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Who is responsible for fixing the e-commerce problem surrounding counterfeit products?

Written By: Laura Odujinrin

The Rise of E-commerce

E-commerce sites, like Amazon, eBay, and Etsy, provide huge opportunities for small and medium business (“SMB”) owners to reach customers and grow business in a way that would be nearly impossible with traditional brick and mortar. These e-commerce sites also allow consumers to choose from a much larger pool of products and producers to find exactly the product they are looking for.

In 2018, Amazon, the world’s largest e-commerce platform, [1] had nearly two million SMBs using its e-commerce marketplace platform to reach and sell to customers. [2] Those SMBs sold nearly 4,000 products per minute, [3] totaling $160 billion dollars in sales. [4] The e-commerce industry is only continuing to grow, with sales expected to reach nearly 15 percent of total retail spending and more than $4 trillion dollars in spending in 2020.” [5] But, with increased access, growth, and opportunity for business owners and consumers alike, comes a challenge: counterfeit products.

The Rise of Counterfeit Products

A counterfeit product is a product “made in imitation of something else with intent to deceive.” [6] In 2018, U.S. Customs and Border Protection and U.S. Immigration and Customs Enforcement seized 33,810 counterfeit products that violated intellectual property rights and were worth an estimated $1.4 billion dollars. [7] The number of seized counterfeit products has more than doubled since 2009, and the retail price of seized products has continued to increase year after year. [8]

Many counterfeiters advertise their counterfeit products using language [9] and images copied directly from the original product’s page, [10] leading to many consumers unknowingly purchasing counterfeit goods. To make matters worse, counterfeit goods, unlike authentic goods, often do not adhere to any health or safety regulations, which can lead to the purchase of potentially dangerous and life-threatening products. [11] For example, a CNN investigation found that a counterfeit version of a popular car seat sold on Amazon “broke into pieces in a 30-mph crash test …, failing to meet the basic standards set by U.S. regulators.” [12]

To make matters worse, the burden of finding and reporting counterfeit products currently falls on the small business owners themselves, costing them precious time and money. [13] While a few of the e-commerce sites, like Amazon, offer services to help manage counterfeit products, fighting the counterfeit problem is akin to a never-ending game of “Whack-a-Mole” for many business owners, who successfully get one counterfeit product taken down only to find a new one pop up days or weeks later. [14]

Government Action

E-commerce sites have largely avoided legal liability by claiming that because the copyright products are sold by third party sellers and not by the site itself, the site is protected because it is not the seller of the counterfeit product, but merely a marketplace provider. [15]

In early March of 2020, the House proposed a bi-partisan bill, the Shop Safe Act, which aimed at “address[ing] the problem of the sale of unsafe counterfeit goods by incentivizing [e-commerce] platforms to engage in a set of best practices for screening and vetting sellers and goods, penalizing repeat offenders, and ensuring that consumers have the best (and most accurate) information available to them when they make their online purchases.” [16] The statute would provide clarity where case law has remained obscure, namely addressing the question of “when a platform can be held contributorily liable,” [17] by ensuring that e-commerce platforms who follow the Shop Safe Act’s best practices will not be held legally liable.

Problem Solved?

The Shop Safe Act is a great step in fighting the counterfeit products problem, but since it only pertains to “goods that have a health or safety impact … on consumers,” [18] it leaves many SMB owners, like  artists, creators, and designers whose products do not pose a threat to consumer health or safety, left to grapple with the problem on their own. Whether the Shop Safe Act or other programs developed by the e-commerce sites themselves will help is left to be seen. If all the stakeholders, like the government, e-commerce platforms, business owners, and consumers, can work together to combat the problem, a solution to this ever-growing problem can hopefully be found.

 

[1] Pamela Boykoff & Clare Sebastian, Fake and dangerous kids products are turning up for sale on Amazon, CNN BUSINESS (Dec. 23, 2019, 8:25 AM), https://cnn.com/2019/12/20/tech/amazon-fake-kids-products/index.html [https://perma.cc/B2DY-9N9P].

[2] 2019 Amazon SMB Impact Report, AMAZON at 2, https://d39w7f4ix9f5s9.cloudfront.net/61/3b/1f0c2cd24f37bd0e3794c284cd2f/2019-amazon-smb-impact-report.pdf [https://perma.cc/F6Y9-VD33] (last visited Mar. 17, 2020).

[3] 2019 Amazon SMB Impact Report, supra note 2, at 7.

[4] Id. at 3.

[5] SHOP SAFE Act of 2020, 116th Cong., 2d Sess. (proposed Mar. 2, 2020).

[6] Counterfeit, MERRIAM-WEBSTER, https://merriam-webster.com/dictionary/counterfeit [https://perma.cc/KDU9-KVPC] (last visited Mar. 17, 2020).

[7] U.S. Customs and Border Protection Office of Trade, Intellectual Property Rights Fiscal Year 2018 Seizure Statistics, U.S. CUSTOMS AND BORDER PROTECTION at 6, https://www.cbp.gov/sites/default/files/assets/documents/2019-Aug/IPR_Annual-Report-FY-2018.pdf [https://perma.cc/N4J5-QVHW] (last visited Mar. 17, 2020).

[8] 2019 Amazon SMB Impact Report, supra note 2, at 7.

[9] SHOP SAFE Act of 2020, 116th Cong., 2d Sess. (proposed Mar. 2, 2020).

[10] Nicole Nguyen, Stolen Artwork Is All Over Amazon – And Creators Want The Company To Do Something About It, Buzzfeed News (Jan. 23, 2019, 12:02 PM), https://www.buzzfeednews.com/article/nicolenguyen/amazon-counterfeit-art-sellers-fakes-copyright-infringement [https://perma.cc/9FA7-G5P6].

[11] Boykoff & Sebastian, supra note 1.

[12] Id.

[13] Id.

[14] Id.

[15] Alan Rappeport, Lawmakers Propose Making E-Commerce Companies Liable for Counterfeits, The New York Times (Mar. 2, 2020), www.nytimes.com/2020/03/02/us/politics/counterfeits-bill-china-amazon.html [https://perma.cc/RWH6-7LXH].

[16] SHOP SAFE Act of 2020, 116th Cong., 2d Sess. (proposed Mar. 2, 2020).

[17] Id.

[18] Id.

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Are designs used as a source identifier or purely functional?

Written By: Tabina Haider

In our ever-changing society, the fashion industry has found ways to not only keep up with change, but also facilitate it. High-profile designers, such as Gucci, Christian Louboutin, Yves Saint Laurent, and many others have created unique designs with source identifiers. A source identifier is a way for consumers to know which brand is responsible for the product. [1] Some examples of source identifiers are Gucci’s two “G’s,” Yves Saint Laurent’s “YSL” design, and Christian Louboutin’s signature red bottom shoe soles. However, there has been much controversy as to whether these designs serve exclusively as source identifiers or whether they are an aesthetic function.

There has been countless litigation involving aesthetic functionality. If a product feature is deemed functional in any way, it cannot serve as a trademark. [2] In contrast to utilitarian functionality, aesthetic functionality discusses how the look of the product feature serves a functional purpose. [3] Courts have struggled with the application of the doctrine, resulting in issued opinions which define, dispute, and contradict it.

Christian Louboutin red bottom shoe soles provide a great example. Is this design a source identifier or is there an aesthetically functional purpose? When YSL tried to make an all-red shoe, including the soles, Louboutin filed for trademark infringement. [4] YSL claimed having a red sole was functional because it served the function of creating a monochromatic shoe. [5] Even though Louboutin has a valid trademark for the red sole, it is not aesthetically functional because it is not necessary for the sole to be red. The court held it was necessary for the shoe sole to be red in order for YSL to achieve their desired monochromatic shoe. [6] Therefore, Louboutin lost its trademark rights for the red sole in monochromatic red shoes. [7]

Another example involves Glossier’s pink bubble wrap-linked zip-lock pouches which are used to market and sell its cosmetics. Every purchased product is packaged in this signature pouch. Glossier applied for a trademark to register the pink bubble wrap-linked zip-lock pouch, and the United States Patent and Trademark Office (“USPTO”) rejected the application due to the functional design of the packaging. [8] Glossier responded by asserting the bubble wrap is not a feature of the trademark, and it only sought rights in the specific pink color used for the packaging. [9] Because consumers associate the pink color of the bubble wrap and zip-lock bag combination with Glossier products, Glossier claims it can successfully obtain a trademark. [10] The USPTO is currently reviewing the Glossier case. [11]

The Ninth Circuit is expected to clarify the doctrine soon given the doctrine’s controversial and varying application on a case by case basis. [12] Clarity of the doctrine will be integral for companies owning rights to their own designs, strengthening the protections trademarks provide to fashion designers.

 

[1] it law wiki, https://itlaw.wikia.org/wiki/Source_identifier [https://perma.cc/X7RL-JQYJ].

[2] Qualitex v. Jacobson Products Co., Inc., 514 U.S. 159, 165 (1995).

[3] Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 656 F.3d 206, 219 (2d Cir. 2012).

[4] Id.

[5] Id.

[6] Id.

[7] Id.

[8] Forget a Logo, Glossier Says that Consumers Know Pink Pouches are Indicators of its Brand, THE FASHION LAW (January 28, 2020), https://www.thefashionlaw.com/home/in-new-trademark-filing-glossier-says-that-consumers-know-pink-pouches-are-indicators-of-its-brand [https://perma.cc/WK2X-PZTL].

[9] Id.

[10] Id.

[11] Id.

[12] David Bernstein, Kathryn Saba, & Emily R. Hush, Ninth Circuit Set to Clarify Aesthetic Functionality Doctrine, IP WATCH DOG (January 17, 2020), https://www.ipwatchdog.com/2020/01/17/ninth-circuit-set-clarify-aesthetic-functionality-doctrine/id=117980/ [https://perma.cc/4B4Y-JLN4].

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Could Federally Legalizing Cannabis Help Trademark Confusion?

Written By: Natalie Del Cid

In markets involving technology, intellectual property protections are crucial. Once an invention is created, it is patented. [1] In the cannabis industry, the idea of patents are far removed. [2] The idea of creating and protecting intellectual property is still evolving. [3] Intellectual property protections are thus necessary to create a distinction between companies and the product they offer.

The cannabis industry has encountered barricades when it comes to this particular area of the law. A company can patent a strain of cannabis or hemp in California, but meanwhile that same strain can simultaneously be patented in Washington. [4]

Why is this an issue?

It is difficult for companies to secure a patent at the federal due to cannabis’ illegal status under U.S. federal law. [5] Even though a strain of cannabis or hemp may be patented on a state level, on a federal level it is not. It would be impossible for a federal court to determine a patent lawsuit that would involve two competing cannabis companies in different states. [6]

In regard to federal trademark registration, the biggest hurdle is the fact that cannabis is still listed as a Schedule I drug under the Controlled Substances Act. [7] Since federal law only allows for a trademark to be registered for goods that are “lawfully sold or transported in commerce,” cannabis is not include. [8] A violation of trademark law can therefore arise if a company in State A tries to expand its specific strain of cannabis into State B, but the cannabis strain of the State A company is already patented by another company in State B.

The first cannabis-related patent infringement lawsuit is currently taking place in the

United States District Court of Colorado. [9] In United Corporation v. Pure Hemp Collective, Inc., the petitioner, United Cannabis, is suing Pure Hemp Collective for infringement on safer cannabis extractions. [10] United Cannabis Corporation has an extraction method that “provide[s] unique active compounds that are useful to treat pain in various medical conditions.” [11] Pure Hemp Collective responded by filing an early motion for partial summary judgment arguing that the claims asserted were invalid and requesting a ruling that would “substantially reduce the number of issues before the court.” [12] The Colorado District Court rejected Pure Hemp’s invalidity argument and denied its motion. [13] The cannabis industry is closely monitoring the outcome of this case in order to speculate what the future in cannabis intellectual property matters. [14]

If the federal government were to legalize cannabis, it would allow for national trademark protections and eliminate the patent complications companies currently face. [15] For example, allowing cannabis to receive national trademark protections will implement judicial efficiency by not overburdening the courts with patent cases regarding the confusion of who owns the patent rights to their product. [16] With this issue being fairly new, the government has an opportunity to implement laws to prevent confusion among the federal courts.

[1] Kevin Murphy, Why Building Intellectual Property in The Cannabis Industry is So Difficult (September 26, 2019), https://www.forbes.com/sites/kevinmurphy/2019/09/26/why-building-intellectual-property-in-the-cannabis-industry-is-so-difficult/#34600a7c1fdc.

[2] Id.

[3] Id.

[4] Id.

[5] 21 C.F.R. § 1308.11 (2019).

[6] Murphy, supra note 1.

[7] Id.

[8] Id.

[9] Id.

[10] United Corporation v. Pure Hemp Collective, Inc., No. 18-cv-1922-WJM-NYW, 2019 WL 1651846 at 1 (D. Colo. April 17, 2019).

[11] Id.

[12] Donald Zuhn, United Cannabis Corp. v. Pure Hemp Collective Inc. (October 23, 2019), https://www.patentdocs.org/2019/04/united-cannabis-corp-v-pure-hemp-collective-inc-d-colo-2019.html.

[13] Id.

[14] United Corporation v. Pure Hemp Collective, Inc., No. 18-cv-1922-WJM-NYW, 2019 WL 1651846 at 1 (D. Colo. April 17, 2019).

[15] Murphy, supra note 1.

[16] Id.

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China’s New Trademark Law Amendment: Could discouraging squatters detrimentally affect foreign tech firms?

Written by: Brendan Everton

There appears to be good news coming from China for brand owners. The 10th Session of the Standing Committee of the 13th National People’s Congress in China (NPC) has amended the Chinese Trademark Law and will go into effect on November 1, 2019. [1] The changes are meant to help prevent trademark squatting in China, which has long been a problem. [2]

Trademark squatting or trademark piracy is “the registration or use of a generally well-known foreign trademark that is not registered in the country or is invalid as a result of non-use…”. [3] The intent is to “sell the trademark back to the real owner; … distribute products labeling the trademark to consumers who believe the products are real; … exclude the real owner from the market by establishing a claim of trademark infringement; or … use the trademark to market products which are different from those sold by the real owner.” [4]

The Chinese Trademark system is a first-to-file system. [5] First-to-file systems give an exclusive right to the trademark filed first. [6] Consequently, this system results in a race to file, which encourages bad faith filers to take advantage of the system. There are some safeguards in the Chinese regime to fight against trademark squatting. [7] The courts in China have thus far interpreted these protections narrowly making it difficult for foreign companies to protect their trademarks. [8] This is in contrast to the first-to-use system, which gives exclusive rights to the person who uses the mark first. [9] Through the use of this system, countries largely are able to avoid the problem of bad faith filings. [10]

Hoping to resolve this problem, the new amendment moves ever so slightly towards a first-to-use system. Article 4 of the Trademark Law has been amended to clearly state that “applications filed in bad faith without intention to use should be rejected.” [11] This is a significant change which allows the China Trademark Office to weed out bad faith applications during the examination process. [12] Anyone is now empowered to challenge bad faith applications during the examination process at relatively low cost. [13] This will benefit start-up companies who currently do not have the deep pockets needed to challenge the legitimacy of trademarks.  Additionally, trademark agencies are no longer able to represent an applicant if they know the individual is applying for the trademark in bad faith and has no intent to use the trademark. [14] Penalties are applied to both the trademark applicant and agency for violations. [15]

The new system appears to be an excellent start to tackling a problem that has long plagued China. However, some analysts worry the lack of a definition for bad faith may limit the effect that the law could have. [16] Too broad of a definition may harm foreign companies looking to take advantage of the Chinese markets. [17] Including the phrase “no intent to use” has worried some individuals. If this phrase is applied to include foreign firms filing defensive trademarks, it would deny trademarks to companies with legitimate business interests. [18] Unfortunately, the courts in China have been known to side with domestic companies when disputes over trademarks have occurred with American companies. [19]

There is a reason to be optimistic. This is not the only major change that China has made in the last year concerning intellectual property abuse. [20] This suggests that the Chinese government is attempting to improve the climate for foreign firms. There is hope it will attract more foreign companies to the Chinese market, suggesting the courts may start to change course.

While many of the components of the new amendment are encouraging, successfully attracting foreign companies by improving the trademark conditions will require the Chinese government to toe a thin line, allowing international firms to file patents for strategic defensive purposes and preventing bad faith filers from driving foreign business away.

[1] Benny Yip and Catherine Zheng, Good news about bad faith: China amends its Trademark Law, LEXOCOLOGY (June 21, 2019), https://www.lexology.com/library/detail.aspx?g=1add3fb0-713c-4637-9f48-02ffe23be3c3 [https://perma.cc/C9HU-SQ65].

[2] Yip, supra note 1.

[3] WIPO Intellectual Property Handbook: Policy, Law and Use, WORLD INTELLECTUAL PROPERTY ORGANIZATION 90 (2008).

[4] Kitson Sangsuvan, Trademark Squatting, 31 Wis. Int’l L.J. 252, 259 (2013).

[5] WIPO Intellectual Property Handbook: Policy, Law and Use, supra note 2, at 90.

[6] Sangsuvan, supra note 3, at 263.

[7] Yip, supra note 1.

[8] Id.

[9] Sangsuvan, supra note 3 at 262.

[10] Id.

[11] Yip, supra note 1.

[12] Id.

[13] Id.

[14] Id.

[15] Id.

[16] See Frank Ready, China’s Move Against Trademark Trolls Isn’t Sure Bet with U.S. Tech Companies, LAW.COM (July 30, 2019 at 9:30 AM), https://www.law.com/legaltechnews/2019/07/30/chinas-move-against-trademark-trolls-isnt-sure-bet-with-u-s-tech-companies/?slreturn=20190913133554.

[17] Yip, supra note 1.

[18] See Robert Burrell and Michael Handler, Dilution and Trademark Registration, 17 Transnat’l L. & Contemp. Probs. 713, 729 (2008).

[19] Id.

[20] Id.

 

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When Inspiration Becomes Imitation: A Look at Copyright and Trademark Use in Harry Potter-Themed Cafes

Written By: Justine Levy

Sitting in a local cafe in Las Vegas called Bad Owl, I found myself wondering if they acquired licensing rights to one of the biggest franchises in history – Harry Potter. Although the shop was noticeably busy, I could not help but think how pricey that license would cost.

This themed café has distinctive features that anyone familiar with the Harry Potter universe would immediately recognize. Their décor is of owls and magical ornamentation and their tagline is “Serious Coffee with a Hint of Magic.” Those acquainted with Harry Potter will recognize “serious” as an homage to Sirius Black, a significant character in the franchise. Bad Owl also serves a beverage initially entitled “butter beer lattes” but re-branded to “butterbrew” within a year of opening. [1]

When the first location opened, Bad Owl was a sensation, and a media frenzy followed. Their website highlights that they have been featured on Zagat, Cosmopolitan, Fox News, Sprudge, Eater, Thrillist, and PopSugar. [2] I recall seeing videos about the store shared on Facebook by friends and family far from Las Vegas. It is hard to believe that they have avoided the diligent legal watchdogs at Warner Bros. with that level of publicity, unlike the owners of 9 ¾ Café.

9 ¾ Café opened in 2017 in Mong Kok, Hong Kong and differs drastically from the Bad Owl locations in Las Vegas. 9 ¾ Café is less a whimsically inspired coffee shop and more of a literal interpretation of the Harry Potter films. The café is adorned with props from the movie, such as the Gryffindor coat of arms, broomsticks, and wands. There is half of a trolley sticking out from the wall almost identical to the one found at King’s Cross Station in London. And, they sell food and drink items named Professor McGonagall’s Magical Salad, Polyjuice Potion, and Muggle Drink (of which Warner Bros. have trademark registrations on). [3]

Although the restaurant opened in 2017, Warner Bros. only filed suit against the café in January 2019, citing copyright and trademark infringement. [4] It is reported that Warner Bros. is requesting the café change its name and remove the infringing items, damages for use of the copyrights and trademarks, and several injunctions. [5] This is, understandably, not the first time Warner Bros. has pursued legal action against alleged would-be Harry Potter infringers.

For example, in 2009 Warner Bros. shut down a Harry Potter-themed Halloween dinner that was to be held in West London for alleged copyright infringement. [6] Many articles on the story fail to mention the key issue Warner Bros. had with the event – the host Ms. Marmite Lover was selling tickets and charging for the dinner. [7] This means that Ms. Marmite would have been commercializing on the Harry Potter trademark and copyright.

Themed cafes (and dinners) raise many questions about the scope of trademark and copyright protection. How much use of the original material is too much? When does inspiration become imitation? Would a fair use analysis be proper or sufficient for determining boundaries of these cafes?

So, how has Bad Owl avoided a similar fate than that of 9 ¾ Café or Ms. Marmite Lover? It may be because Bad Owl is merely an inspired expression of Harry Potter instead of a literal interpretation.

 

[1] Bradley Martin, Harry Potter-Inspired Bad Owl Coffee Flies to the Southwest, EATER LAS VEGAS (Aug. 7, 2017, 12:00 PM), https://vegas.eater.com/2017/8/7/16104850/bad-owl-coffee-expands-southwest.

[2] BAD OWL COFFEE (Sept. 15, 2019), https://www.badowlcoffee.com.

[3] Coconuts Hong Kong, ‘Harry Potter and the Lawyers of Admiralty’: Wizard-Themed Café Sued for Copyright Infringement, COCONUTS HONG KONG (Jan. 16, 2019, 4:10 PM), https://coconuts.co/hongkong/food-drink/warner-bros-sues-harry-potter-themed-cafe-for-trademark-infringement.

[4] Lianne Tan, Copyright, Trade Marks and Character Themed Cafes, LEGALVISION (Jun. 8, 2016), https://legalvision.com.au/copyright-trade-marks-and-character-themed-cafes.

[5] Hong Kong Harry Potter-Themed Café Sued for infringement, THE COPYRIGHT LAWYER (Jan. 16, 2019), https://copyrightlawyermagazine.com/hong-kong-harry-potter-themed-cafe-sued-for-infringement.

[6] Emma Rowley, Harry Potter and the dinner party of doom, LONDON EVENING STANDARD (Oct. 26, 2009, 11:19 AM), https://www.standard.co.uk/news/harry-potter-and-the-dinner-party-of-doom-6761727.html.

[7] Thom Geier, Harry Potter and the Deathly Lawyers: Warner Bros. blocks a fan’s Potter-themed dinner party, ENTERTAINMENT WEEKLY (Oct. 27, 2009, 3:12 PM), https://ew.com/article/2009/10/27/harry-potter-lawyer-dinner-party.

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Many Cannabis Entrepreneurs “Caught In The Weeds” When Trying To Protect IP

Written by: Danielle Keller

The legal growth, distribution, and commercial sales of cannabis has created an opportunity for many entrepreneurs. However, experts in the industry note several barriers to obtaining protection along with some possible solutions. While it is not impossible to secure IP rights on cannabis-related inventions, there are a “number of factors to consider and a number of complexities.”[1] Some issues the industry is currently running into include:

  • Regulatory complexities: Many state laws that legalize the production and sale of cannabis products conflict with federal law which lists cannabis as a “Schedule 1” drug under the Controlled Substances Act, making possession of cannabis illegal.[2]
  • Troubles with Trademarking: Federal trademark protection is not achievable with the requirement that the thing sought to be trademarked must have a “lawful use in commerce” Under the Federal Trademark Act.[3]
  • Undeveloped Industry: The cannabis industry has been likened to the “wild west”[4] as the industry grows and businesses are working to establish broad protection of their products and processes in gaining a competitive advantage.
  • Patenting a Plant: As with any patent, the inventor bears the burden of proving that their cannabis plant is not a naturally occurring substance as is– rather, they have altered a natural substance so that the invention is new and novel. This is an added level of complexity as developer in this instance must show that the plant can be asexually reproduced.[5]

While this list is not exhaustive, there are certainly a number of factors to consider and a number of complexities to be aware of. Experts urge entrepreneurs to hire an IP attorney early on to navigate these complexities, and to assist in the development of an IP strategy. Businesses should also act fast to submit applications to the USPTO, “I always recommend applying for federal or state trademark registration at the outset of starting a cannabis business,” Jeffrey D. Welsh (founder of Frontera Law Group, a boutique law firm specializing in the legal cannabis industry). [6]

 

[1] Carly Klein, The Complicated Relationship Between IP Law & CannabisIPWatchdog, Nov. 10, 2018, https://www.ipwatchdog.com/2018/11/10/complicated-relationship-ip-law-cannabis/id=102941/.

[2] Id.

[3] Alison Malsbury, The Anatomy of a Cannabis Trademark TTAB DecisionCanna Law Blog, June 16, 2018, https://www.cannalawblog.com/the-anatomy-of-a-cannabis-trademark-ttab-decision/.

[4] Javier Hasse, Protecting Your IP Is (No Surprise) Even Harder in the Cannabis BusinessGreenEntrepreneur, Jan. 2, 2019, https://www.greenentrepreneur.com/article/324845.

[5] Klein, supra note 1.

[6] Hasse, supra note 4.

 

TTAB Update: A Notice of New Rules

Written by: Britney Karim

The changing face of law practice will soon reflect amendments to the Trademark Rules of Practice, or more specifically, the rules put forth by the Trademark Trial and Appeals Board (TTAB). On April 4, 2016, the United States Patent & Trademark Office (USPTO) published the proposed new procedural rules in the Federal Register. [1] Accordingly, the proposed rules will go into effect on January 14, 2017, and will be applicable to cases pending on that date. [2] Further, the rules will affect all inter partes office actions filed with the USPTO, such as trademark oppositions, cancellations, concurrent use proceedings, and ex parte proceedings. [3] Continue Reading

The Battle for the Washington Redskins’ Trademark Rages On

Written by: Sonia Faizy

After nearly two decades, 9,000 billable hours later,[1] and approximately $3.5 million in pro bono legal services for the Native American petitioners,[2] the battle over the Washington Redskins’ trademark continues to rage on with no clear end in sight.On June 18, 2014, the U.S. Patent and Trademark Office (USPTO) canceled the Washington Redskins’ six federal trademark registrations based on a trademark law provision in the Lanham Act[3] prohibiting marks with “immoral, deceptive, or scandalous matter” or “matter which may disparage…persons…or bring them into contempt or disrepute…”.[4] After the Trademark Trial and Appeals Board (TTAB) order against the Redskins on June 18, 2014, the team appealed the decision, claiming that the Lanham Act violated the team’s First Amendment rights, and that the opposing parties failed to meet their legal burden of proving that a sufficient percentage of Native Americans found the term offensive. On July 8, 2015, the trial court denied the Redskins’ Motion for Summary Judgment and affirmed the TTAB’s previous trademark cancellation order. Most recently, on October 3, 2016, the U.S. Supreme Court declined to hear the Washington Redskins’ case before a ruling by a federal appeals court. Continue Reading

The U.S. Versus the E.U. – The Inconsistent Nature of Design Protection

Written by: Daniel Armstrong

How difficult should it be to protect design? It’s a common enough notion: risk-takers and innovators want to be rewarded for creative solutions and designs, but in order to reap the benefits of their labor, the intellectual property they’ve created needs to be protected from copying.

The problem in the US: Many criticize the legal framework in the United States as providing inadequate protection to its designers, and warn that this protection deficit leaves designers feeling less motivated to enter the startup world in the first place. Those critics point to the European Union as an example of how the United States should reform its intellectual property protection framework.

Critics of the US legal framework have three primary complaints: First, the functionality doctrine—which prohibits protection of copyright works, trade dress, or patents that are simply functional, in order to avoid anticompetitive marketplace effects that would result from enforcement—is limiting the scope of design protection. Second, this diminished protection results in lower profits to designers and reduced drive for the public to innovate. Third, the costs and time needed to acquire protection make it harder for new designers and brands to stay ahead of the game, especially in rapidly moving industries like fashion. Continue Reading

“Dumb” Starbucks: “Dumb” Move?

By Wilson Lau

On February 8, 2014, a new coffee shop opened its doors in Los Feliz, Los Angeles. According to the general consensus, the shop’s coffee is “pretty awful,” yet people were willing wait in line for an hour to get a cup of coffee from the new shop. So, what kept these people in line? While curiosity may tempt a few people to try the new coffee shop, more likely than not, it has something to do with its name: Dumb Starbucks. According to patrons, Dumb Starbucks looked identical to the real Starbucks—that is, except for the word “dumb” placed in front of everything.

The mastermind behind Dumb Starbucks is Nathan Fielder, a comedian on Comedy Central. Fielder apparently believes that the real Starbucks cannot sue him because, by adding the word “dumb,” he is technically making fun of Starbucks, and parodies are protected under the Fair Use doctrine of trademark law. According to one court, “[a] parody must convey two simultaneous—and contradictory—messages: that it is the original, but also that it is not the original and is instead a parody.”[1] In the case of Dumb Starbucks, Fielder would most likely satisfy this court’s definition of parody because of the shop’s FAQs listed on the premises, describing the company as a parody. In addition to their FAQs, the baristas working at Dumb Starbucks also told patrons that they are not affiliated with the real Starbucks. Continue Reading