Fashion Industry May be Left Defenseless Against Infringers

Fashion designers could be left defenseless against copycats if the US Supreme Court rules that certain features are not protected under the Copyright Act.  The Supreme Court will soon hear oral argument in Varsity Brands, Inc. v. Star Athletica, LLC.  At issue is what, according to Petitioner Star Athletica, LLC, is “the most vexing, unresolved …

Deceptive marks always start off with two strikes against them.

Applicant applied for the mark BLAZING SILKS for a variety of clothing products.  Applicant also made clear that its products were not made from silk.   FIRST STRIKE:  Had Applicant’s products been made from silk, the USPTO would have deemed the word “silk” to be merely descriptive and would have required Applicant disclaim “silk” apart …

Seriously: One can use another’s trademark on products to make a joke.

Defendant makes cheap looking handbags with the phrase MY OTHER BAG…affixed to one side and an image of a Louis Vuitton bag featuring its famous design pattern on the other side Louis Vuitton sued the Defendant alleging its pattern mark is famous and that the use of this pattern by the Defendant on a handbag …

Practice Pointer: NEVER NEVER ever ever sell your name….unless “they” pay you a lot of money.

The fashion industry is blessed with many ultra-talented designers.  And it is quite common for a talented and well-known designer to seek out investors in order to create a brand around the designer’s name.  Joseph Abboud and Adriano Goldschmied come to mind as examples. Typically, when a designer and investors team up, a corporate entity …

Registering the name of a famous living individual can protect the famous name after the individual passes

The Ms. Teresea H. Earnhardt v. Bobby Dale Earnhardt LLC case is also interesting because it is a great example of how to maintain one’s famous name as a trademark after one dies. As a recap of the holding of the case, the Applicant was not able to register BOBBY DALE EARNHARDT as a trademark …

Sins maybe, but the trademarks of a Grandfather are not inherited by the Grandson.

Just because it is your name DOES NOT guarantee that you can secure a trademark registration for your name. The popular race car driver known as Dale Earnhardt died in 2001.  During his career, he clearly established trademark rights in his name for goods/services related to automobile racing.  He also registered his name with the …

PRACTICE POINTER: Applicant takes off his gloves in fight with Trademark Examiner…and wins.

The absence of hand wear in Applicant’s application combined with the differences in the respective marks convinced the TTAB to rule in favor of the Applicant. Applicant filed for the following HORIZEN-based mark for a variety of clothing items, footwear, headwear, and clothing accessories (“belts, flip flops, hats, jackets, pants, Polo shirts, sandals, shoes, shorts, …

Third Party Registrations can be Used, or Not Used, by the TTAB

The In re Perlot, LLC case is interesting for a second reason….third party registrations. In a successfully argued “crowded field” scenario, the TTAB will use third party registrations to support a finding that the disputed term, common to the identified third party registrations, is the weak portion of the mark.   On the other hand, …