By: Erin E. Kaprelian The Supreme Court resolved a circuit split regarding whether a party whose trademark has been infringed must show that the infringement was willful in order to recover profits from the infringer. In Romag Fasteners, Inc. v. Fossil, Inc., the Court held that willfulness does not need to be shown in order for a party to...
By: Joseph S. Heino There are a number of famous colors that are trademark protected – such as the color brown, which is registered by UPS, and the color “robin egg blue”, which is registered by Tiffany & Co. This protection stems from the fact that such marks are “inherently distinctive”. That is, the colors have become so readily recognized...
By: Joseph S. Heino and Erin E. Kaprelian The United States Patent and Trademark Office (USPTO) announced a temporary waiver of certain timing deadlines in view of the current COVID-19 outbreak. Section 12004(a) of the CARES Act provides the USPTO with the ability to toll, waive, adjust, or modify any deadline under the America Invents Act for...
By: Joseph S. Heino and Ryan M. Spott In what could be considered an unusual extension of protections given to works of artistic expression, the Second Circuit Court of Appeals has issued an opinion affirming the value of certain street art – also known as graffiti. Castillo v. G&M Realty L.P., No. 18-498-CV, 2020 WL 826392 (2d Cir. Feb. 20,...
By: Erin E. Kaprelian The number of scam notices received by trademark owners after filing a trademark application has continued to be on the rise and present a real problem—in fact, this activity is so rampant that it is now considered to be reaching epidemic proportions. These notices often appear extremely official. Examples of scam notices...
By: Erin E. Kaprelian On June 24, 2019, the Supreme Court handed down its decision in Iancu v. Brunetti, addressing whether, in light of its previous holding in Matal v. Tam, the Lanham (Trademark) Act’s prohibition on registration of “immoral” and “scandalous” trademarks represents a violation of the First Amendment. Six justices joined the...
Davis|Kuelthau IP attorneys contributed to the 3rd edition of Trade Marks USA: Trends and Developments 2019, published by Chambers Global Practice Guide. This guide is published within various areas of law and jurisdictions where a selection of legal experts, chosen by Chambers, elaborates on important legal issues in relation to the current...
By: Joseph S. Heino and Erin E. Kaprelian Yesterday, the United States Supreme Court brought U.S. copyright law in line with U.S. patent law and U.S. trademark law. Specifically, the Court held that, in order to sue for copyright infringement, the copyright owner now needs to have his or her Federal Copyright Registration in hand before gaining...
By: Sherry D. Coley and Tiffany E. Woelfel Toys “R” Us, Payless, The Limited, Bloomingdale’s, Sears, Shopko. Almost every month brings news of another large company declaring bankruptcy. But what happens to you if you are currently a business partner to a company that declares bankruptcy? How are your rights affected? This article will address...
By: Erin E. Kaprelian and Joseph S. Heino On January 22, 2019, the U.S. Supreme Court handed down its decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals Inc. The Helsinn case asked whether a sale of an invention to a third party, where the third party is required to keep the invention confidential, places the invention “on sale” under...
