Thursday, July 27, 2017

Attorney John Krieger Quoted in "McCartney's Deal with Sony to Regain Beatles Tunes Seen as Blow for Artists' Rights"


John Krieger (Member, Las Vegas) was quoted in a Law.com article titled McCartney's Deal With Sony to Regain Beatles Tunes Seen as Blow for Artists' Rights,” published July 3rd.  The article discusses McCartney’s recent settlement with Sony/ATV over a dispute regarding the rights to the songs he wrote while he was a member of the Beatles.

“I think this serves as an affirmation that copyright law is intended to promote the artists and their art,” said attorney John L. Krieger, a copyrights specialist at Dickinson Wright in Las Vegas. “There have been others reaping the benefits of that art, and now a lot of artists will have their chance to see those benefits, if they live long enough.”  For the record labels, it’s a different story.  “They’re going to have to live with the fact that these older works, including some that are in catalogs they’ve paid a lot of money for, are fair game,” Krieger said. 
The article was also published in The Recorder and the New York Law JournalPlease click here to read the article.
 
 
Mr. Krieger is a member in the firm’s Intellectual Property and Entertainment & Sports Departments. He concentrates his practice on intellectual property litigation in both state and federal court; prosecuting and defending clients for claims including trademark infringement, copyright infringement, patent infringement, domain name, and anti-counterfeiting litigation; as well as trade secret misappropriation and unfair competition. He can be reached in our Las Vegas office at 702-550-4439.

Tuesday, July 25, 2017

Steven A. Caloiaro Has Joined the Firm’s Reno Office as Of Counsel

Steven is an intellectual property litigator with an emphasis on patent and trademark law. He has substantial experience in all phases of patent litigation, including fact and expert discovery, claim construction, summary judgment, and appellate briefs. He works with several clients in the emerging online gaming industry, serving as external IP counsel and managing large-scale patent portfolios, including multi-million dollar sales and licenses.

Steven works with several clients in the emerging online gaming industry, serving as external IP counsel and managing large-scale patent portfolios, including multi-million dollar sale negotiations. Steven provides strategic counsel on trademark protection, prepares and prosecutes trademark applications, enforces intellectual property rights, and litigates patent infringement matters. He also helps clients navigate proceedings before the United States Patent and Trademark Office (USPTO), including settling inter partes review cases before the Patent Trial and Appeal Board (PTAB).

As an undergrad, he worked for the Washoe County Commission, the United States Attorney’s Office, and a United States Senator. Steven also helped lead the University of Nevada to a National Collegiate Roller Hockey Association Championship. You may reach Steven in our Reno office at 775-343-7506. 

Thursday, July 20, 2017

Why High Court Is Right About Offensive Trademarks

By:  Jennifer Ko Craft (Member, Las Vegas)
and Shushan Sadjadi (Law Clerk, Las Vegas)

Jennifer Ko Craft (Member, Las Vegas) and Shushan Sadjadi (Law Clerk, Las Vegas) have co-authored an article titled “Why High Court Is Right About Offensive Trademarks” on Law360.com.  The article discusses the effects and possible new trade names that could be registered given the U.S. Supreme Court’s ruling in Matal vs. Tam. 



Ms. Craft is an “AV/Preeminent Attorney®” as rated by Martindale-Hubbell® member in the firm’s Intellectual Property and Media, Sports & Entertainment Departments. She practices primarily in the areas of domestic and international trademark and copyright prosecution, licensing and enforcement. Ms. Craft consults with clients in identifying various protectable aspects of the clients’ products, services and concepts, and in developing and managing their intellectual property portfolios. She also resolves trademark, copyright, and domain name disputes, including the resolution of disputes over contested trademarks before the Trademark Trial and Appeal Board and enforcing clients’ intellectual property rights on the Internet. She may be reached in our Las Vegas office at 702-550-4441.

Saturday, July 15, 2017

Nicole Meyer - Intellectual Property Litigation Attorney With Twenty Years of Litigation Experience


Nicole Meyer is an Intellectual Property Litigation Attorney with twenty years of litigation experience, and is located in Dickinson Wright’s Washington, D.C. office.  Her practice focuses on trademark and copyright litigation, including practicing in federal district and appellate courts across the country, as well as before the United States Patent and Trademark Office’s Trademark Trial and Appeal Board. 

 
Nicole has served as lead counsel in numerous trademark infringement and counterfeiting cases, including on behalf of Carhartt, Inc. and U.S. Lawns.  Since joining Dickinson Wright in 2000 from an IP boutique, Nicole has collaborated with attorneys throughout the Firm on a wide range of trademark, product configuration, domain name and copyright litigation matters for clients such as Carhartt, Inc., Casprini Gruppo Industriale, Urban Outfitters, Borders Group, Premio Foods, Studio Imports,  Dollar Rent A Car, Inc. and U.S. Lawns, Inc.

 
Nicole regularly appears in the Eastern District of Virginia and the District of Columbia, and is a member of the Intellectual Property committees of the D.C. and Virginia Bars.  Please contact Nicole Meyer in the Washington, D.C. office at 202-659-6924.

Wednesday, July 12, 2017

Three Questions from the Supreme Court’s Decision on “Offensive” Trademarks

By: John C. Blattner

Last week the Supreme Court ruled that the Trademark Office may not refuse federal registration to a trademark merely because the mark is “disparaging.” The decision has attracted a lot of media attention, much of it inaccurate, and has raised some questions worth considering.

The case (Matal v. Tam) involved a music group composed primarily of Japanese-American men who call themselves The Slants. They know that “slants” is a slur against Asian-Americans. Indeed, that is precisely why they chose the name. Their aim, as the Court summarized it, was “to help ‘reclaim’ the term and drain its denigrating force.”

The Slants applied to register their name as a trademark in the United States Patent and Trademark Office. Their application was denied under Section 2(a) of the federal Trademark Act, which provides that registration can be denied to a mark that:
Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.

The Trademark Office found that the Slants trademark violated the “disparagement” clause of this provision.

The Slants appealed. The case eventually made its way to the United States Court of Appeal for the Federal Circuit, which in 2015 ruled that the disparagement clause was unconstitutional because it violated the First Amendment guarantee of free speech. The Trademark Office appealed that decision to the Supreme Court, which emphatically upheld the lower court ruling.

The decision raises a number of interesting questions. Here are three of them.

1. What impact will this decision have on the Redskins case?

In a well-known and widely-discussed case (Blackhorse v. Pro Football, Inc.), the Trademark Office cancelled registrations of six trademarks that included the controversial nickname used by the Washington, D.C., franchise of the National Football League. An appeal of that decision is currently pending in the United States Court of Appeals for the Fourth Circuit.

It would appear that the decision in the Slants case effectively resolves the Redskins case as well. The Redskins registrations were cancelled because they violated the disparagement clause – precisely the same statutory provision that the Supreme Court has now declared unconstitutional. It’s always risky to predict legal outcomes, and the Blackhorse petitioners may yet find a path to victory. But it’s highly likely that the football team will get its trademark registrations back.

2. Does this decision apply to other kinds of “offensive” trademarks?

No and yes.

First, an important clarification. Most news reports have said that the Supreme Court decision opened the door to all “offensive” trademarks. That’s not exactly correct. Technically the Slants decision invalidated only the disparagement clause of Section 2(a). It did not invalidate other portions of the statue. So as of today, the Trademark Act still bars registration of trademarks that are considered “immoral” or “scandalous.”

But the days of the “immoral or scandalous” clause are probably numbered. It is hard to think of any reason why the Supreme Court’s First Amendment analysis of disparaging marks wouldn’t apply to this clause as well. In fact, when the Federal Circuit first ruled the disparagement clause unconstitutional, the Trademark Office suspended consideration of all applications that involved offensive trademarks of any kind, including those deemed immoral or scandalous – a fairly clear signal that the Office recognized that the two clauses stand or fall together.

As it happens, there is a case now pending in the Federal Circuit that expressly challenges the constitutionality of the immoral or scandalous clause. The case (In re Brunetti) pertains to the Trademark Office’s refusal to register the mark FUCT. The Federal Circuit appears to have been awaiting the Supreme Court’s decision in the Slants case. Stay tuned.

3. So does the Slants decision really “open the floodgates” to more offensive trademarks?


Probably not, for at least a couple reasons.

For starters, keep in mind that the purpose of trademarks is to attract consumers and induce them to buy products. How many businesses are likely to think that they can accomplish these goals by adopting trademarks that insult or alienate large segments of their potential market? Some retailers already refuse to stock products with such names, and some trade organizations have adopted guidelines discouraging them.

To the extent that some businesses do want to use such trademarks, there has never been any impediment to using such trademarks with or without registration. And besides, many of them have already succeeded in registering their trademarks. The Trademark Office has been notoriously inconsistent in its application of Section 2(a); there are dozens of duly registered trademarks that would qualify as “offensive” in one way or another.

It is probably inevitable that there will be at some increase in the number of applications for disparaging, immoral, or scandalous trademarks in the wake of the Slants decision. But the fact that so many marks of this kind have already achieved registration undermines the notion that there is a huge backlog of them ready to flood the Trademark Office.

Trademarks and “The Thought that We Hate”


The Supreme Court’s First Amendment decisions are often controversial, because they typically protect someone’s right to say or do things that others find objectionable. But as the Court noted in its decision:

Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, any other similar ground is hateful; but the proudest boast of our free speech jurisdiction is that we protect the freedom to express “the thought that we hate.”

In the Court’s view, this is the price we pay for freedom of speech, in trademarks no less than in other areas.

If you would like a printable version of this Brandmarking newsletter, click here.


Mr. Blattner's practice: brand creation and protection law, including trademark counseling, clearance, registration, and enforcement. John's pre-legal career in publishing, marketing, and nonprofit development enables him to bring real-world business experience into his practice, which includes U.S. clients doing business abroad, as well as global clients doing business in the United States. He also assists clients with copyright, internet, licensing, First Amendment, and antitrust matters.

Mr. Blattner's experience in IP enforcement includes trademark, copyright, patent, and antitrust litigation in state and federal courts; appellate litigation in state and federal courts of appeals, including the Federal Circuit; and opposition and cancellation proceedings before the Trademark Trial and Appeal Board. John is a Member in our Ann Arbor office and he may be reached at 734-623-1698.

Monday, July 10, 2017

Mark Scott Speaks at AIPLA Webinar on June 21, 2017

Mark Scott (Member, Austin) spoke at a webinar titled “Tales from the Edge, Export Controls, Paris Priority Claims and Working Remotely:  Preventing Problems Before They Happen and Trying to Fix Them When Things Go Wrong” for the American Intellectual Property Law Association (AIPLA) on June 21st.  Mark discussed the unique interplay of export control regulations and foreign filing licenses issued by the patent and trademark office.  He also provided the AIPLA with a corresponding paper titled “The Intersection of Export Control Regulations and Foreign Filing Licenses: Can I Write a Patent Application on the Beach in Cabo?” 


Mark E. Scott is a Member at the Dickinson Wright Austin office. Electrical Engineer turned Patent Attorney, Mr. Scott assists businesses that produce innovative products and services with securing a competitive edge in the marketplace, protecting the fruits of innovation, and monetizing creations. In particular, Mr. Scott works with clients to obtain the patents and trademarks which protect and brand products and services. Mark may be reached at 512-770-4234.



Wednesday, July 5, 2017

Jennifer Ko Craft (Member, Las Vegas) was quoted on Law.com


Jennifer Ko Craft (Member, Las Vegas) was quoted on Law.com, published by American Law Media, in the article titled “NHL’s Vegas Golden Knights Making a Name for Themselves the Hard Way.”  The article discusses the National Hockey League’s new Las Vegas franchise and their ongoing trademark issues regarding their new “Golden Knights” name.  The U.S. Patent and Trademark Office (USPTO) is currently considering the NHL’s 1,347-page response to its December decision not to register two trademarks, “Vegas Golden Knights” and “Las Vegas Golden Knights” for hockey exhibitions, and another for apparel sales. The name and logo were too close to the registered trademark of The College of Saint Rose, a 4,211-student university in Albany, New York.  The article was published on June 19, 2017.

“USPTO examiners can be quite unyielding,” said attorney Jennifer Ko Craft, a partner at Dickinson Wright in Las Vegas and a trademark specialist.

“Even if there are others who have registered trademarks in similar situations in the past they cannot use past registrations to justify approving any present application. The Trademark Manual of Examining Procedure specifically prohibits it. Trademarks should be viewed as fluid. So, while these should get approved it’s hard to say that with certainty,” she said.
 


Jennifer Ko Craft is an “AV/Preeminent Attorney®” as rated by Martindale-Hubbell® member in the firm’s Intellectual Property and Media, Sports & Entertainment Departments. Ms. Craft can be reached in our Las Vegas office at 702-550-4441.