On June 30, 2020, the U.S. Supreme Court (the “Court”), in an 8-1 decision, affirmed the Fourth Circuit’s holding that “BOOKING.COM” is a protectable trademark, thereby rejecting a sweeping rule that a protectable trademark cannot be created by adding “.com” to an
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 3
After Almost 20 Years of Litigation, “Lucky” Finally Gets Lucky
On May 14, 2020, the United States Supreme Court held in Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., that a party is not precluded from raising new defenses, when a subsequent lawsuit between the same parties…
The Parameters of Generic Marks: Booking.com before the Supreme Court
The Lanham Act (“Act”) makes it clear that generic terms cannot be registered as trademarks. But can an online business create a protectable trademark by adding a generic top-level domain (e.g., “.com”) to an otherwise generic term? The Supreme Court…
2(b) Prohibition On “Flag Marks” Bars Use of Flag as Part of a Mark
By Ira S. Sacks
In a recent precedential decision concerning the rarely litigated or cited Section 2(b) of the Lanham Act, the Trademark Trial and Appeal Board affirmed a refusal to register the service mark:
for tourism services on the ground that the mark…
States Cannot Copyright Annotated Versions of Legal Codes
On April 27, 2020, the United States Supreme Court held, in Georgia et al. v. Public.Resource.Org., Inc., in a 5-4 decision, that copyright law does not protect annotations contained in the official annotated compilation of Georgia statutes.
As explained in our…
Willfulness Is Not Required for Awarding Profits in Trademark Cases
On April 23, 2020, the United States Supreme Court held in Romag Fasteners, Inc. v. Fossil Group, Inc., FKA Fossil, Inc., et al., that under the Lanham Act, a plaintiff is not required to show that a defendant willfully violated plaintiff’s…
Will the COVID-19 Pandemic Impact Your Ability to Secure an “Incontestable” Trademark?
Section 15 of the Lanham Act, subject to certain specified exceptions, provides that the right of an owner “to use [a] registered mark in commerce for the goods or services on or in connection with which such registered mark has…
Federal Circuit Colors Outside the Lines with a New Shade of Multi-Color Trademarks Protectability
On April 8, 2020, the Federal Circuit Court of Appeals (the “Federal Circuit”), in In Re Forney Industries Inc reversed the Trademark Trial and Appeal Board (the “Board”) and held that multicolor designs may be inherently distinctive when used on…
Adjustments to Copyright Act Timing Provisions for Applicants Affected by COVID-19
By Ira S. Sacks & Blog Admin
On March 27, 2020, the President signed into law the Coronavirus Aid, Relief, and Economic Security (CARES) Act, which added § 710 to the Copyright Act. § 710 explains that if the Register of Copyrights determines that a declared…
The Final Revenge of Queen Anne’s Revenge: State’s Use of Photographs Is Not Piracy
On March 23, 2020, in Allen v. Cooper, the Supreme Court held that Allen, who spent over two decades, photographing the shipwreck of Queen Anne’s Revenge, better known as the flagship for the pirate Blackbeard, cannot sue the State of North…