Congratulations to Firm Partners, Peter Matos, Jennie Malloy, John Cyril Malloy III, and Oliver Ruiz, on being named to this year’s list of SuperLawyers, and to Firm Senior Associate, W. John Eagan, on being named a Rising Star. Of note, Mr. Matos, Mr. Malloy, and Mrs. Malloy, have been named Super Lawyers for no less than ten years. Relying on a patented process of nominations, research, peer evaluation, and final selection of less than 5% of all attorneys, this Thompson-Reuters company produces one of the more reliable attorney rankings available.
Latest firm news
A Possible Future for Non-Fungible Tokens in Intellectual Property Ownership
In April of this year, IBM and IPwe announced a project to use Non-Fungible Tokens (NFTs) to record the ownership of patents on a blockchain run by IBM. This development is meant to make it easier to buy, sell, and license patents.
Patent ownership is transferred through legal documents known as “assignments,” which function similarly to deeds for real property. Just as a deed is recorded at your local county courthouse to prove the ownership of real property, so are patent assignments recorded at the U.S. Patent & Trademark Office (“USPTO”) to prove the ownership of patents and trademarks.
The issue is that the process of drafting, signing, and recording assignments can be slow. Because of this, buying and selling patents may feel more like the slower speed of buying and selling a house, instead of feeling like the faster speed of buying and selling a financial asset (i.e. a publicly-traded stock or bond). The benefit of such a slower process is, like for real property, the chain of title for a patent can be seen on the USPTO database of assignment records.
Now, this project between IBM and IPwe attempts to combine the transparency of a recordation system with the speed of modern financial transactions by representing the ownership of a patent with an NFT, and recording that NFT on a public blockchain. IPwe plans on using its “Global Patent Marketplace” platform as the online marketplace for buying and selling patent NFTs, which IPwe expects to be working by the last quarter of 2021.
Rap Battle: Copyright Infringement Action Launched Against Childish Gambino
Donald Glover—also known by his stage name “Childish Gambino”—is an award-winning actor, director, rapper, and writer whose most recent claim to fame is his award-winning song “This is America.” The song was a standout during the 2019 award season, where it secured four Grammy Awards, including awards for both Song and Record of the Year.
On May 6, 2021, Plaintiff, Emelike Nwosuocha, a rapper who goes by the name “Kidd Wes,” filed suit against Donald Glover, some of his collaborators, and multiple corporations in the music industry for copyright infringement of the Plaintiff’s copyrighted song “Made in America.” Specifically, the Plaintiff alleged in its complaint that, inter alia, Glover’s “This is America” shares “substantial similarities [with “Made in America”] includ[ing] . . . nearly-identical unique rhythmic, lyrical, and thematic compositional and performance content contained in the chorus – or “hook” – sections that are the centerpieces of both songs.”
The present case is Nwosuocha v. Glover et al. (Case No. 1:21-CV-04047-VM) in the United States District Court for the Southern District of New York. The complaint can be found at the following link: https://www.digitalmusicnews.com/wp-content/uploads/2021/05/childish-gambino-this-is-america-complaint-donald-glover.pdf
In a Copyright Dispute Between Fashion Brands H&M and Unicolors, the U.S. Supreme Court Agrees to Review 17 U.S.C. § 411(b)
In Unicolors, Inc. v. H&M Hennes & Mauritz, LP., the U.S. Supreme Court (SCOTUS) granted certiorari to review copyright statute 17 U.S.C. § 411(b), which covers registration and civil infringement actions.
The case was originally filed in the Central District of California during 2016 by Unicolors over a geometric pattern that it accused fast-fashion leader H&M of copying. In December 2017, a jury entered a judgment against H&M of nearly $850,000 after finding willful infringement. H&M appealed arguing that, because Unicolors allegedly included false information in its application with the Copyright Office, it did not have a valid copyright registration for the work at issue. Specifically, when it applied for registration with the Copyright Office, Unicolors included the disputed pattern in a collection as a “single unit.” Importantly, the Copyright Office requires that, to register a number of works as a single unit of publication, the works must be first published on the same date. Accordingly, H&M argued that Unicolors’ single unit collection of thirty-one designs did not actually share the same date of first publication, rendering the registration invalid. The 9th Circuit reversed, finding that the district court erred in “imposing an intent-to-defraud requirement for registration invalidation” and in determining that Unicolors’ application for “a collection of works did not contain inaccuracies” that would render it invalid.
The questions presented to SCOTUS are as follows: (1) whether the 9th Circuit erred in breaking with its own prior precedent and the findings of other circuits and the Copyright Office in holding that § 411(b) requires referral to the Copyright Office where there is no indicia of fraud or material error as to the work at issue in the subject copyright registration; and (2) whether the 9th Circuit misapplied the publication standard by both applying Copyright Office requirements that were not in place at the time of registration and analyzing publication as of the date of registration as opposed to the later registration application date, and, if so, whether the evidence supported referral to the Copyright Office.
Unicolors, Inc. v. Hennes, 2018 U.S. Dist. LEXIS 230412, 2018 WL 6016989 (C.D. Cal., Sept. 25, 2018).
Circular 34 Multiple Works, United States Copyright Office ( https://www.google.com/url?sa=t&rct=j&q=&esrc=s&source=web&cd=&ved=2ahUKEwiy7qn7hZ_xAhXuSDABHaFsA7wQFjABegQIBRAD&url=https%3A%2F%2Fwww.copyright.gov%2Fcircs%2Fcirc34.pdf&usg=AOvVaw1t_46raKL2_nE0oHv5Vlrf) (last accessed Jun. 17, 2021 at 12:07 PM) (emphasis added).
Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 959 F.3d 1194 (9th Cir. 2020).
Tesla Files Service Mark ITUs, Likely for Elon Musk’s Supercharger Station Restaurant Concept
On May 27, 2021, Elon Musk’s Tesla, Inc. filed three intent-to-use service mark applications in International Class 43 (services for providing food and drink; temporary accommodation) for “TESLA”, “TESLA” (stylized), and its well-known “T” (stylized). Specifically, Tesla wants the registrations to cover restaurant services, as well as pop-up, self-service, and take-out restaurant services. The applications come after years of Musk tweeting about his desire to build 1950’s themed drive-in restaurants at Tesla Supercharger locations. Moreover, in 2017 Tesla’s co-founder and former Chief Technical Officer, J.B. Straubel, reportedly told attendees at the FSTEC restaurant conference that Tesla had already started working on restaurant and convenience store concepts. Tesla’s applications will be assigned to a USPTO examiner for review in approximately three months.
 https://uspto.report/TM/90740067; https://uspto.report/TM/90740072; https://uspto.report/TM/90740074.
 Tesla Supercharger, Wikipedia ( https://en.wikipedia.org/wiki/Tesla_Supercharger) (last accessed Jun. 3, 2021 at 10:23 AM).
 Rhett Jones, Elon Musk Says Rockin’ Drive-In Restaurant, Roller Skating, and Theater Coming to Tesla Supercharger Station, Gizmodo (Jan. 8, 2018 at 10:08 AM) ( https://gizmodo.com/elon-musk-says-rockin-drive-in-restaurant-roller-skat-1821870133).
USPTO Publishes Proposed Rules Implementing Trademark Modernization Act
At the beginning of this year, the Trademark Modernization Act was signed into law which chiefly introduced two new routes to expunge a registration from the records and address a few other issues. The legislation delegated to the USPTO the responsibility to implement rules and procedures, which the USPTO has now published as part of the agency’s notice of proposed rulemaking requirement. Aside from the new proceedings, something of practical significance to all applicants and practitioners is the six month period for reply to an office action may be shortened to three months, extendable for another three months on payment of an extension fee.
USPTO to Celebrate 75th Anniversary of the Lanham Act on June 17th and 18th
This week, the USPTO will celebrate the 75th anniversary of the Lanham Act, the most prominent federal statute governing trademark law in the United States. This historic piece of legislation was drafted throughout the 1930’s by Edward S. Rogers, a renowned Chicago lawyer who specialized in trade identity law, as part of his activity with the American Bar Association (ABA). The Act was later introduced to the 75th Congress by Fritz G. Lanham, a congressman from Texas, in 1938 as H.R. 1654. Due to several disruptions (including World War II), the Act remained pending for several years until its passage in 1946. On July 5, 1946, the Lanham Act was signed into law by President Harry S. Truman and became effective one year later. Since then, the Act has been amended several times, including for implementation of the 1984 Trademark Counterfeiting Act and the 1999 Anticybersquatting Consumer Protection Act (ACPA). 
To celebrate the Act’s anniversary, the USPTO and the State Bar of Texas’ Intellectual Property Law Section will host a two-day event on July 17–18 including a trademark bootcamp, live Trademark Trial and Appeal Board (TTAB) hearings, and the world premiere of 75 Years of the Lanham Act, a documentary by the National Inventors Hall of Fame. Several keynote speakers and panelists will also join the celebration, including U.S. Secretary of Commerce Gina Raimondo, Texas Congresswoman Kay Granger, Commissioner for Trademarks David Gooder, Chief Judge Gerard Rogers of the TTAB, former USPTO Director Michelle Lee, former Commissioner for Trademarks Mary Boney Denison, Jennifer McDowell of the International Trademark Association (INTA), and more.
Over the years, our Firm has handled countless marks under the Lanham Act, including the following (which you may recognize):
Beverly W. Pattishall, The Lanham Act at Fifty – Some History an Comment, 86 Trademark Rep. 442 (1996) ( https://heinonline.org/HOL/LandingPage?handle=hein.journals/thetmr86&div=42&id=&page=).
A Guide to the Lanham Act of 1946, LAWS (Dec. 23, 2019) ( https://trademark.laws.com/lanham-act-of-1946/lanham-act-of-1946-background).
Lanham Act, Wikipedia ( https://en.wikipedia.org/wiki/Lanham_Act) (last accessed Jun. 10, 2021 at 3:40 P.M.).
Lanham Act 75th anniversary celebration, USPTO ( https://www.uspto.gov/trademarks/lanham-act-75th-anniversary-celebration?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=) (last accessed Jun. 10, 2021 at 3:51 PM).
Years of Dispute Between Snack Giants Over “PRETZEL CRISPS” Results in Finding of Genericness
On June 4, 2021, the U.S. District Court for the Western District of North Carolina affirmed a decision by the Trademark Trial and Appeal Board (“TTAB”) that “PRETZEL CRISPS” is generic in connection with pretzel crackers. In 2004, the USPTO refused Princeton-Vanguard’s U.S. Application Serial No. 78/405,596 for “PRETZEL CRISPS” in connection with pretzels based on the position that the mark was merely descriptive. Nevertheless, the company subsequently filed U.S. Application Serial No. for “PRETZEL CRISPS” in connection with “pretzel crackers” in late 2009. Shortly thereafter, snack giant Frito-Lay filed a notice of opposition to the new application, arguing genericness. The TTAB agreed with Frito-Lay, finding “PRETZEL CRISPS” generic.
Princeton-Vanguard appealed to the Federal Circuit, which reversed the TTAB’s decision for application of the incorrect legal standard (but did not address the parties’ arguments). However, the TTAB reached the same conclusion on remand. Instead of appealing once more, Princeton-Vanguard filed a civil action in the Western District of North Carolina seeking review of the latest TTAB decision. While the Court acknowledged that Princeton-Vanguard’s product is “hugely successful,” it ultimately decided that “PRETZEL CRISPS” is generic and therefore not registerable.
This case is Snyder’s Lance, Inc. and Princeton-Vanguard, LLC v. Frito-Lay North America, Inc., Case No. 3:17-cv-00652-KDB-DSC in the Western District of North Carolina.
Image: https://www.walgreens.com/store/c/the-snack-factory-pretzel-chips-original/ID=prod6217047-product?ext=gooKBM_PLA+-+Grocery+(2019+Update)Grocery__pla_local&gclsrc=aw.ds&&gclid=Cj0KCQjwk4yGBhDQARIsACGfAetwqLQxdANyNU7X7oMWm0cls4VP2lT8oWJUK25X3HyT0LJtp4Q8FMaAtu5EALw_wcB (last accessed Jun. 11, 2021 at 4:01 PM).
Air Jordan 1 Obtains Federal Registration
In an event that will provide even greater protection against potential bootleggers of the Air Jordan 1 silhouette, Nike recently obtained a federal trademark protection for the Air Jordan 1 high, Jordan 1 low, and Jordan 1 low SE from the U.S. Patent & Trademark Office. The protected silhouette is now recognized as a “unique product,” which will empower Nike in pursuing infringers that misappropriate the Air Jordan 1 design.
Seattle Bar Takes Slap Shot at Seattle Kraken
On April 22nd, Black Spot LLC—an entity doing business as The Kraken Bar & Lounge (“The Kraken Bar”) in Washington—filed a complaint in King County Superior Court against Seattle Hockey Partners LLC (“SHP”)—owners of the newest National Hockey League (“NHL”) franchise, the Seattle Kraken—for, inter alia, trademark infringement of its name and marks.
The Kraken Bar decided to file suit after it became aware of SHP’s announcement that it would be opening “The Kraken Bar & Grill,” a 4,600 square foot restaurant which will reside about three miles away from The Kraken Bar & Lounge and directly adjacent to SHP’s training facility.
In its complaint, The Kraken Bar, owners and operators of the popular Seattle University District dive bar established in 2011, argued that the official reveal of the Seattle Kraken in July 2020 has led to and will continue to lead to actual confusion on behalf of customers, who have and will genuinely believe that The Kraken Bar is associated with SHP. Although its marks are not registered with the U.S. Patent and Trademark Office (“USPTO”), The Kraken Bar argued its marks “are entitled to protection because they are inherently distinctive of The Kraken Bar’s goods and services and because they were used by The Kraken Bar before SHP adopted [its] confusingly similar name in July 2020.”
Logo for the Seattle Kraken
The present case is Black Spot LLC v. Seattle Hockey Partners LLC in the Superior Court of the State of Washington. The complaint can be found at the following link: https://www.scribd.com/document/504283199/Complaint#from_embed