Perspectives on Trademark

In this video episode of Fashion Counsel, Arent Fox Partners Anthony Lupo and Dana Finberg talk about trade secret basics, including how they differ from patents and how to define it in the eyes of the law.

For the second time this year, Arent Fox LLP is pleased to announce the expansion of its internationally recognized Intellectual Property practice in New York with the addition of Michelle Mancino Marsh.

Clients often ask whether—and, if so, when—they must use the ® and ™ symbols, or other forms of attribution, when using another company’s trademarks.

Businesses must constantly adapt to technological advancements in order to remain competitive in a fast-paced digital economy. Consider, for example, the music or computer industry—a company founded in 1980 will be offering very different products and services today than it did at its inception.

A federal judge in the Southern District of Ohio recently issued a temporary restraining order in a dispute between the National Association for the Advancement of Colored People (NAACP) and former members of the now-inactive NAACP, Cincinnati Branch (“the Cincinnati Branch”).

Jawbone and Fitbit, both billion-dollar leaders in the “wearable” technology category of fitness bands, are warming up for what may become a test of legal endurance.

Law360 recently quoted Fashion Law leader Tony Lupo after Michael Kors joined several other luxury fashion companies in taking a new step in fighting widespread counterfeiting by targeting landlords who facilitate the trademark infringement.

Rockwell Automation, Inc. (Rockwell), a leading industrial parts manufacturer, recently sued industrial parts distributor Radwell International, Inc. (Radwell), alleging numerous violations of the Lanham Act.

A federal judge in the Eastern District of Virginia recently upheld the Trademark Trial and Appeal Board’s (TTAB) decision to cancel six trademark registrations held by Pro Football, Inc. related to the Washington Redskins football team.

Arent Fox LLP served as counsel to Golden 1 Credit Union in the historic naming rights partnership agreement with the National Basketball Association’s Sacramento Kings.

The Court of Appeals for the Federal Circuit (Federal Circuit) recently reversed the Trademark Trial and Appeal Board’s (Board) refusal to register the mark PRETZEL CRISPS on the grounds that the mark is generic for pretzel crackers.

In an unpublished opinion filed on May 8, 2015, the US Court of Appeals for the Eleventh Circuit sent trade secret owners a strong reminder of the important role written confidentiality agreements play in protecting valuable intellectual property.

On April 16, 2015, the Virginia Supreme Court threw out a contempt citation against social media company Yelp, Inc. (Yelp) in a closely watched case involving anonymous free speech rights on the internet.

In a recent non-precedential decision, the Trademark Trial and Appeal Board ruled that the fast food chain Del Taco, Inc. (Del Taco) no longer enjoys trademark rights in the NAUGLES brand associated with Naugles, Inc., a California-based fast food chain that Del Taco acquired in the late-1980s.

Macy’s is currently engaged in litigation to regain ownership of multiple trademarks associated with Macy’s-owned department stores that are no longer in use.

In a precedential ruling, TTAB held that SMART BALANCE for frozen foods was not likely to be confused with SMART ONES for frozen foods in light of the weakness of the common term “SMART,” the differences in the marks, the 17-year peaceful co-existence of the parties’ marks, and more.

On March 24, 2015, the Supreme Court issued its much anticipated second trademark decision of the term, holding that US Trademark Trial and Appeal Board (TTAB) decisions concerning likelihood of confusion generally have preclusive effects in federal court.

In the non-precedential ruling, the Trademark Trial and Appeal Board (TTAB or Board) found that the marks “MASQUERADE” and “MASCARADE” are likely to be confused for different alcoholic beverages. In re 8 Vini, Inc., Serial No. 85857391 (January 16, 2015) [not precedential].

The alleged descendants of Aunt Jemima (a.k.a. Anna Short Harrington) do not have a valid claim to the great syrup fortune of Pepsi and Quaker Oats, according to a recent ruling by the US District Court for the Northern District of Illinois.

In a recent decision, the Federal Circuit clarified the “use in commerce” requirement for trademark applications filed in connection with the provision of a service.

Chambers Global: The World’s Leading Lawyers for Business has recognized Arent Fox’s Bankruptcy & Financial Restructuring, Intellectual Property, International Arbitration & Dispute Resolution, and International Trade practices in its annual worldwide rankings of top law firms.

There was good news for those companies that have products with unique designs at the US Patent and Trademark Office (PTO). The PTO found that the design of a monster truck could be protected and registered as trade dress for the “services” offered by the owner.

Arent Fox LLP secured a summary judgment on behalf of the sportswear manufacturer Fila against a website that was cybersquatting.

In a succinct eight-page opinion, the Supreme Court ruled unanimously last week that trademark “tacking” is a question of fact that should generally be decided by juries.

On January 16, 2015, Sens. Jerry Moran (R-KS) and Mark Warner (D-VA) introduced S. 181 (The Startup Act), which is meant to promote new business formation, especially in the information technology industry.