Trademark enthusiasts, hold onto your hats. The Trademark Trial and Appeals Board (TTAB) just got a bit of a promotion, compliments of the U.S. Supreme Court. On March 24, 2015, the Court released its decision in the long-awaited B&B Hardware v. Hargis Industries case, holding that TTAB findings of mark similarity can be preclusive in later federal proceedings as long as “the ordinary elements of issue preclusion are met.”  This ruling stands in direct opposition to the majority of recent federal precedent, and may dramatically increase the import of TTAB rulings in the coming years. In other words, the TTAB just got a lot more powerful.

What is this case about, anyway?

This case initially arose when Hargis Industries applied to register the trademark “SEALTITE” in the construction industry in 1996.  B&B Hardware opposed this application and simultaneously filed a trademark infringement lawsuit, asserting that B&B had previously registered the trademark “SEALTIGHT” in 1993. While B&B’s federal suit was pending the TTAB determined that Hargis’s proposed mark was confusingly similar to B&B’s mark and denied Hargis’s trademark application. As a result, B&B argued in its district court proceeding that the TTAB’s finding of mark similarity was entitled to preclusive effect in the court. 
Continue Reading TTAB Rulings Held Preclusive in Federal Court

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 process of making three-dimensional objects from digital designs. Two of the most common types of printers are “disposition printers,” which deposit layers of materials until the 3D object is built, and “binding printers” which build the object by binding, usually with adhesive or laser fusing, the underlying layers, to create a whole object at the end of the process.

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

3DPrinterWe 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, cosmetics, drugs and even human tissue. All too futuristic? Not really. The technology of 3D-print FDA-regulated products is, in large part, already here and rapidly progressing.

Yet, as technology continues to develop, questions arise as to whether, and how, the U.S. Food and Drug Administration’s (“FDA”) regulatory framework will keep pace to impose the same safety, quality and efficacy standards to 3D-printed foods, drugs, cosmetics, and medical devices that currently apply to traditionally manufactured goods. How FDA chooses to deal with 3D-printed products will significantly impact not only barriers to market entry, but also post-marketing enforcement risks. Similarly, even assuming an FDA-regulated 3D-printed product is successfully brought to market in accordance with FDA standards, manufacturers must still assess options and potential challenges associated with protecting their intellectual property.

Through this multi-part blog series, we will explore these questions, considerations and challenges for 3D printing that are likely to be regulated by FDA, with particular focus on foods (consumed on earth and in space), cosmetics and medical devices. While, at this stage, FDA issues may raise more questions than clear answers, this blog series will explore and discuss the topics that are at the forefront of FDA’s agenda regarding 3D printing and, therefore, require careful consideration by any company that contemplates involvement in the 3D-printed foods, cosmetics or devices industries. 
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

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.”Oprah

A recent case out of the Southern District of New York demonstrates some of the limits to protecting and successfully litigating over a trademarked phrase. In Simone Kelly-Brown and Own Your Power Communications Inc. v. Oprah Winfrey et al, Case No. 11 cv 7875, the plaintiff owned a trademark for “Own Your Power.” Defendants (Oprah Winfrey and her empire) allegedly used the same phrase on the cover of their magazine, at a magazine-related event, on their website, on social media accounts, and on their TV show.

The plaintiff’s mark, in addition to the phrase Own Your Power, included the color light blue and scripted letters which created the word “power.”
Continue Reading Venable LLP “Cause We Never Go Out of Style”: Or, Litigating a Trademarked Phrase

Flanax Belmora LLC
Flanax Belmora LLC

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.

Then, the parties sought review of that decision and brought additional causes of action in the Eastern District of Virginia.  Belmora filed a motion to dismiss Bayer’s counterclaims, which the District Court had granted, and a motion to reverse the TTAB opinion.

In its counterclaim, Bayer alleged that Belmora’s early packaging was “virtually identical” to Bayer’s, and that Belmora’s marketing messages often suggested a historical connection between Belmora’s Flanax and Latino customers.  For instance, Bayer alleged that Belmora tried to link itself with Bayer’s Flanax by saying that Belmora’s was a brand that Latinos had turned to “for generations.” 
Continue Reading The Battle of the Two Flanax’s and the Power of the Mexico-United States Border

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 without proper permission after finding Monster Energy’s actions to be willful copyright infringement and a false endorsement under the Lanham Act.  The court recently denied Monster Energy’s post-trial motions for judgment as a matter of law, a new trial, and a reduction in damages. The Beastie Boys are now seeking an additional $2.4 million in attorneys’ fees and costs. Capitol Records, LLC, and Universal-Polygram International Publishing, Inc., have now sued Monster Energy in a related case.
Continue Reading Beastie Boys Win $1.7 Million Verdict, Underscoring the Importance of Clearing IP Rights

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. District Court, Eastern District of Virginia (Alexandria).

Parties who are dissatisfied with TTAB decisions can initiate “de novo” proceedings in a unique federal court — the district court in Alexandria known as the Rocket Docket.  That court, which is across the street from the Patent and Trademark Office (PTO), is called the “Rocket Docket” because cases there proceed from filing to trial in less than one year under accelerated procedures – that’s more than twice as fast as other federal courts around the country.

The background of this dispute is well known:  The Redskin’s federal trademark protection provides the Redskins with lucrative rights in the famous name, and the power to exclude others from using the same name in the marketplace.  Earlier this year, the TTAB cancelled the Redskins’ federal trademark registrations on the basis that it disparages Native Americans in violation of the Lanham Act.

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

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 business. Countless hours are spent honing, devising, revising and fine-tuning clauses on limitations on damages, choice of forum and law, mandatory arbitration, automatic renewals, jury waivers, IP ownership clauses, assignments and licenses. Eventually, they are crafted just the way the entity wants them and they are posted. After the countless hours of design, reflection, revisions and thousands of dollars in legal fees, the appropriate well-crafted TOS appear. Unfortunately, in most cases, those bits will not have any legal byte!

When the entity goes to enforce the TOS, believing they have entered into a contract with their users, they are unpleasantly surprised time and again by judges who refuse to enforce them. 
Continue Reading Your Websites Terms of Service are Unenforceable

3-DPrinting3-D printing is one of the most disruptive technologies to penetrate the market place.  While it is currently and extensively used for prototype design, medical devices and creating novelty items, it has the potential for dramatically changing our way of life.

As new technologies emerge and business models come online, we often see a lag in the law and the activities of business and the consumer.  Let’s fast forward a few years while you can still go to your favorite online store, order and pay for your product; but, instead of it being shipped to you, you will be able to download a file(s) and print out your “purchase(s).”

The whole way we “buy” products could change once we are able to download or stream digital files and print them ourselves.  In fact, we would no longer buy anything – we would, in all likelihood, licensing software files and products from the vendor.

When we buy something, we generally have the right to resell it and use it as we see fit.  This is true even with products that are protected by copyright based on the limits of the copyright owner controlling secondary sales under the First Sale Doctrine.  The copyright owner gets to decide who makes the first sale then the person who acquired the lawful copy can resell it (e.g. used CDs, VCR tapes, DVDs, books, etc.).  However, the First Sale Doctrine does not apply to licensed goods.  So, when we license a 3-D file and print out the product, one should not be confused to think they actually own the file or resulting product, it is being licensed.  How do we know if we are buying something and own it or are merely licensing it?  The answer it seems depends on what the vendor calls the transaction.

Continue Reading 3-D Printing – The End of Shopping As We Know It