Category Archives: Trademark/IP

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Supreme Court Strikes Lanham Act’s Disparagement Clause; Near-Term Effect Uncertain in Light of Other Viewpoint Based Prohibitions

The U.S. Supreme Court ruled unanimously on June 19, 2017 that the Lanham Act’s disparagement clause prohibiting federal registration of “disparaging” trademarks unconstitutionally limits free speech in a case involving a band named “The Slants.” The near-term effect on trademark applicants, however, is in question due to other viewpoint based prohibitions that were not ruled … Continue Reading

Copyright Considerations for using Emoji in Commercial Ads

Given the ubiquity of emoji, businesses have used them in commercial ad campaigns. Honda has used emoji in creative advertisements, releasing Aprils Fools’ ads in 2016 and again in 2017. Twentieth Century Fox created some buzz last year when it placed a billboard in Los Angeles advertising a movie release (guess which one) with the … Continue Reading

Golden Rules: Counterfeits and the Olympics

Demand for Olympic merchandise in the United States is resurrected every 4 years by the fervor of the televised Games. Officially, authorized and licensed gear is readily available in stores and on the Internet; however, every iteration of the Games brings with it a flood of counterfeit Olympic goods as well. The broadcasting of this … Continue Reading

Golden Rules: Lowering the Uneven Bars on Likelihood of Confusion

With the opening ceremony for the Rio 2016 Olympic Games less than 1 month away, Olympic sponsors and non-sponsors alike are thinking about how they may be able to capitalize on the event’s popularity. Brands must, however, beware of using Olympic trademarks (as discussed in our previous blog post, Golden Rules: Wrestling with the Use … Continue Reading

Practical Tips for Clearing Intellectual Property Rights in Your Advertisements

When launching any type of marketing, advertisers should be on the lookout for potential Intellectual Property (“IP”)  claims, in addition to potential exposure based on advertising-related laws.  This is often referred to as “IP Rights Clearance.”  Some of our previous blog posts have discussed various lawsuits and court decisions that underscore the importance of IP … Continue Reading

Website Owners: No Safe Harbor from Copyright Liability for Infringing Content Posted by Third Parties on Your Site If You Are Not Following DMCA Formalities

Did you know that, under the U.S. copyright law, if a third party uploads or posts copyrighted material to your website, and the third party did not have authorization to do so from the copyright owner or exclusive licensee of that material, your organization can be held strictly liable for copyright infringement as the operator … Continue Reading

3D Printing Series: Can You Put my Boyfriend’s Face Inside That Pizza?

We are entering a brave new world of food design and regulation brought to us through the mechanical development and visual artistry of 3D printing. As with any new medium, understanding what we confront and its regulation lag behind the medium’s implementation. 3D printing, also referred to as “additive manufacturing” or “rapid prototyping,” is the … Continue Reading

3D Printing Series: Before You Click “Print” On Your Pizza, Palette or Prosthetic: FDA and IP Considerations With 3D-Printed Foods, Cosmetics And Medical Devices

We agree – the Jetsons era has indeed arrived. Beyond the days of “smart” everything, now 3D printing has taken center stage in the tech world. While it is not so farfetched to imagine 3D-printed machine parts, prototype models, or even toys, it is might be harder to watch it printing foods, implantable medical devices, … Continue Reading

Venable LLP “Cause We Never Go Out of Style”: Or, Litigating a Trademarked Phrase

Once again, we have Taylor Swift to thank for inspiring a blog. In the past few weeks the news has featured Ms. Swift’s decision to trademark various phrases, such as “This Sick Beat,” “Nice to Meet You. Where You Been?”, and “Cause We Never Go Out Of Style.” A recent case out of the Southern District … Continue Reading

The Battle of the Two Flanax’s and the Power of the Mexico-United States Border

There are two Flanax’s.  Belmora LLC (“Belmora”) distributes Flanax, a brand of pain relief medicine, in the United States while Bayer has distributed a brand of pain medicine, Flanax, in Mexico for decades.  Bayer sought to cancel Belmora’s registered trademark for Flanax in the Trademark Trial and Appeal Board (“TTAB”).  Bayer won in that venue. … Continue Reading

Beastie Boys Win $1.7 Million Verdict, Underscoring the Importance of Clearing IP Rights

Launching an advertisement, production, or publication without obtaining the necessary third-party intellectual property (IP) rights can have costly consequences. A jury recently awarded the Beastie Boys and related plaintiffs $1.7 million in a lawsuit against Monster Energy for using Beastie Boys music and references to the Beastie Boys in a promotional video on Monster’s website … Continue Reading

Redskins Will Get Their Day in the “Rocket Docket” Court

The federal district court in Alexandria, Virginia denied a motion to dismiss the Redskins trademark case, making it clear that the “Rocket Docket” is open for business and ready to hear cases brought by parties who are dissatisfied with decisions made by the Trademark Trial and Appeal Board (TTAB).  Pro-Football Inc. v. Blackhorse, 14-cv-01043, U.S. … Continue Reading

Your Websites Terms of Service are Unenforceable

The vast majority of Terms of Service (TOS) on websites are unenforceable. Companies spend a great deal of time and money in crafting what they believe to be appropriate website specific TOS which they hope will provide them with the various protections, safe harbors and advantages needed in dealing with the public or in transacting … Continue Reading

Duke U. Scores Win Against The Duke

We reported on July 16, 2014 that John Wayne Enterprises, LLC (“JWE”), the entity owning the rights to the name, image, and likeness of John Wayne, a.k.a. The Duke, had sued Duke University in California federal court to protect JWE’s right to market alcohol products with the mark “Duke” or “Duke John Wayne.”  Duke University … Continue Reading

Registration v. Application: Is the Battle Over?

I was attending the recent annual meeting of the Copyright Society of the USA and listening to a presentation by the always eloquent Maria Pallante, the Register of Copyrights, when she made a comment that startled me regarding a controversial issue.  The issue being whether one must have a registration or simply a pending application … Continue Reading

Venable LLP’s 2014 Intellectual Property Symposium

Our colleagues in the Intellectual Property group have an upcoming event in Washington DC that we’re so excited about that we just can’t help plugging it here. Venable is sponsoring a half-day IP- law symposium on Wednesday, September 10 at our Washington DC offices. Our Venable colleagues who are experts in areas such as trademarks, … Continue Reading

Using Copyright to Protect Your Brand’s Characters

In advertising when one says “Brand Protection”, they instinctively think of trademark protection.  An often overlooked tool is copyright protection.  If in advertising you have developed a “character” (think Progressive Insurance’s “Flo” character or Haverty’s “Emily”) or have an object (think Geico’s Gekko or the Batmobile) that is essential to your advertising campaigns, under the … Continue Reading

Advertisers, Don’t Get Caught in the Cold with the SuperBowl, the Olympics and March Madness: Pay Attention to Trademarks!

As we shiver and bundle up against the Polar Vortex here in DC, we are fast approaching the biggest event of the advertising year—the Super Bowl®—held for the first time in the wintry conditions of New Jersey).  With the Olympic Games® in Sochi, Russia after that, and March Madness® following soon thereafter, February and March … Continue Reading
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