The craft beer community is often collegial based on the “us against them” paradigm. In this case, “us” is the small independent breweries that have popped up by the thousands across the United States, and “them” is Miller, Budweiser and a handful of other large...
Trademark Law
Willfulness not needed to disgorge profits for infringing trademark
On April 23, the U.S. Supreme Court said that the federal Lanham Act does not require that a trademark infringer did so willfully as a precondition to the trademark owner getting back the profits the infringing party made in violation of the Act. At the time the...
Packaging colors can be inherently distinctive, says Federal Circuit
On April 8, the U.S. Court of Appeals for the Federal Circuit issued a trademark decision holding that a multi-color pattern on product packaging can be inherently distinctive and that this inherent distinctiveness does not require a “peripheral shape or border”...
Supreme Court to say when terms are generic and cannot be protected as trademarks
The Lanham Act (federal trademark law) does not allow generic terms to be registered as trademarks, but it does allow protection for words that are considered merely “descriptive.” Unfortunately, it’s difficult to tell where the line is. Can you take a generic word...
Can you trademark a word with a cultural meaning? Be cautious.
If you’re opening a Mexican restaurant, you don’t call it “Jenny’s.” You choose a name that carries cultural cachet and implies what you’re selling. When a Phoenix-area restaurant opened selling Asian-Mexican fusion cuisine, it hoped to capture both cultures with its...
Should e-commerce platforms be liable for third-party counterfeits?
Earlier this year, President Trump signed an executive order calling for crackdown on counterfeit or pirated goods. Specifically, it targeted U.S. companies that import, or who facilitate the import of, those goods. Now, a bipartisan bill has passed the House of...
Has “Choose Your Own Adventure” become a generic term?
The publishing company Chooseco owns the “Choose Your Own Adventure” trademark once owned by Bantam Books, and it has been fighting hard to protect its rights. Over the years, it has filed suit against a number of publishers and other companies that used the phrase to...
Trademark: What is “aesthetic functionality” and should it matter?
Aesthetic functionality is a confusing, controversial concept in trademark law, which the U.S. Court of Appeals for the 9th Circuit will soon reconsider. A 1980 9th Circuit case called International Order of Job’s Daughters v. Lindeburg & Co. – that many do not...
SCOTUS protects “scandalous” trademarks in 2019
In a Supreme Court of the United States (SCOTUS) decision, the Court found a statutory bar to trademark protection was unconstitutional. The year 2020 promises to bring more in the realm of trademark law, and it will be reported here when it happens. Clothing...
Two cosmetics giants sparring over “LASH LOVE”
When you walk through a cosmetics store, the sheer number of brands and variations on packaging can be overwhelming. Translate that into the volume of intellectual property that brand owners must protect in the marketplace and there are certainly going to be...