Posts made in September, 2013

“Nominative” Fair Use

Posted by on Sep 24, 2013

The United States Court of Appeals for the First Circuit recently decided the very interesting case of Swarovski Aktiengesellschaft v. Building No. 19.  This case highlighted the fact that trademark law is constantly evolving – the major issue was so-called “nominative” use of a trademark, i.e., use of a trademark to refer to the trademark holder’s own goods in an advertisement by a seller not affiliated with the trademark holder.  As the First Circuit noted, different circuits of the United States have fashioned different rules for dealing with this type of use – thus the matter may well have to be resolved by the Supreme Court at some point. Background of...

Read More

Trade Dress – Does it Have to Have Secondary Meaning?

Posted by on Sep 17, 2013

In a previous post we’ve touched on the idea of trade dress – the packaging of a product, and its “look and feel.”  The configuration of the product itself, such as the shape of a bottle, may also be considered trade dress.  Trade dress is protectable under the Lanham Act as something of value that may indicate the source or origin of a product.  Previously we mentioned two additional requirements: the trade dress cannot be functional, and it must be distinctive.  For example the color and shape of a bottle of Tide detergent is distinctive, but only because the packaging has acquired secondary meaning.  Today we ask the question whether a trade dress may...

Read More

Titles of Artistic Works – Implications of Dastar

Posted by on Sep 10, 2013

The United States Court of Appeals for the 7th Circuit recently decided the case of Eastland Music Group v. Lionsgate Entertainment.  This action for trademark infringement, and the court’s subsequent analysis helped settle an issue long weighed by courts and commentators – to what extent may the title of an artistic work infringe the trademark of another?  The case also developed the implications of the famous (or infamous) case of Dastar Corp. v. Twentieth Century Fox, one of the most important trademark decisions of the 21st century to date. Background of the Case Eastland Music Group (“Eastland”) is a music group that owns the rights to the rap duo known...

Read More

When are Terms Merely Descriptive? Part II

Posted by on Sep 3, 2013

Today we continue our discussion of certain interesting topics within the larger question of when certain terms are classified as merely descriptive.  The classification of a term as a descriptive mark carries with it the consequence that the mark receives no protection whatsoever unless secondary meaning can be demonstrated. We previously discussed the merits of foreign words and personal names as potential trademarks and concluded that they are subject to some special rules and tests by the USPTO and the judicial system.  Today we continue our discussion with the examination of acronyms and geographic marks. Acronyms Many brand owners face a form of catch-22 or...

Read More