Trademark/IP

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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 of Trademarks), in large part, because of the relative ease with which Olympic rights-holders, such as the United States Olympic Committee (USOC), can take legal action. In the United States, under the Ted Stevens Amateur Sports Act (Ted Stevens Act), the USOC has exclusive rights to use “Olympic,” “Olympiad,” the interlocking rings, event mottos and other Olympic trademarks. The Ted Stevens Act also prohibits use of any word, symbol, or combination thereof that “tends to cause confusion or mistake, to deceive, or to falsely suggest a connection with the user and the Olympics”. In practice, this is a very broad prohibition.

For example, the interlocking ring design is a trademark owned and controlled by the USOC. Unauthorized use of the image of the rings is not permitted on the basis of copyright defenses, such as the public domain or fair use, despite popular misconceptions to the contrary. The rings, and other Olympic trademarks, including the word “Olympics,” are also not generic. Use of the word “Olympics” can be protected by free speech in narrow circumstances, but if you are an advertiser reading this blog, it’s highly unlikely that you will be able to fit your uses into that “protected speech” category, even if you can credibly claim that your use is expressive.Continue Reading Golden Rules: Lowering the Uneven Bars on Likelihood of Confusion

As excitement builds for the 2016 Olympics and Paralympics in Rio, companies and organizations, big and small, will be tempted to use the “Games” or the “Olympics” to promote their products, services and agendas. But, they must beware of getting too caught up in the Olympic spirit. Although Olympic and Paralympic trademarks such as the interlocking rings, “Rio 2016,” and “Faster Higher Stronger” may be ubiquitous, especially this summer, an unauthorized use of such trademarks could bring a lot of legal headaches to the user.

Some background: 
Continue Reading Golden Rules: Wrestling with the Use of Trademarks

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 Rights Clearance in your sales and marketing activities.  Below is a non-exhaustive list of some practical tips we recommend as a starting point as you develop your own guidelines for IP Rights Clearance:
Continue Reading Practical Tips for Clearing Intellectual Property Rights in Your Advertisements

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 of the website where it was posted or uploaded?

This is alarming but true – there is strict liability in copyright law.  This means that, even if your organization did not put the infringing content on your website, or did not even know it was there, you can be held strictly liable for infringing content uploaded to your website by another.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

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