me, getting the right name on a project, on a company, on whatever it is, as Mark said, it feels right, and then I, I’m actually more motivated to invest myself in it and build that brand equity. Sure. You know, one theme on this podcast for certainly is that the motivations of the creators do matter a lot in making a great product and So, yeah, we probably could have made things easier for ourselves, you know, gone the route of, I don’t know, you know, Miro was called real-time board when they started, could we have been called like real time canvas or something, but that just would not have inspired me. 00:32:43 - Speaker 1: That’s totally fair and very important. There’s no question. 00:32:47 - Speaker 2: Now one element of the name you’ve mentioned a few times here is the overlap or I guess it’s the risk of confusion for consumers. And one thing that really struck me in one of our early calls is you talked about the standard is different in different industries. So I think this is pretty obvious for businesses that are clearly local. So for example, here in Berlin for a few years it shut down, but there was a restaurant near my house called Muse, and presumably they weren’t worried about. Even another restaurant in another city with that same name, for example. And similarly that any kind of local business you’re really worried about the people who are near enough to you to know who you are, do business with you, transact, a part of the nature of technology business, you know, you put an app in the Apple App Store and you’re instantly available in almost every country in the world where you put something on the internet and you’re instantly available everywhere, so you’re sort of little tiny just got started product is now essentially competing in the global namespace. So that makes things way harder, although perhaps that’s balanced out by it seams, and you tell me if I’m remembering this right, but it seems like the various trademark authorities in different countries know that and actually apply a different standard to, for example, a piece of software or an app than they would say, fashion. Do I remember that correctly? 00:34:10 - Speaker 1: Yeah, for the most part, so one of the things we talk a lot about when we’re looking at how clear a particular trademark is is how diluted is that word in a particular industry as well. So, the thing about clothing brands or fashion brands is that that is one category of trademarks that probably receives more applications than any other in any given year because of the low bar to. Part of a clothing company. I mean, you know, you or I could go online and theoretically start a clothing company in 20 minutes. The bar to starting a software company and having an actual software product to sell is much higher, so you have fewer applications coming around that than you might the clothing category. So, if you look at a trademark search that you would do around a fashion brand, you’re probably gonna find Let’s say a couple dozen trademarks that might look really similar, but yours is just different enough that you can kind of thread that needle between every other one of them because so many already coexist in that space. Whereas if you come into a category that’s less traffic and there’s only one other name that’s similar to yours, the government, at least in the USPTO’s case, you know, when they’re doing a review of your trademark application. They’re gonna have a lot harder time approving your application if there’s only one other trademark in your space that uses a similar name as opposed to having 20 other trademarks in your space that might have a similar name. 00:35:28 - Speaker 2: And what is the standard for customer confusion? So this is certainly a lot of what we’ve done in crafting our various applications is describing what the software is, or I suppose, I guess what the product is, but how that relates to the trademark, because it seems fairly obvious to me that for example, I don’t know, there’s a web browser or at least was one called Mosaic, and there’s also an investment firm called Mosaic, and actually I’ve seen other companies and open source projects and things. It’s, it’s just like that’s a good name. A lot of people have used it, but to me there’s no risk of confusion between a tech investment firm and a web browser, but you could say they’re both in the software business. Where do you draw the line and what’s the standard for differentiating there? 00:36:12 - Speaker 1: And that’s what makes trademark law challenging and exciting at the same time, which is that there’s normally not a case that’s been decided on the particular point that you’re looking at. Like you said, would an investment firm and a software browser be similar? I mean, the instinct that I have would be, no, they wouldn’t be. But then you get other examples you’re like, well, what about this and this? And you’re like, well, that’s closer to the line, right? And so there’s this sort of imaginary line that we’re dealing with as to when does something get too close to it. And that is why there’s litigation in this world, right? That is why there’s lawsuits because people disagree about what the line is and how close you can come to it. I also love the examples of, you know, you have Delta Airlines and you have Delta Faucets, you know, faucet maker, you have Dove soap and Dove chocolate, you know, you can reuse names in different industries, but then the question becomes, you know, how close can you get? One example that I can think of is Beer, wine and spirits are typically considered to be very closely related from a trademark analysis. Although from a consumer perspective, if you’re buying these products, you’re likely in different aisles in the supermarket or in whatever store you’re buying the product, right? You don’t normally buy a vodka off of the same shelf you’re buying a Pinot Noir from. And so the question is why couldn’t a wine and a spirit have maybe similar the same name. And coexist peacefully in the marketplace. I think they probably could, but there’s a lot of case law and a lot of decisions that have been made out there that says, no, these are all very highly related things and you can’t coexist. So sometimes you have a developed area of law because people have litigated it, and other times you’re in industries where people just haven’t litigated it yet and there’s not really a clear answer to the question of whether or not these two things are considered too close. 00:37:55 - Speaker 3: And is there any underlying statute here, or is it just pure case law? 00:38:00 - Speaker 1: Well, the underlying statute in the United States is called the Lanham Act. If you want to look it up, it’s L A N H A M and then Lanham Act. That’s where it kind of talks about the fact that if consumers are confused, you’d have trademark infringement. So if you’re litigating a case, one of the things you typically do is you convene a poll or a study, and you actually go out and scientifically interview consumers and see if there’s any confusion. And these things can cost like 500,000 to $100,000 to run, so I mean, they’re really expensive type of project, but you know, large corporations do them when they’re litigating these cases. So you have that baseline statute, but then, as to your point, the case law is what develops kind of these finer points, which is, are beer and wine too close? Is a clothing brand and a jewelry brand too close, you know, and all these types of questions that get asked, this is where the case law sort of develops and and tries to provide some guidelines as time goes on. 00:38:58 - Speaker 2: I wonder if the software industry is harder or maybe just more confusing from a regulator perspective because it is still new enough, that’s something that’s often not well understood by people who are not in the industry. I certainly run into this all the time with just explaining what I do to friends and family, very smart, educated people, but it’s just if you’re not pretty deep in the software world, you may not know the difference between Certain categories of productivity software versus B2BAS versus infrastructure versus medical software versus something else. So I wonder how much, you know, obviously the folks working in the trademark office, they are dealing with all varieties of business and if you come in and say, Well, no, you know, this piece of software is an app store, and this other piece of software that I’m registering for is a health tracker, and those are just completely different and there’s no risk of confusion, but maybe to the person in the office that it’s sort of like hard to tell the difference. 00:39:56 - Speaker 1: Yeah, so there actually this case law out there that talks about that two software products could certainly coexist with the same name in different industries. So there’s at least a recognition in the law that just because it’s a software doesn’t mean that you’re in the same industry, because at one point that was the problem that was occurring is that everybody was lumping software into the same category. 00:40:15 - Speaker 2: Now that’s actually a really good point, which is the software industry, I mean. We say that all the time. We talk about being in the software, but like it’s really software and the internet is part of everything now. So there isn’t exactly an industry. There are practitioners like us that have skills around it to build careers in technology broadly, but really when you talk about industry in the sense of serving a particular set of customers' needs, software is a means to an end. It’s not a category of thing a customer is buying. 00:40:40 - Speaker 1: You’re 100% right, and then the law started to recognize that, but where there’s still a challenge, and this is why you’d sometimes have what’s called expert testimony at a trial, is that understanding the nuance sometimes between what is really related and what is not, is really, really hard for people that are not in the industry to get their heads around, right? And so you might have a software that tracks health data. And then you might have another software that tracks or that is related to like a hospital system and how it’s tracking patient data and the government thinks that those are related, but one’s really a consumer product and one’s a product for a hospital, and those are again, two very different channels of trade we would call it. So you have those things that can be really hard for a trademark office or a court to really Get into the finer details and lines if they’re not super obvious, and again, that’s where you get expert testimony and things like that involved, but that is also why people run into trademark problems because there is still this really difficult way of trying to parse out what industry are you really in once you’re in that software category. 00:41:43 - Speaker 2: And then presumably that’s also part of your job is to explain it, to bridge the gap, you know, we went through this process which is I’m explaining what it is we do, and by the way, early stage products, especially things that come out of a research world like us, like it’s actually hard to even explain what it is that you do in the beginning. This is part of the nature of kind of yeah, early stage work generally is you’re developing a way to talk about what it is you’re doing, you’re pursuing an intuition to a product vision and you have a Message or a position or whatever you want to call that early on, but it’s often kind of wrong and you evolve it over time as you better understand the problem you’re solving for customers. But then your job is to listen to this early, very raw description. We’re still figuring it out as we go along and then translate that into something that a fully non. Software world person could hopefully make sense of. So certainly, you know, we can’t talk about tools for thought in our application. That’s not going to make sense to someone here you need to talk very about, you know, really well established patterns and maybe also about the customer who’s the person that actually buys this because maybe that’s one of the more relevant things here. 00:42:56 - Speaker 1: We have inside jokes as trademark attorneys, you know, and one of the biggest ones is when you’re talking to a client and they’re throwing all the industry jargon at you to try to explain what they’re doing and you’re just like, You spend 20 minutes listening to somebody and you have absolutely no clue what product or service they’re providing to people, and I will be on the phone with someone and I will be kindly as I can try to say to them, look, you gotta stop using the jargon and just explain to me like I’m an idiot, you know, what this is, because I have to be able to really get my head around what you’re doing to write the language for the trademark application and I will actually tell you this, I kind of use it as a test when I’m working with a client, like our clients that end up running the best businesses can articulate very clearly to someone not in their industry, i.e. me, what it is that they’re doing, and folks that just spill the jargon out and can’t get away from that, I find really struggle because I just don’t think that they relate to folks that are not doing that one very specific thing that they’re doing, and that becomes a problem for them at some point in their business. And that’s just something I’ve noticed over the years. I’ll have younger associates at our firm called me up and say, I just got off the phone with this client and I have no idea what they were saying. They didn’t want to interject and tell the client they didn’t understand, and part of my training is always you have to do that because that is our job is to understand and if they’re saying it in a way that you don’t understand, like you just have to be very blunt about that. 00:44:17 - Speaker 2: That’s something I believe in in general, which is I always take as inspiration some of these great scientists who are able to explain things like electromagnetism or relativity or something like that in a way that is accessible to potentially anyone whether or not you have their training. Now obviously you’re leaving out a lot of important. Detail that people in the field need to be able to actually work with it, just the high level conceptual pieces, but it’s something I’ve always struggled with in my career in music actually is probably one of the easier ones in some cases, something like Hiroku that was infrastructure software where if you are a web developer and you need this product, you understand. What I’m saying, and I do lean on jargon because that’s the easiest thing when I’m speaking to my customer, because they want to hear the jargon because they’re in the field and they know it and this is a good way to communicate. 00:45:04 - Speaker 1: We love jargon as lawyers too, we have our own language, yeah, yeah, and clients will complain about that too, like I don’t know what you’re talking about, you know, it’s yeah yeah for sure, yeah, jargon gets a bad name sometimes. 00:45:12 - Speaker 2: But I think of it as a highly efficient and precise way to communicate between people who are in a very specific, yeah, line of work, or even endeavoring under a very specific project, yes, and that can be extremely useful and valuable versus the more like, kind of general purpose explainer. But if you cannot bridge the gap to the general purpose explainer, I think that’s a weak point that’s worth addressing just kind of philosophically in life in general. 00:45:43 - Speaker 1: Completely agree. That’s a great way of putting it. 00:45:47 - Speaker 2: The one thing you hinted at earlier that I found to be an interesting part of the process is just putting in the trademark application triggers, I don’t know the right way to put it, but it goes into a public database. This is something where anyone who wants to get notified, I don’t know how the system works exactly, will find out that you’ve filed this application and Actually, I quite liked this because at the beginning when we were looking at this very high risk word to register, what I didn’t want to do is embark on a multi-year potentially somewhat expensive in terms of attorney fees journey just to get to find out that there’s some major firm that is in our field or very close to it that basically is going to be really upset that we’re doing this, and we might not discover that until further along in our business. And so I liked the idea that by just filing the application, we would bring people out of the woodwork who would object to us using this name and we could look at who those people were and kind of make our own judgments of, oh, OK, this is really worrying versus hm, I don’t know, this one, it’s a brand new startup, they’re kind of not even really working on the same thing. Who knows if they’ll even be around in a few years. OK, I’m pretty comfortable with that risk. Can you tell me about how that kind of notification The system works. 00:47:03 - Speaker 1: Yeah, sure, and it’s different country by country. So, for example, in the United States, when you file a trademark application, no one’s ever gonna notify another party that you might be in conflict with. The only thing that will happen Is the US Patent and Trademark Office might actually deny your application because of these other trademarks, but they’re never gonna notify these other folks. What you can do though, in the US, and there’s plenty of software options for this, is that you can set up a watching service so that any time your trademark is used as a reason to deny a new application, you can be notified. You can also be notified just based on an algorithm, you know, if somebody files something that’s similar to your trademark to trigger a notification to you. The interesting thing about the trademark office, at least from a government perspective, is it’s the most government 2.0 out there in the sense that the data is publicly available and can be downloaded every single day. We actually have a section of our website that you can go to. And it pulls every day from the trademark database, filings from big companies, celebrities, sports figures. So if you’re curious to see what trademarks LeBron James owns, you can come to our website and see as of today what trademarks he’s filed and owns, you know, with the USPTO and we have a back end, basically like API that goes in and pulls that data every day. So you have a bunch of software companies that have taken advantage of this data that’s available and can push these notifications to you, like one of the services we use. I get an email on any client we’re monitoring their trademark on every month that shows me what trademarks have been filed lately that might be too close to theirs. And then I can go through and determine, of course, the algorithm pulls things that aren’t relevant, but I can go through that and determine what things the client should be aware of and notify them and see if they want to take any action. So that data that’s out there is really valuable and like you said, you actually have a unique view on it, Adam, because Most of our clients are very scared that somebody’s gonna see this and send them a letter. You are more like welcoming it and saying, hey, this would be great if we can get any objections out of the way. And so that’s a very refreshing way to look at it, but a lot of people are actually scared of that process and really get nervous if they get a letter. But to your point, most of the time getting letters is the start of a conversation, it’s not the start of a lawsuit or something like that. Now, the difference here is where you are in the world. So if you go to Europe or the UK when they review a trademark application, they don’t just refuse your application. As a matter of fact, they won’t. They’ll just tell you, hey, we saw that there’s a couple other trademarks that are similar to yours, and we’re gonna notify those owners about your application directly and they’ll have an opportunity to lodge an objection. And if they lodge an objection, then that stops your application, but if they don’t, we’ll register it. So, in those countries, It becomes the onus of the trademark owner to actually spend time and money to oppose an application they get notified about by the trademark office. So it’s a really interesting and very different fundamental process than it’s here in the United States. But that is, again, yes, you’re right, by filing an application, that’s how you will draw fire is by one of those two ways. 00:49:59 - Speaker 2: You know, I guess this comes from the, or my perspective on this comes from the thinking of general like you know, startup or early stage or risky ventures, which is your goal is to kind of de-risk, to use some jargon, de-risk some, you know, the biggest questions and the biggest things you’re worried about. A lot of times that’s the technology, but it might also be the market. It’s part of your job as the creator or founder or whatever is to sort the list of things that would be catastrophic, you know, for your business, i.e. their fundamental assumptions and de-risk those as early as you can. You want to find out if it’s going to work before you do a deeper investment. And so for me, I knew the muse, because it’s this short English word, could be tricky. So before we spent a lot of time investing in Brand equity, as you called it earlier, I wanted to know how likely was it that 2 years on, we would need to like do this big rebrand. And so, there’s always a risk of that, I suppose, but to me it created more confidence to basically send the mind-seeking robot out into the minefield and see what explosions happened that created more comfort for me to step out into the minefield. 00:51:07 - Speaker 1: And you’ve seen the explosions at this point, right? You know what you’re dealing with, and there is a lot more certainty around where you are with the name and what the path forward looks like. And I think that that is something that not only is valuable to you, but would be valuable to investors in your business or eventually an acquirer of the business, right? So, I would say if you’re going to use a name, file the trademark applications because people will get a search back and there’ll be some trepidation and say, I see risk here, what do I do with this risk? And I’ll say to them, well, you have two options. You can change the name and try to get a lower risk situation, or if you’re gonna use the name, we file the application and be aggressive about trying to acquire the registration because once you acquire the registration, you make it much, much more difficult for somebody to challenge you and especially you make it almost impossible for someone to challenge you once you get out to 3 or 5 years down the road of having this registration because of the way the law works. So, absolutely, even though there’s risk, going out and securing and doing everything you can to secure registrations actually lowers risk over time, and that’s why you do it. And I think you articulate that great in your example and how you think about it. 00:52:12 - Speaker 2: One other note here is that I do really think of this as a defensive activity. I certainly in no world want to be in the business of suing anyone over their name being too similar to ours, but what I am keenly aware of is that it is the reality of being on the internet in this day and age that when things seem to be a success, people copy them. It’s software is in some ways. I don’t want to say it’s easy to copy, but let’s say in some ways it’s easier to do that and perhaps even fairly anonymously, and I’ve seen lots of great businesses and great products that have to deal with copycats or in some cases wholesale copying of their website or other things like that, and it’s harder to fight back against that. So for me it’s very much of a defensive thing. And that makes me think to some degree of other kinds of intellectual property and so software patents, which are a very contentious topic for software engineers but nevertheless are a thing that exists and you look at companies like say Google or Apple or Microsoft, they have these huge patent portfolios, but as near as I can tell they mainly use it as kind of a Mutually assured destruction style deterrence, which is, you know, because Microsoft has such a huge portfolio of patents, Google is not going to sue th
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