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Authors: Matthew D. Asbell, Cassidy Merriam | Category: , | Tags: , , , ,

U.S. Supreme Court: Trademark Tacking Should Be Determined By the Jury

On January 21, 2015, the U.S. Supreme Court, in a unanimous decision written by Justice Sonya Sotomayor, issued its first trademark ruling in more than a decade. The Court held that “trademark tacking” is a factual issue properly determined by a jury, rather than a judge, because the determination relies upon the perspective of the ordinary consumer. Hana Financial, Inc. v. Hana Bank, 135 S. Ct. 907 (2015). This may impact litigants’...

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American Broadcasting Co. v. Aereo and its Aftermath

The U.S. Copyright Act in 17 U.S.C. § 106 specifically gives copyright owners the exclusive right to control “performances” of their works. 17 U.S.C. § 101 defines public performance as including “transmission” of the work. In 17 U.S.C. § 111, the Act also exempts from this exclusivity certain types of retransmission, including compulsory licensing of certain cable systems. Aereo's legal problems have highlighted how these...

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Requirements for Recordal of a U.S. Federal Trademark Registration with U.S. Customs & Border Protection

Owners of U.S. Trademark Registrations may record their registration with U.S. Customs in order to prevent the importation and subsequent sale of counterfeit and/or infringing goods. In order to do so, the registrant must provide the following details: Country of manufacture of goods bearing the genuine trademark. Is the trademark owner a U.S. citizen (corporate or personal)? If not a U.S. citizen, provide the citizenship of trademark...

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TTAB’s Washington Redskins Decision: the Enforceability and Commercial Impact of Cancelled Trademarks

The cancellation of a U.S. trademark registration on any grounds, including disparagement, does not always mean the end of enforceable rights in the mark. However, cancellation may create both legal and financial repercussions in the United States and abroad, as illustrated in the recent case of Blackhorse v. Pro Football, Inc. The recent cancellation decision included registrations for “REDSKINNETTES,” two “REDSKINS” marks, and three...

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Abstract idea not converted to patentable invention by performance on a computer; Must be applied in an inventive manner

Introduction Background The Supreme Court's Decision Abstract Idea Something Extra Conclusion Introduction In a unanimous decision on June 19, 2014 authored by Justice Thomas, the Supreme Court  in Alice Corp. v. CLS Bank Intl. held that an abstract idea did not become patent-eligible simply by performing that idea on a computer. In doing so, the Court held that to convert an unpatentable abstract idea or natural law into a...

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TTAB upholds mere descriptiveness refusal to register Swatch’s TOURBILLON mark

By Dennis Prahl and Cassidy Merriam In In re The Swatch Group Management Services AG (Serial No 85485359, April 18 2014), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has affirmed, on the ground of mere descriptiveness, a refusal to register the mark TOURBILLON (and design) by The Swatch Group Managements Services AG for “jewellery, horological and chronometric instruments” in Class 14 of the Nice...

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