On August 23, 2022, the Trademark Trial and Appeal Board (“TTAB”) rejected on summary judgment JHO Intellectual Property Holdings’ (“Applicant”) application to register the mark “PURPLE RAIN” for a variety of nutritional supplements, dietary drinks, and energy bars (collectively, “Applicant’s
Marks, Works, and Secrets
Akerman Insights on the Latest Developments in Intellectual Property Law
The "Marks, Works, and Secrets" blog, published by Akerman LLP, focuses on intellectual property law, including trademark disputes, copyright issues, and trade secrets. It covers significant court decisions affecting trademark infringement, parody in trademark law, and the extraterritorial application of trademark statutes. The blog also addresses related topics such as fair use in copyright, liability issues for social media companies regarding content, and the intersection of intellectual property with commercial and expressive uses. It provides analysis of Supreme Court rulings and their implications for businesses and legal practitioners in the IP field.
Latest from Marks, Works, and Secrets - Page 2
Municipal Takedown: TTAB Refuses to Register the County of Orange Logos
The Trademark Trial & Appeal Board (“TTAB”) affirmed the US Patent & Trademark Office’s (“PTO”) refusal to register two different logo marks filed by California’s County of Orange (“County”) on the ground that they constitute insignia of a municipality.
In…
If Warhol Isn’t Transformative, Redux, In The Supreme Court
On March 25, 2022, the Supreme Court agreed to consider whether Andy Warhol’s “Prince Series” sufficiently transforms Lynn Goldsmith’s 1981 photograph of Prince (the “Photograph”) to qualify for the Copyright Act’s fair use defense.
As discussed in detail in our…
The Third Circuit Limits Preclusive Effect of the TTAB Rulings
On September 17, 2021, the Third Circuit held in Beasley v. Howard that trademark cancellation proceedings before the Trademark Trial and Appeal Board (“TTAB”) do not have claim preclusive effect against trademark infringement lawsuits in federal district courts because of…
If Warhol Isn’t Transformative, Who (or What) Is? The Second Circuit Finds Andy Warhol’s Prince Series Not Fair Use
On March 26, 2021, the Second Circuit reversed a 2019 district court ruling and held that Andy Warhol’s “Prince Series” did not qualify as fair use of Lynn Goldsmith’s 1981 photograph of Prince (the “Photograph”). The Court further concluded that the Prince…
What’s in a Name: SDNY Grants Preliminary Injunction Enforcing Contractual Bar Against Designer’s Use of Her Own Name
By Ira S. Sacks
In a fifty-seven-page memorandum opinion and order, the United States District Court for the Southern District of New York granted a fashion brand its motion for a preliminary injunction preventing its lead designer from using her given name commercially and…
Not All Domain Names Are Registrable, Even After Booking.com
By Ira S. Sacks
The question of whether a generic term combined with the .com gTLD extension could serve as a trademark was settled last July, when the U.S. Supreme Court ruled that the proposed trademark <booking.com> could not automatically be deemed to be…
Proud to Be an American, God Bless The USA, But Not Functioning as A Trademark
By Ira S. Sacks
In a precedential decision, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) affirmed the refusal to register the trademark GOD BLESS THE USA for home decor items on the ground that it failed to…
Slogans As Marks: When Does a Slogan Function as a Mark
By Ira S. Sacks
Slogans can, but do not always, function as trademarks. To be sure, the United States Patent and Trademark Office (“USPTO”) frequently allows slogans such as JUST DO IT! or QUALITY THROUGH CRAFTSMANSHIP, among many others, to be registered as trademarks.…
Lehman Brothers is Gone but Not Abandoned
By Ira S. Sacks
On September 30, 2020, the Trademark Trial and Appeal Board ruled in favor of the assignee of the famous LEHMAN BROTHERS trademark against the registration that mark as a brand name for beer, spirits, and bar and restaurant services, finding…