Latest firm news

Supreme Court to Hear:  Bad Spaniels v. Jack Daniels

The Supreme Court will decide a trademark infringement case involving a dog toy company’s “Bad Spaniels” whiskey bottles, and Jack Daniel’s Old No. 7 Black Label Tennessee whiskey bottle.  The $17 toy at issue depicts a cartoon spaniel, a reference to Jack Daniel’s Old No. 7, and a disclaimer that states:  “This product is not affiliated with Jack Daniel Distillery.”  After being on the unsuccessful end at the Ninth Circuit Court of Appeals, Jack Daniel’s appealed to the Supreme Court, arguing that the toy company’s product violates the federal Lanham Act.  The toy company’s defense has centered around, among other things, the “expressive work” doctrine under the First Amendment.

USPTO Shortens Response Time for Trademark Office Actions 

In the wake of the Trademark Modernization Act of 2020 (“TMA”), the United States Patent and Trademark Office (“USPTO”) promulgated a new, shorter period for responding to Office Actions on trademark applications. The change flows directly from the USPTO’s amendment of federal regulations to provide flexibility in setting deadlines, including the option to allow for extensions.

Starting on December 3, 2022, trademark applicants will have only three (3) months to address Office Actions as opposed to the six (6) months presently allotted. A single three (3) month extension may be requested for a fee of $125.00 if filed electronically or $225.00 if the request is filed on paper. Notably, foreign applicants filing under the Madrid Protocol, a major trademark treaty, are excluded from the rule and will continue to enjoy the full six (6) month response period without the need to file an extension.

According to the USPTO, the shortened deadlines are intended to increase efficiency in response to an exponential increase in the number of trademark applications filed recently, described as “unprecedented” and a “huge surge.” The raw data indicates a 172% increase in the number of applications filed between December 2019 and December 2020. According to the USPTO, the inundation of applications has resulted in a “significant increase in unexamined application inventory,” resulting in “longer than normal wait times at various stages of the application process . . . .”

It remains to be seen whether the new response protocols will expedite the examination process or result only generating more USPTO fees.

Banksy is Victorious in a European Union Trademark Case, Keeping Trademark Rights and Maintaining Anonymity

The European Union Board of Appeals recently overturned a 2021 decision by the EU’s Intellectual Property Office (EUIPO) that found Banksy’s trademark of his well-known graffiti ape “invalid in its entirety.” This appeal stemmed from an opposition filed back in 2019 by a greeting card company called Full Colour Black. In the opposition, Full Colour Black alleged that the subject registration was filed in bad faith and that the work was not distinctive. However, as the EU’s Board of Appeals found that Full Colour Black failed to prove the trademark was filed in bad faith, Banksy now keeps the trademark rights and maintains anonymity.  

Update on Unicolors, Inc. v. H&M Hennes & Mauritz, LP

As an update to a blog entry on June 18, 2021, the U.S. Supreme Court heard Unicolors, Inc. v. H&M Hennes & Mauritz, LP in February of this year.

By way of background, H&M argued that Unicolors’ copyright registration was invalid because Unicolors improperly filed one copyright application for over thirty (30) fabric designs that were not originally published together. The legal basis for H&M’s argument was that a collection of works does not qualify as a so-called “single unit of publication” unless all individual works in the collection were first published together. Therefore, Unicolors’ registration was susceptible to invalidation.

In its decision, the Court held that the 9th Circuit was incorrect in finding that Unicolors could not benefit from the safe harbor provided by U.S.C.S. § 411(b)(1). The safe harbor states that a certificate of copyright registration is valid even if it contains inaccurate information, so long as the copyright holder lacked knowledge of the inaccuracy. The Court further determined that § 411(b) does not distinguish between a mistake of law and a mistake of fact – either can excuse an inaccuracy in a copyright registration and therefore save the registration from invalidation.

Ultimately, the Court held that Unicolors was eligible to benefit from the safe harbor because its lack of knowledge of the “single unit of publication” requirement was due to its failure to understand the law, rather than the facts.

Earlier this month, the 9th Circuit affirmed the district court’s judgment on remand and held that Unicolors’ registration came within the protection of the safe harbor provision. Further, the 9th Circuit determined that a party must show the following when seeking to invalidate a copyright registration under § 411: (1) the copyright holder submitted an inaccurate application; (2) the copyright holder knew that the application failed to comply with the requisite legal requirements; and (3) the inaccuracy was material to the decision to register the applied-for work(s).