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Intellectual Property Blog

“TACO TUESDAY”: Spicy Showdown

In a press release issued on July 18, 2023, Taco John’s—a restaurant franchise famous for using the registered mark “TACO TUESDAY” (i.e., U.S. Registration No. 1,572,589) in connection with restaurant services—announced its intent to surrender its federal registration, thereby giving up benefits it accrued over the life of the nearly 45 year old registration. The registered mark, owned by Spicy Seasonings, LLC, was used primarily in connection with Taco John’s since 1989.

The dispute began on May 16, 2023, when Taco Bell filed its Petition to Cancel the mark “TACO TUESDAY” (i.e., TTAB Proceeding No. 92082333), mainly arguing that the phrase has become generic in connection with the identified services. A week after filing its Petition to Cancel “TACO TUESDAY,” Taco Bell took the dispute public, releasing a commercial with LeBron James wherein LeBron is “bleeped” in every instance of saying the phrase “Taco Tuesday.”

According to Taco John’s CEO, Jim Creel, Spicy Seasonings decided not to continue to defend the cancellation action in large part due to the ever-increasing attorneys’ fees. Rather than “paying millions of dollars to lawyers to defend [their] mark,” Spicy Seasonings has opted to surrender its registration for “TACO TUESDAY” and donate $40,000 to the non-profit organization Children of Restaurant Employees (CORE).

Patent Protection Prevails: CAFC Limits the Use of Prior Art to Invalidate Patents

On May 9, 2023, in a significant reversal of a previous Patent Trial and Appeal Board (PTAB) decision, the Court of Appeals for the Federal Circuit (CAFC) ruled in favor of pharmaceutical giant Sanofi-Aventis Deutschland GmbH (“Sanofi”), upholding the validity of its patent (i.e., U.S. Patent No. RE47,614) for a drug delivery device and methods of using the same.

The dispute first arose when Mylan Pharmaceuticals Inc. (“Mylan”) initiated an inter partes review (IPR) of Sanofi’s ‘614 patent, alleging all 18 claims of Sanofi’s patent were obvious. In support of its petition, Mylan claimed that several references—namely, Burren (U.S. Patent Application No. 2007/0021718), Venezia (U.S. Patent No. 2,882,901), and de Gennes (U.S. Patent No. 4,144,957)—taught the ‘614 Patent to one skilled in the art. Despite Sanofi arguing that these references were unrelated to its patent, the PTAB concluded the ’614 patent was invalid using the “analogous art test,” which allows for the consideration of inventions from similar, but not identical, fields as a basis to claim a patent is invalid.

In ruling for Sanofi on appeal, however, the CAFC found that the applicability of the analogous art test—which serves the purpose of examining “whether a reference can be considered as prior art to the challenged patent in the first place”—was limited, as Mylan “adopted [a] problem statement derived from Burren and then worked backward to relate that problem to the ‘614 patent.” Furthermore, the CAFC reasoned that in evaluating “whether a reference is analogous, [the court] consistently held that a patent challenger must compare the reference to the challenged patent.” (emphasis added). As such, the CAFC agreed with Sanofi that the burden of proof to prove the claims’ unpatentability impermissibly shifted from Mylan to Sanofi, and ruled Mylan did not meet the requisite burden to connect de Gennes to the ‘614 patent such that a finding of invalidation would be proper. Accordingly, the CAFC reversed the PTAB’s decision to invalidate the ‘614 patent.

The case is Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc. (Case No. 21-1981) in the United States Court of Appeals for the Federal Circuit. The decision can be found at the following link: https://cafc.uscourts.gov/opinions-orders/21-1981.OPINION.5-9-2023_2123775.pdf

Miami Heat Star Player Jimmy Butler Files Several Trademark Applications Amid the NBA Finals and Eastern Conference Finals

The National Basketball Association (NBA) Finals and Eastern Conference Finals have not stopped the Miami Heat’s 2023 MVP and fan favorite, Jimmy Butler, from adding to his trademark portfolio.

Through applicant ZS Endorsement, LLC on May 24, 2023 — between Games 4 and 5 of the Heat’s battle against the Boston Celtics to reach the NBA Finals — Butler filed intent-to-use Application Serial No. 98/010,313 for “HIMMY BUCKETS” in connection with various goods, including athletic apparel, drinkware, beer, and non-alcoholic beverages such as coffee, tea, soda, and seltzer water.

One week later, on the eve of Game 1 of the NBA Finals against the Denver Nuggets, Butler filed several more intent-to-use trademark applications aimed to protect his well-known nicknames. These new applications include Serial No. 98/022,214 for “PLAYOFF JIMMY,” Serial No. 98/022,285 for “HIMOTHY BUTLER,” and Serial No. 98/022,234 for “HIMMY BUTLER,” all in connection with the same athletic apparel, drinkware, beer, and non-alcoholic beverage goods listed above. Notably, Butler’s portfolio also includes Application No. 90/664,531 for “JIMMY BUCKETS” for athletic apparel and drinkware, which was allowed by the U.S. Patent and Trademark Office (USPTO) in 2021. These filings indicate that the Miami Heat star is likely planning to launch his own athletic clothing and beverage lines.

Butler currently has a total of twenty-four (24) active applications pending before the USPTO via ZS Endorsement, LLC. Many of these applications relate to his “BIG FACE” coffee brand, which Butler reportedly conceptualized during the pandemic while in the 2020 NBA Bubble.

USPTO Record for Application Serial No. 98/022,234 for “HIMMY BUTLER,” owned by ZS Endorsement, LLC

Striking a Chord: TTAB Rules Guitar-Shaped Hotel Trade Dress is Inherently Distinctive

On May 25, 2023, the Trademark Trial and Appeal Board (TTAB) reversed a refusal to register the Seminole Tribe of Florida’s (the “Tribe’s”) trade dress consisting of “a three-dimensional building in the shape of a guitar” (U.S. Application No. 87/890,892)—finding the trade dress to be “inherently distinctive” for casino services, hotel services, restaurant services, and bar services.

In ruling the trade dress was inherently distinctive for such services, the TTAB opined that although the examining attorney deemed the Tribe’s trade dress to be “nondistinctive [and] ambiguous” such that “acquired distinctiveness [would be] required before registration can be granted”—similar to that of Wal-Mart Stores, Inc. v. Samara Bros., Inc., 54 USPQ2d 1065 (2000)—the Tribe’s trade dress is “not a common design . . . is unique, and [is] not a mere refinement of a commonly-adopted and well-known form of ornamentation for” the aforementioned casino services, hotel services, restaurant services, and bar services. As such, the TTAB reasoned that under “the guidance of Two Pesos, Samara Bros., and In re Chippendales USA,” the Tribe’s trade dress is “’tertium quid’ that is akin to product packaging”—illustrating the trade dress as “of such a design that a buyer will immediately rely on it to differentiate the product from those competing manufacturers . . . .” Therefore, the TTAB reversed the refusal to register the Tribe’s trade dress, allowing the application to proceed to registration and obviating the need to rely on the Tribe’s previously-accepted claim of acquired distinctiveness under 15 U.S.C. § 1052(f).

The case is In re Seminole Tribe of Florida, 2023 USPQ2d 631 (TTAB 2023). The image above is provided in the TTAB’s Opinion, which can be found at the following link: https://ttabvue.uspto.gov/ttabvue/ttabvue-87890892-EXA-23.pdf.


The Supreme Court issued a decision today In a highly-followed case involving fair use defenses that were asserted by the Andy Warhol Foundation for Visual Arts. The Foundation asserted the defenses in a case that alleged that Andy Warhol’s use of photographs of the musician Prince infringed U.S. copyright laws. The original photographs were taken by professional photographer Lynn Goldsmith, the party alleging infringement with respect to the Warhol works. The Warhol Foundation argued that Warhol’s changes to the photographs were of a “transformative” nature, including because the Warhol works conveyed a different meaning or message, such that there was no infringement under a fair use defense.

The Supreme Court sided with the photographer on the fair use issues raised in the case. The Supreme Court’s opinion was authored by Associate Justice Sonia Sotomayor and six other Associate Justices joined in the opinion. A dissenting opinion was authored by Associate Justice Elena Kagan, who was joined by Chief Justice John Roberts.

The opinion can be found here: https://www.supremecourt.gov/opinions/22pdf/21-869_87ad.pdf.

Designing a New Path: USPTO Proposes a Separate Design Patent Practitioner Bar

On May 16, 2023, in a move aimed at enhancing efficiency and expertise in design patent proceedings, the United States Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking (NPRM) to establish a separate design patent practitioner bar. The proposed rule—published in the Federal Register—marks a significant development in the field of design patents, as the creation of a separate bar will seek to enhance efficiency, provide tailored guidance to applicants, and foster collaboration among design patent practitioners—all of which can facilitate the exchange of best practices, insights, and strategies, ultimately enhancing the overall quality of design patent applications and prosecutions. The public comment period for the USPTO’s NPRM lasts through August 14, 2023.

The NPRM issued on May 16, 2023 can be found in PDF format at the following link: https://www.govinfo.gov/content/pkg/FR-2023-05-16/pdf/2023-10410.pdf

World Intellectual Property Day

Intellectual property practitioners across the globe celebrated World Intellectual Property Day or “World IP Day” on April 26th. Established in 2000 by the World Intellectual Property Organization (WIPO), the aim of World IP Day is to celebrate innovators and raise awareness about patent, trademark, and copyright law. With a new theme chosen each year, World IP Day 2023 focused on the contributions of women in the IP space. In a statement by WIPO, the organization underscored how women “in all regions are shaping the world through their imagination, ingenuity and hard work . . . .”

Hachette Book Group, Inc. v. Internet Archive, 542 F.Supp. 1156 (2023)

Recently, a federal district court in Manhattan made a significant ruling concerning the way libraries are allowed to lend eBooks under copyright law. In the case, Hachette Book Group, Inc. v. Internet Archive, four publishing houses sued Internet Archive, a free online digital library, for scanning and lending 127 books for free download. Internet Archive claimed it had a right to do so under the doctrine of fair use. However, the Court disagreed, holding that Internet Archive was making “derivative” works that required permission from the copyright holders. More specifically, the Court found that because Internet Archive was purchasing the books only once before scanning and lending each digital copy an unlimited number of times, it was an infringement of copyright. Internet Archive plans to appeal the decision.

Canada Extends Term of Copyright Protection by Twenty Years

The term of copyright protection in Canada was recently extended from fifty (50) years after the life of the author to seventy (70) years after the life of the author. This significant change went into effect on December 30, 2022, as part of Canada’s Budget Implementation Act of 2022. Now, the term of copyright protection in Canada mirrors that of the United States and many other countries. The new law is not retroactive, however, meaning that works in the public domain as of December 31, 2021, do not receive the benefit of the additional twenty (20) years. On the other hand, works that would have entered the public domain at the end of 2022 are benefitted by the change.

Trademark ID Manual is Updated to Include Green Technology

As part of the effort among federal agencies to reduce the impacts of climate change, the United States Patent and Trademark Office is adding new terms to the Trademark ID Manual.  Those new terms will cover goods and services in connection with climate change, including green technology.  Trademark applicants offering green technology will be able to file their application using TEAS Plus, which provides for a reduced application fee.  Thus far, the updated list includes 75 new terms.