Insights

By: Alan Brandt and Jameson Tibbs Prior to the unprecedented disruptions of 2020 many of us looked forward to going to a concert, play or recital. Although the pandemic took us out of our familiar venues, we quickly adapted to find new avenues for entertainment. As we adjust to doing less in public spaces and more in virtual spaces, streaming entertainment has become a booming business. However, whether your event is in person or virtual, sharing someone else’s music still requires that you obtain the appropriate music licenses or risk the consequences of copyright infringement. To understand music licensing, it helps to understand the difference between musical works and sound recordings. A musical work consists of the notes that make up the melody and any accompanying lyrics. A sound recording is a recording of the performance of the musical work. Quite often, there will be separate owners for the musical work and the sound recording; each with a separate copyright. To complicate matters, each...

By: Brendan Goodwine and Jacqueline Kett In efforts to address widespread health concerns and general outcry against soft beverages, many beverage companies have in recent years focused efforts on developing drinks with fewer, or zero, calories. This has resulted in marketing trends utilizing terms like “zero” or “diet.” Over the past 15 years, soft beverage company Royal Crown Co. has been engaged in a fierce legal battle with Coca-Cola Co. (“Coke”) over the trademark ZERO. This feud started in 2005, when several of Coke’s competitors, including Royal Crown, filed trademark applications for beverages using the term ZERO. These applications were rejected by the USPTO on the basis that ZERO was a generic term to describe a minimal or zero calorie drink. A few months later, Coke filed 16 different trademark applications for products that included the term ZERO. When the USPTO responded the same way as it had for Coke’s competitors, Coke instead argued that...

The USPTO has opted to raise fee prices for a variety of trademark actions effective on January 2, 2021. In making these changes, the USPTO weighed factors such as the current state of the U.S. economy, the needs of the agency, and advice from the public. Ultimately, the new changes will impact trademark application filing fees, post-registration fees, and Trademark Trial and Appeal Board fees. For more information, read the full article on our Insights page. ...

How certain companies are benefiting from the USPTO’s Fast Track Appeal Pilot Program By Timothy Nauman, Alan Brandt and Kathryn Chambers The United States Patent and Trademark Office initiated a pilot program intended to fast track Patent Trial Appeal Board (“PTAB" or “the USPTO”) Ex Parte Appeals. During patent examination, an applicant may have the opportunity to appeal an Examiner’s decision to the PTAB. Traditionally, the average length of time for pending applications is about 33 months.  The average pendency from the application filing date to the USPTO’s decision in an appeal is 77.6 months.[1] Because of this lengthy application pendency, the PTAB recognized a need to “accelerate the pace at which products incorporating new inventions are introduced to the marketplace, thereby stimulating economic growth and encouraging follow-on innovations.” On July 2, 2020, the USPTO introduced the Fast-Track Appeals Pilot Program. The program runs until July 2, 2021 and will be evaluated for potential continuation....

By Sandra Koenig, Colleen Flynn Goss and Kathryn Chambers Entering the new decade, we may have thought the populace was immersed in the digital world; however, the Covid-19 pandemic has surely intensified mankind’s digital presence. With the expansion of technology, millions have been transported to a digital world, which has implications in many areas of the practice of law. For example, courtrooms, businesses, and firms have been forced to hold meetings, hearings, and the like virtually. In fact, for the first time, the Supreme Court heard oral arguments via telephone conference call in U.S. Patent and Trademark Office v. Booking.com. The Court was presented with the question of whether BOOKING.COM is ineligible for federal trademark registration. In an 8-1 decision, the Supreme Court on June 30, 2020 ruled in favor of Booking.com and permitted the registration of BOOKING.COM as a service mark for online hotel booking services. In this case, the Court rejected the USPTO’s per...

We are pleased to share The World Trademark Review's review of our partner, Colleen Goss: "A creative thinker and persuasive communicator, Colleen Flynn Goss has mastered the art of registering difficult trademarks at the USPTO; as a result, companies and correspondents from all over the world seek her out. She has ample corporate experience on her resume, too, and understands her clients' perspectives." The WTR 1000 research directory, which focuses exclusively on trademark practices and practitioners, has firmly established itself as the definitive ‘go-to’ resource for those seeking world-class legal trademark expertise. ...

By Ryan Jones and Adrianne Rose After years of growing pressure to retire Chief Wahoo, the Cleveland Indians  removed the longtime trademark from their uniforms this season. While this step may have quelled some of the public outrage surrounding the trademark, opposition still exists to the Indians’ continuing sale of items featuring the Chief. It begs the question, “if the Indians have gone this far, why don’t they just retire the trademark all together?” The answer may lie in retaining rights in the trademark. If the Indians stopped selling Chief Wahoo merchandise, the trademark could be considered abandoned. Under the Trademark Law Revision Act of 1988, a trademark is deemed abandoned when the owner has discontinued use of the trademark with no intent to resume use.  “Use” of a trademark is measured in terms of “use in commerce” or the “bona fide use of the trademark in ordinary trade.” In other words,...

By Alan Brandt Led Zeppelin may be headed back to court to defend its hit song “Stairway to Heaven” after a 9th Circuit decision ordering a new trial, but not if the Recording Industry Association of America has anything to do with it. In 2014, the famous rock band was accused of stealing a guitar arpeggio from “Taurus”, a song from the late 1960s by the band Spirit, and using it in the introduction of “Stairway to Heaven.” The district court found in favor of Led Zeppelin and determined there was no copyright infringement. In September 2018, the 9th Circuit Court of Appeals ordered a new trial after concluding that the trial judge’s instructions to the jury were improper. However, the Record Industry Association of America (RIAA), joined by the National Music Publishers Association, recently filed an amicus brief in support of a petition for the appellate court to rehear the...