In June 2019, the United States Supreme Court granted certiorari in Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233. As set forth in our previous blog post, Romag Fasteners Inc. (“Romag”) seeks to have the Court resolve a longstanding circuit split on the issue: “[w]hether, 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),…

In June 2019, the United States Supreme Court granted certiorari in Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., No. 18-1086.  As set forth in our prior blog posts, Lucky Brand Dungarees Inc. and related companies (collectively, “Lucky”) seek a reversal of the Second Circuit Court of Appeal’s ruling that Lucky was precluded by res judicata from asserting a release agreement defense, which was not previously litigated or resolved between Lucky and…

In June 2019, the United States Supreme Court granted certiorari in Allen v. Cooper, No. 18-877.  The case presents a question “whether Congress validly abrogated state sovereign immunity via the Copyright Remedy Clarification Act … in providing remedies for authors of original expression whose federal copyrights are infringed by States.”  Plaintiffs filed their Opening Brief in August 2019.…

In a precedential decision involving the “doctrine of foreign equivalents,” the Board found no likelihood of confusion between the mark RICHARD MAGAZINE for a website in the field of fashion and lifestyle and the mark RICARDO for goods and services, including publications, in the culinary field.  Ricardo Media Inc. v. Inventive Software, LLC, Opposition No. 91235063 (August 21, 2019) [precedential] The doctrine of foreign equivalents directs the United States Patent and Trademark Office to translate…

The Federal Circuit upheld a Trademark Trial and Appeal Board (“Board”) decision refusing registration of an athletic apparel company’s trademark, holding that the trademark applicant waived its key arguments by not raising them before the Board.  Hylete LLC v. Hybrid Athletics, LLC (Fed. Cir. 2019)…

In a recent decision concerning the scope of protection for collective membership marks, the Trademark Trial and Appeal Board sustained The Pierce-Arrow Society’s opposition to registration of PIERCE-ARROW for “automobiles” by Applicant Spintek Filtration, Inc. The Pierce-Arrow Society v. Spintek Filtration, Inc., Opposition No. 91224343 (August 12, 2019) [precedential] A “collective membership” indicates that the user of the mark is a member of a particular organization. Fraternities often federally register their marks as collective membership…

The Trademark Trial and Appeal Board recently affirmed the refusal to register a trademark application for BIG SIX for wine on the ground that the term is generic or descriptive of wines. In re Plata Wine Partners, LLC, Serial No. 87292254 (August 22, 2019) [not precedential] Applicant filed an intent to use trademark application for BIG SIX for wine, which was initially refused on the ground that “Big Six” is a term of art in…