Category Archives: Trademarks


I’m happy to see that the Supreme Court will address whether the United States Patent and Trademark Office’s findings on the likelihood of confusion between two trademarks should be given deference in Federal Court. The Supremes granted cert. to fastener manufacturer B&B … Continue reading

I’m Speaking at an Upcoming Trademark Law Webinar

I will be one of the speakers at a webinar on the Likelihood of Confusion Standard in trademark law on September 27th, 2012. Check out this link for more information if you are interested in attending or if you just need some CLE credit.

A NY Federal Judge Dismisses Velvet Underground’s Copyright Claims against the Estate of Andy Warhol

Here’s an update on the Andy Warhol “Peel and See” Banana case, where the trademark rights of one party collide with the copyright rights of another. Very briefly, the Velvet Underground rock group is suing the Estate of Andy Warhol over the Estate’s licensing of the famous banana image. Bottom line: The Velvet Underground is out of luck on their copyright claims because they had signed a release years earlier that promised that they would not sue over the Estate’s use of the iconic image. The Velvet Underground argued that the court still needed to determine whether the Estate had copyright rights in the image but the court was unmoved by their arguments, holding “None of them has merit.” The Velvet Underground’s  trademark claims are still alive so this saga will continue.

Jack Daniels Doesn’t Want to Stop You But It Sort Of Has To….

I enjoyed this extremely polite cease and desist letter that Jack Daniels sent out recently to an author who “paid homage” to the iconic brand on the cover art for his book. Despite the fact that Jack Daniel’s in-house attorney is based in California, even my refined southern mother would have approved of the gentle and cordial tone of this cease and desist letter. Jack Daniels is doing a fine job of not being a trademark bully. I have great sympathy for the brand owner who has to protect its brand or lose its rights. To the general public, policing brands against something that doesn’t seem like that big of a deal makes the brand owner look like a real jerk who is using lawyers to coerce and intimidate. However,  doing nothing can drain all of the value out of the trademark owner’s most important asset–its brand.  There has got to be a happy medium and maybe Jack Daniels has struck the right note here.

Using the same form cease and desist letter for every situation, from the blatant infringer to the little league team who thought it would make a great nick name, is not a good idea. Sometimes, killing them with kindness is the right way to go.  At any rate, no matter how big of a hammer you have, you will always catch more flies with honey–or maybe a Jack and Coke. But  for goodness sake, put it in a real crystal glass, not a red Solo cup. Manners still matter.

Fear the Brow — Embracing Your Flaws as a Branding Strategy

Anthony Davis, who will likely be the No. 1 draft pick in this Thursday’s NBA Draft by the New Orleans Hornets, is serious about protecting his uni-brow. Davis, known for his rather dramatic and adjoining eyebrows, trademarked the phrases “Brow Down,” Fear The Brow” and “Raise The Brow” earlier this month for numerous products. Rather than bemoan what many would see as a slight beauty problem, Davis has wisely embraced the brow and set about to monetize it. There will be no waxing, plucking, threading  or shaving—instead Davis has long protected the look, including sending out cease and desist letters to anyone who catches his eye (brows) by attempting to capitalize on his unique features. Good for him. We should all be so self-accepting and self-confident. If only I could come up with a way to monetize my gray roots, rapidly declining eye sight and crows feet–I would have it made.

Artist’s Rendering of Alabama Football Players Was Protected By First Amendment And Does Not Amount to Trademark Infringement


The  Eleventh Circuit issued an important trademark decision yesterday, holding that the First Amendment protected an artist’s right to paint Alabama football scenes because the depiction of the Alabama uniform (which the University contends is a trademark) is necessary for the historical accuracy of the scene.  Since 1979, Daniel A. Moore has painted famous football scenes involving the University of Alabama .  The paintings feature realistic portrayals of the University’s uniforms, including helmets, jerseys, and Alabama’s crimson and white colors.  Moore has reproduced his paintings as prints and calendars, as well as on mugs and other articles.

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Trayvon Martin Case and Intellectual Property Issues

This case has been heart-breaking on so many levels, no matter your position on the social issues that are implicated. Whether you believe Zimmerman  acted in self-defense or created a situation where someone’s beloved son was killed while minding his own business, carrying a Snapple and some Skittles, there is no question that many lives have been destroyed, careers ruined, and, most tragic by far,  a child with a promising future is dead.  It is not for me to decide what happened in this case because I wasn’t there and I don’t know. I have friends with different views on Zimmerman’s actions and motives, but all I can think about is Trayvon’s parents, and the parents of other young African-American boys or men, who live in  fear that the same thing could happen to their child. I have no answers and nothing but my heart-felt sympathies to offer to these families.

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Oprah Wins Dismissal of Trademark Lawsuit

trademark infringementOprah artfully sidestepped a  trademark lawsuit when a New Jersey district court held that she made fair use of “Own Your Own Power” on the cover of her magazine when she used the phrase as a headline and a title for an area of her website. The use of the descriptive phrase in conjunction with her well-known trademarks was fair use and did not infringe the plaintiff’s “Own Your Own Power” mark, registered for “a personal brand of self-awareness and motivational communications services nationally.” Because the court declined the invitation to exercise jurisdiction over the plaintiff’s state law claims, Oprah carried the day on all issues.

Top Five Ways to Protect Your Website

Below are the top five things to consider to ensure that your website and its content are adequately protected:

1.      Own Your Own Content

As a threshold matter, you need to create all the content yourself or, if it is created by others, it must be done pursuant to a “work for hire” agreement. If not, the person writing the content or providing the graphic or photographs owns the content, not you or      Continue reading

Who Wins the Race to Use A Trademark First?

In a shoot-off between two users of the same trademark, everything hinges on who used the mark first. It seems like this would be a simple determination: whoever can show that he or she used the mark first in commerce wins. Case closed. Like most things in the law, it is not quite that cut and dried. In order to establish that you are the senior user of a mark, you not only have to show that you used the mark first in commerce, you have to show that your use was “systematic and continuous.” People commonly assume that “continuous” means that you used the mark and you have never abandoned use of the mark. Because “abandonment” means non-use of a mark for some period of time (usually three years but can be shorter under some state statutes) with an intent not to resume use, most people think the “continuous” element is a lost cause when trying to attack another’s user’s seniority. However, an absence of abandonment is not the standard when determining whether the first one to use the mark made systematic and continuous use of it. Instead, in this context, “continuous” means “use without significant interruption.” 5 J. Thomas McCarthy on Trademarks, § 26:55 (2008) citing Casual Corner Associates, Inc. v. Casual Stores of Nevada, Inc., 493 F. 2d 709 (9th Cir. 1974) (non-use for one year was not “continuing” use).

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