playing with VelcroWant to be a trademark lawyer? Well, you might need to have a creative streak.

In recent weeks, at least two major brands have used attention-grabbing strategies to protect their trademarks while raising awareness about the unauthorized use of their intellectual property. And these efforts are generating more than a little buzz.

The Velcro Companies released a video, “Don’t Say Velcro,” in which an ensemble of dancing, singing trademark attorneys implores consumers not to use the Velcro brand’s name as a generic noun or verb to describe a product with “hook and loop” fasteners, or those “scratchy, hairy fasteners” that you find on Velcro shoes, gloves, and wallets. The video, which features mostly actors, but a few real lawyers, is part of a larger campaign designed to educate consumers about the brand and the proper use of its name.

Continue Reading Trademark Law Gets Creative

As we previously reported here on March 25, 2014 the United States Supreme Court issued its much-anticipated decision in Lexmark Int’l Inc. v. Static Control Components, Inc The decision resolved a three-way Circuit split, rejected the test in the Seventh, Ninth and Tenth Circuits that the plaintiff and defendant had to be direct competitors, and articulated a new test for standing to bring a Lanham Act false advertising claim – a plaintiff must be in the “zone of interest” and must have injuries proximately caused by the defendant’s false advertising.

The other recent landmark Supreme Court decision in this area is of course POM Wonderful LLC v. Coca-Cola Co., which we also previously reported on here.  That case held that competitors could bring suits under the Lanham Act challenging food and beverage labels that were regulated by the Federal, Food, Drug, and Cosmetic Act (“FDCA”) and complied with those regulations—in other words, the FDCA does not preclude claims under the Lanham Act, at least in the area of food and beverage labeling.

Lower courts are already recognizing that Lexmark and POM Wonderful have broadened the scope of Lanham Act litigation between competitors, and in fact are applying Lexmark and POM Wonderful beyond the realm of false advertising. 
Continue Reading A Whole New Lanham Act? A Look at Lexmark and POM Wonderful in Action

Katherine Heigl, a star of the television series Grey’s Anatomy and films like Knocked Up and 27 Dresses, recently made non-TMZ headlines when she sued drugstore chain Duane Reade for $6 million dollars for posting a photo of her to its Twitter and Facebook accounts, accompanied the text “Love a quick #DuaneReade run? Even @KatieHeigl can’t resist shopping #NYC’s favorite drugstore.” Here’s a copy of the Twitter post that has caused such a stir:

heigel

What’s the problem, you ask? In a time when celebrities regularly post photos of their daily lives to public Twitter accounts and selfies dominate the social media space, what’s the big deal with a company posting a paparazzi photo of a celebrity that no doubt was already available in the public domain? The problem, according to Ms. Heigl, is that Duane Reade used the photograph for its own commercial advertising without her permission, exploiting Ms. Heigl’s celebrity status for its own commercial gain.  This conduct, according to Ms. Heigl’s complaint, is a violation of the Lanham Act, her right of privacy and publicity under New York Civil Rights Law, and New York unfair competition.

Continue Reading What’s in a Name? Dollars – At Least When You’re A Celebrity

The Supreme Court of the United States of AmericaYesterday the Supreme Court issued its decision in Lexmark International, Inc. v. Static Control Components, Inc., a case that presented it with a three-way Circuit split on the issue of who has standing to bring a Lanham Act false advertising claim.  Before this decision, the law in the Third, Fifth, Eighth and Eleventh Circuits was that the plaintiff had to satisfy the five-factor test articulated in Associated General Contractors, an antitrust case.  The Seventh, Ninth and Tenth Circuits used a bright-line test, allowing plaintiffs to bring false advertising suits only against actual competitors.  The Second and Sixth Circuits adopted a “reasonable interest” test (an amici favorite) that looked to whether the plaintiff had a reasonable interest to protect and a reasonable basis for believing that interest was being impaired.

Justice Scalia wrote the opinion for a unanimous Court.  In typical Scalia style, he applied “traditional principles of statutory interpretation” to discern not “whether Congress should have authorized [the plaintiff’s] suit, but whether Congress in fact did so.”  And in another familiar move, Justice Scalia rejected all three tests applied by the Circuits in favor of his own.  In a Goldilocks moment, he found the antitrust standing test a “commendable effort” (high praise!) but “slightly off the mark,” the direct-competitor test a “distort[ion] of the statutory language,” and the reasonable interest test vague and “lend[ing] itself to widely divergent application.”  What was just right?  A test that looks to: (1) whether the plaintiff’s interests fall within the “zone of interests” protected by the Statute; and (2) whether the plaintiff’s injuries were proximately caused by the alleged violations of the Statute.

What is the significance of the opinion? 
Continue Reading Supreme Court Issues Much Awaited Decision in Lexmark Case

The Federal Food, Drug, and Cosmetic Act and the Nutrition Labeling and Education Act of 1990, along with all of their corresponding regulations, create a complex and uniform system of food labeling requirements.  Neither of these statutes provides for a private right of action, but more and more consumer class action and other claims are being brought, under both federal and state law, based on alleged violations of federal food labeling regulations.

This intersection between federal food labeling regulations and private suits has forced courts to consider complicated questions of preemption and statutory interpretation as well as the proper balance of authority between the federal courts and the FDA.

Two recent opinions provide a glimpse into how the courts are currently grappling with these issues.
Continue Reading Not an Easy Recipe – Courts Struggle with the Intersection of FDA Food Labeling Regulations and Private Causes of Action