footballThe New England Patriots football organization is a model of success and efficiency in pro football, winning five Super Bowls and appearing in two others in the past sixteen years. The team’s rosters are frequently composed of no-name role players and former stars willing to accept less salary for a chance to play for a championship.  They draft smartly, don’t overpay players and have managed to hold onto star quarterback Tom Brady.  In short, they demonstrate vision and planning to ensure success.

These traits apply to the team’s approach toward trademark protection as well. Two days after winning this year’s Super Bowl, the Patriots filed intent-to-use (“ITU”) trademark applications to register BLITZ FOR SIX and NO DAYS OFF for, among other things, clothing and entertainment services. The Patriots had not used the marks before; these are marks that the team intends to use in its quest for a sixth Super Bowl championship.

Continue Reading The Patriots Win at the Trademark Game Too

Shanghai ChinaOn Wednesday, Judge Richard Sullivan of the Southern District of New York relieved the Bank of China from an order issuing $50,000 of daily fines for failing to comply with two subpoenas for information on account holders accused of selling goods counterfeit “Gucci” goods. The matter provides an interesting case study of at least one dilemma facing foreign companies doing business in the United States – whether to comply with a US-issued subpoena knowing that compliance  would break foreign law.

Continue Reading Classic Catch 22? Dilemma of Foreign Companies Faced With Comply with US Subpoena and Possible Foreign Sanctions or Violate Subpoena and Possible Domestic Sanctions

spring sunriseIn Part 1 of this blog, I discussed the question of data ownership and data protection obligations in precision agriculture.  More specifically, I noted that all parties along the field to fork chain should give careful consideration to whether farm data likely will be generated at some point in the process and, if so, who is entitled to own or control the data and what data protection obligations exist as a result.  In Part 2, I look at the various types of disputes that can arise if parties fail to reach agreement on key issues before starting work.  Once agreement is reached, these points then need to be documented in a well-drafted contract.  The range of potential disputes that could break out if good contracting is not employed should convince anyone in business in this area to have well-prepared, thorough written agreements in place to govern precision ag-related business dealings.

Continue Reading Agree to Agree: Data Ownership, Protection and Precision Ag (Part 2)

Trademark_iStock_000012651602MediumWhile the future of doing business in Cuba remains uncertain, recent policy changes surrounding U.S. – Cuba relations has resulted in a more immediate opportunity to reevaluate registering trademarks in Cuba.

Continue Reading Shifting Policies Suggest a Second Look at Trademark Registration in Cuba

Trademark_iStock_000012651602MediumIf at first you don’t succeed, try, try again.  That is exactly what Thor Tech, Inc. did before the Trademark Trial and Appeal Board (TTAB) in January.

Thor Tech applied to register “Terrain”, for RV’s, particularly, towable trailers.  The Trademark Examiner denied the application due to the likelihood of confusion with the registered trademark, “Terrain”, for trucks.  The TTAB reversed the decision, finding the goods and channels of trade of the two products, sufficiently distinct to overcome any confusion arising from the identical marks.

Continue Reading New Strategy for Using Third-Party Registrations to Show Dissimilarity of Goods

3D printer in actionIn Part 1, we addressed the pros and cons of molding your mark directly into your goods in the context of 3D printing. In Part 2 of this series, we evaluated potential benefits and pitfalls that businesses may encounter when applying a mark to products at a later stage in manufacturing (e.g., via sticker or ink-printing). Here, we will look at two counterfeiting scenarios: Case 1, in which your mark has been molded or 3D printed into your product, and Case 2, in which your mark is ink-printed on your product.

In both scenarios, you have no utility patents, design patents, trade dress, or copyrights with which to protect your product. Of course, this addresses a particularly limited situation. However, a great number of businesses find themselves in a similar position. Not all products can be patented. Not all products are proper subjects for trade dress or copyright protection.

In both cases, along comes a so-called “counterfeiter” who obtains a specimen of your product, scans it with a 3D scanner, and starts making copies. In Case 1, the 3D scanner acquires a scan of your mark on your product. The copies made by the counterfeiter in Case 1 therefore also include your mark, leading to clear-cut trademark infringement. However, in Case2, the mark is not detected by the 3D scanner, and is therefore not included on the copies.

Continue Reading 3D Printing & Trademark Counterfeiting Part 3: Break the Mold or Erase the Ink?

3d printer with bright green filamentIn Part 1 of this series, we addressed the impact of 3D printing on companies that mold their marks directly into their goods. Now, in Part 2, we will evaluate potential benefits and pitfalls that businesses may encounter when applying a mark to products at a later stage in manufacturing (e.g., via sticker or ink-printing).

Many companies decide not to mold or 3D print their marks directly into their product. Such a decision may be based on a cost analysis, or on the desire to remain agile in the marketplace. As discussed previously, such costs may fall drastically while agility will greatly improve as 3D printing becomes more widespread. Even so, many companies are simply unable to mold or 3D print their marks directly into their products. The product may be too small to directly bear a trademark at all, or may not have an externally visible surface to serve as a suitable location to display a mark.

Continue Reading 3D Printing & Trademark Counterfeiting Part 2: Break the Mold or Erase the Ink?

smaller version3D printer blue 000034574932In a previous series of posts, we explored several copyright issues as they apply to 3D printing. In this series, we will address the impact of 3D printing on trademark infringement by counterfeiting. Here, we will address the pros and cons of molding your mark directly into your goods in the context of 3D printing and counterfeiting.

In Part 2 of this series, we will evaluate potential benefits and pitfalls that businesses may encounter when applying a mark to products at a later stage in manufacturing (e.g., via sticker or ink-printing).

In Part 3, we will look at some hypothetical “counterfeiting” and trademark enforcement situations, and discuss the impact of 3D printing your mark into your product as compared to ink-printing. Continue Reading 3D Printing & Trademark Counterfeiting Part 1: Break the Mold or Erase the Ink?

obama12223245855_9dcc9616ac_n-1President Obama’s announcement to normalize U.S. relations with Cuba has created a flood of momentum for U.S. companies hoping to open new business markets there; however, business owners should spend the time now to learn the legal and regulatory framework they will encounter in Cuba, and the steps they can take immediately to be ready when opportunities arise.

Continue Reading Move Quickly to Register Trademarks in Cuba

music - nightlife- 78052785Taylor Swift recently filed over 100 U.S. federal trademark applications for song lyrics and other phrases, including THIS SICK BEAT, NICE TO MEET YOU. WHERE YOU BEEN? and COULD SHOW YOU INCREDIBLE THINGS, all filed to cover a range of items from ornaments to dinner ware. Other recent trademark filings of note include filings for LEFT SHARK (filed by a company associated with Katy Perry after her Super Bowl performance) and FAMOUS JAMEIS (apparently filed by an agent for Florida State quarterback Jameis Winston).

A self-identified musician/journalist protested Swift’s filings by plastering his own site with the wording “THIS SICK BEAT TM” and calling the filings an “attack on freedom of speech”. The New Yorker magazine even published a spoof with its own list of possible Swift trademarks (our favorites: “I Enjoy Fun” and “Breakups Stink”).

As IP attorneys, we welcome the opportunity to consider what it means to own and register a trademark that is born out of popular culture or a social media trend.

Continue Reading THIS SICK BEAT™, FAMOUS JAMEIS™ and LEFT SHARK™