Sep 12, 2019

Trademark Decisions at the ITC May Have Preclusive Effect at the District Court

Picture of Segway

On May 18, 2016, Segway filed a Complaint with the International Trade Commission (ITC) alleging violations of 19 U.S.C. § 1337 based on the infringement of six patents and two trademarks. On March 21, 2017, Swagway, one of the Respondents, moved for partial termination of the investigation regarding the trademark infringement allegations by asking for a consent order stipulation to be entered where Swagway stipulated that it would not sell or import SWAGWAY-branded personal transporter products as well as all components thereof, packaging and manuals therefor. Before the Administrative Law Judge (“ALJ”) ruled on Swagway’s motion for consent order, the… Read more


Sep 4, 2019

SGR IP Attorneys Continue Service as Adjunct Professors at Various Law Schools

IP-Professor-Blog-

SGR Partners Greg Kirsch and Matt Warenzak are continuing their service as adjunct professors of patent and intellectual property (IP) law, at various law schools. Kirsch will be teaching an intensive class on “Intellectual Property Protection for Computer Software”, at Washington University School of Law in St. Louis, during this coming weekend of September 6-8, 2019.  The class, which Kirsch has been teaching each Fall since 2011, focuses on how the various types of IP regimes (patents, copyrights, trade secrets, and trademarks) can be used to protect different aspects of computer software technology, the procedures used to protect such IP,… Read more


Aug 29, 2019

No Place To Hide – The Effect of a Data Breach on Brand Value

data breach image

This Blog is Co-Authored by James Bikoff, Smith, Gambrell & Russell, LLP; Nicole DelleDonne, Brandsight, Inc.; and Susan Natland, Knobbe Martens Almost every week, a brand owner discloses that a data breach has occurred. As trademark professionals and ambassadors of our organization’s and client’s brands, the effect of a data breach goes far beyond the concrete costs and resources in dealing with the breach. Studies have shown and common sense supports that a data breach can cause substantial damage to brand value due to harm to the goodwill in a brand and loss of consumer trust. Thus, data breaches are not… Read more


Aug 15, 2019

Trademark Owners, Watch Out! USPTO Getting Strict on Trademark Specimens

Trademark Photo

In order to register a trademark based on use in commerce, or to renew a registration based on a foreign or international registration, trademark owners are required to verify that the mark is in use in U.S. commerce with all goods or services listed in the application or registration. In addition, the mark owner must file proof of use (a “specimen”) that demonstrates use of the mark in commerce in connection with at least one good or service in each International Class. The USPTO has announced that it will be rolling out new regulations in October 2019 that will tighten… Read more


Jul 25, 2019

Update: Scandalous Marks at the PTO

Surprised Teenager

On July 3, 2019, the PTO issued Examination Guide 2-19, entitled “Examination Guidance for Section 2(a)’s Scandalous Marks Provision after Iancu v. Brunetti.” By way of background, in December 2017 the CAFC held that the provision violates the First Amendment because it restricts free speech. In re Brunetti, 877 F.3d 1330, 125 USPQ2d 1072 (Fed. Cir. 2017). Since then, the PTO has been suspending action on pending applications refused under the “scandalousness” provision until final disposition of the matter. On June 24, 2019, SCOTUS affirmed the judgment of the Federal Circuit. 588 U.S. ___, 2019 USPQ2d 232043 (2019). In an… Read more


Jun 6, 2019

Will the Supreme Court Abrogate Sovereign Immunity for a State’s Infringement of Intellectual Property Rights?

Sign stating public private with arrows

In 1990, Congress passed the Copyright Remedy Clarification Act (“CRCA”), and in 1992 passed the Trademark Remedy Clarification Act (“TRCA”) and the Patent and Plant Variety Protection Remedy Clarification Act (“PCA”), all of which provided that states, state instrumentalities, and state employees acting in their official capacity, are not immune under the Eleventh Amendment, or other doctrine of sovereign immunity, from suit in federal court for copyright, trademark, and patent infringement.  In 1997, the Supreme Court held that Congress’ legislative power did not constitutionally authorize it to abrogate state sovereign immunity for patent infringement under the PCA.  Consistently since 1997,… Read more


May 30, 2019

Supreme Court Rules that Bankruptcy Does Not Revoke a Trademark License

Bankruptcy Court

On May 20, 2019, in deciding Mission Product Holdings, Inc. v. Tempnology, LLC, No. 17-1657, the U.S. Supreme Court settled a circuit split regarding an unresolved legal issue in trademark licensing, determining whether a licensee can continue to use a licensed mark once the licensor files for bankruptcy. Tempnology, LLC (“Tempnology”) manufactured clothing and accessories designed to stay cool during physical activity and marketed these products under the trademark “Coolcore.” In 2012, Tempnology entered into a license agreement with Mission Product Holdings, Inc. (“Mission”), granting Mission an exclusive license to distribute certain Coolcore products in the United States and a… Read more


May 2, 2019

Fourth Circuit Fixes Fair Use

FairUseIPBlog

On April 26, the Fourth Circuit Court of Appeals reversed a controversial ruling that caused significant concerns for visual artists. Brammer v. Violent Hues Productions, LLC, No. 18-1763 (4th Cir. Apr. 26, 2019). The lower court ruled that a festival promoter’s unlicensed use of a copyrighted photograph on its website in connection with advertising the festival was permitted as “fair use.” More information concerning the trial court’s ruling is contained in our earlier article, Is Fair Use Still Fair, available here. After analyzing the statutory fair use factors, the lower court found that they weighed in favor of permitting the… Read more


Apr 25, 2019

ICANN Updates: Access to Domain Name Registrant Data Post-Blackout

ICANN Definition

As stated previously, the implementation of the European Union (EU) General Data Protection Regulation (GDPR) has created significant issues for brand owners with regard to identifying counterfeiters and combatting infringement online, resulting in increasing enforcement costs. Under the GDPR, domain name registrars are prohibited from publishing the name and contact information for domain name registrants. Personal data may only be processed if the registrant consents, for the performance of a contract, or for a legitimate interest of the data controller or a third party. As a result, the Internet Corporation for Assigned Names and Numbers (ICANN) launched an Expedited Policy… Read more


Apr 11, 2019

Brunetti and the Tests of Tam

Courthouse: Iancu v. Brunetti

On Monday, April 15, 2019 arguments in the Brunetti case [Iancu v. Brunetti, No. 18-302] will be heard at the United States Supreme Court. Erik Brunetti seeks to register the mark FUCT for clothing. Brunetti’s application was rejected for registration by the United States Patent and Trademark Office on the basis that it violates the Lanham Act, 15. U.S.C. 1052(a) which prohibits the registration of marks comprised of “immoral” or “scandalous” matter. The arguments by the government and Brunetti are sure to echo some of the arguments made in the so-called SLANTS case, Matal v. Tam, 137 S. Ct. 1744… Read more