Trademarks and Brands

Ninth Circuit Holds First Amendment Tolerates Whiskey-Inspired Parody Dog Toys in Trade Dress Spat

By Scott J. Sholder

A legal decision that simultaneously upholds the foundational tenets of free speech while quoting a dog toy’s claim to be “43% Poo by Vol” and “100% Smelly” is a welcome spot of levity in these trying and stressful times. The Ninth Circuit offered both in VIP Products v. Jack Daniel’s Properties, Inc., a recent decision holding that the First Amendment shields parodic uses of trademarks and trade dress in consumer products.

Background

Between 2007 and 2017, VIP Products LLC (“VIP”) sold dog toys called “Silly Squeakers,” which were designed to look like bottles of well-known beverages “but with dog-related twists” – in this case, “Bad Spaniels” as a play on Jack Daniel’s. The Bad Spaniels toy, introduced in 2013, resembles a Jack Daniel’s bottle, features a picture of a dog, and sports the phrase “the Old No. 2, on your Tennessee Carpet” and the above-mentioned “alcohol” content description. (A bottle of Jack Daniel’s bears the phrases “Old No. 7 Brand Tennessee Sour Mash Whiskey.”) VIP claimed that the purpose of its toys’ design was to comment on “the humanization of the dog in our lives” and “corporations [that] take themselves very seriously.”

Jack Daniel’s Properties, Inc. (“JDP”) was apparently one of those companies and did not take kindly to VIP’s canine-inspired take on its iconic brand of spirits. In 2014 JDP wrote to VIP demanding that it “cease all further sales of the Bad Spaniels toy.” In response, VIP filed an action seeking a declaratory judgment of non-infringement or dilution of JDP’s trademark rights, a ruling that the “Jack Daniel’s trade dress and bottle design are not entitled to trademark protection,” and cancellation of JDP’s registered bottle design. JDP counterclaimed for trademark and trade dress infringement as well as trademark dilution by tarnishment.

After dueling summary judgment motions, the district court, among other rulings, denied VIP’s First Amendment defenses and confirmed the protectability of JDP’s trade dress. A four-day bench trial on JDP’s dilution claim and likelihood of confusion resulted in a ruling in favor of JDP and a permanent injunction against sales of the Bad Spaniels toy. VIP appealed to the Ninth Circuit Court of Appeals, which issued a mixed ruling, affirming the protectability of JDP’s trade dress but reversing the lower court’s ruling on the First Amendment.

Ninth Circuit Decision

The appeals court, in addressing VIP’s First Amendment defense, explained that the Lanham Act’s “likelihood of confusion” standard generally “seeks to strike the appropriate balance between the First Amendment and trademark rights,” but in the context of artistic expression, a more stringent test in favor of free speech applies because likelihood of confusion “fails to account for the full weight of the public’s interest in free expression.” The Ninth Circuit explained that it had adopted, in Mattel, Inc. v. MCA Records, a test originally promulgated by the Second Circuit in the seminal case Rogers v. Grimaldi, which dealt with protectable names used in the titles of expressive works. That test requires a plaintiff to demonstrate that a defendant’s use of the plaintiff’s name/mark in an expressive work is either (1) “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the source or content of the work.” The court’s analysis focused on the threshold issue of why a dog toy is considered an expressive work, the key question being whether the work “communicat[es] ideas or express[es] points of view.”

The panel explained that expressive works are “not rendered non-expressive simply because” they are sold commercially, yet do not need to be the “expressive equivalent of Anna Karenina or Citizen Kane.” The Bad Spaniels toys were expressive works because they communicated a “humorous message” through “word play to alter the serious phrase that appears on a Jack Daniel’s bottle – ‘Old No. 7 Brand’ – with a silly message – ‘The Old No. 2.'” The juxtaposition of an “irreverent representation of the trademark with the idealized image created by the mark’s owner” rendered the Bad Spaniels toy a First Amendment-protected work conveying the message that “business and product images need not always be taken too seriously.” This message was key; the vessel of the dog toy was effectively deemed irrelevant (and, the court noted, its conclusion was consistent with a 2007 Fourth Circuit decision protecting parodic dog toys based on Louis Vuitton hand bags).

As a procedural matter, the court did not address the substance of the two-prong Rogers test because the district court had not even found that Bad Spaniels was an expressive work. The court therefore vacated the lower court’s finding of infringement and remanded for an analysis of the Rogers test.

The Ninth Circuit panel went on to reverse the trial court’s ruling that VIP had diluted JDP’s trademark because noncommercial use of a mark is not dilutive, and VIP had not engaged in purely commercial speech. Specifically, VIP had done more than simply propose a commercial transaction by creating “protected expression” even though it was selling a product. Because VIP’s humorous message was protected by the First Amendment, its use of the JDP trade dress could not have diluted JDP’s brand.

The VIP case is the most recent example of the continued expansion of the Rogers test into a more encompassing First Amendment safeguard, at least in the Ninth Circuit. In 2008, the Ninth Circuit held in E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., that, in the context of video games, the Rogers test applied not only to trademark use in titles of artistic works, but also to material in the body of the works. And just two years ago, in Twentieth Century Fox Television v. Empire Distribution, Inc., the court held that Fox’s use of the name “Empire” for its hit TV show was protected by the First Amendment against claims of trademark infringement by record label Empire Distribution, opening the Rogers umbrella to cover Fox’s promotional uses of the “Empire” mark for live musical performances, cast appearances, and on consumer goods like T-shirts and champagne glasses. The VIP decision represents a predictable next step of expansion of the Rogers doctrine out of the realm of creative media properties like television and video games (for which merchandising is ancillary) to consumer goods as a distinct category of creative expression.

VIP is a clear victory for creators of expressive works, reinforcing the importance of balancing trademark rights with artistic expression and the ability of creators of even garden-variety consumer products to make a living from the fruits of that expression. Brand owners, on the other hand, will likely see the decision as a weakening of trademark protections and a blank check for content creators to profit from uses of marks outside traditional artistic content. Of course, VIP is only binding in the Ninth Circuit, but it stands to reason that other like-minded courts such as the Second Circuit (originator of the Rogers test) and the Fourth Circuit (which addressed the Louis Vuitton dog toy case mentioned above) may follow suit. While creators of expressive products may take some more comfort in their First Amendment rights, trademark proprietors should carefully assess the facts of brewing disputes, especially in these circuits, before asserting claims. And, particularly with parody products, brand owners should consider whether litigation is the best solution or if there are other compromises like disclaimers or outside-the-box business solutions.

This article was published by the Media Law Resource Center (MLRC) on May 6, 2020

Supreme Court Rejects Willfulness Requirement for Profit Awards in Trademark Infringement Actions

By Sara Gates

In a recent decision of considerable importance for trademark practitioners, the U.S. Supreme Court finally resolved a longstanding split among the circuits when the Court held that willfulness is not required to award the plaintiff profits in a trademark infringement action. Romag Fasteners, Inc v. Fossil, Inc., No. 18-1233, 2020 WL 1942012 (U.S. Apr. 23, 2020). Justice Gorsuch delivered the majority opinion in the unanimous decision, expressly rejecting the willfulness prerequisite to profit awards adopted by the Second and Ninth Circuits, which both handle a high volume of the nation’s trademark cases.

Background

The case before the Court involved a dispute over handbag fasteners between Romag Fasteners, Inc., a company that manufacturers the fasteners, and Fossil, Inc., a company that uses the fasteners on its handbags. For years, Romag and Fossil worked together under an agreement that permitted Fossil to use Romag’s fasteners on its handbags. As Romag later discovered, however, factories in China making Fossil products were using counterfeit fasteners, instead of Romag’s products. Believing that Fossil was not policing these factories, Romag sued Fossil for trademark infringement and false representation (along with other claims, including patent infringement).

The issues of fact went to the jury, which agreed with Romag’s view and found that, while Fossil had acted with callous disregard, its actions were not willful. Though the jury made its advisory awards, the Judge Janet Bon Arterton of the U.S. District Court for the District of Connecticut determined that Romag could not recover Fossil’s profits on the trademark infringement claim without a finding of willfulness. On appeal to the Federal Circuit, the Court upheld the district court’s decision, finding that it was consistent with Second Circuit precedent (the District of Connecticut sits within the Second Circuit). Romag’s writ of certiorari to the Supreme Court followed, and the Court granted the writ, presumably to resolve the outstanding circuit split that has persisted for more than 20 years.

Decision

The Court did just that in its recent decision, which fully and finally rejected the view that a showing of willfulness is a prerequisite to a profit award in trademark infringement actions. As the Court explained, while the infringer’s state of mind is certainly an important and valuable consideration, it is by no means a requirement for a court to award a trademark owner the infringer’s profits.

In reaching the decision, the Court relied heavily on the text of the Lanham Act, the statute governing recovery of federal trademark violations, and, specifically, 15 U.S.C. § 1117, the Lanham Act’s damages provision. The Court pointed out that states of mind, or mens rea, are carefully addressed in that section of the statute, as they are throughout the entirety of the Lanham Act. For example, the plain text of § 1117(a) provides for recovery of an award of the infringer’s profits for any violations of 15 U.S.C. § 1125(a) (i.e., trademark infringement), but for violations of § 1125(c) (trademark dilution) the statute clearly requires a willful violation for such an award:

When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 1125(a) or (d) of this title, or a willful violation under section 1125(c) of this title, shall have been established in any civil action arising under this chapter, the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity, to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. . . .

17 U.S.C. § 1117(a) (emphasis added).

The Court determined that the use of the term “willful” in one instance in § 1117(a), but not in another, indicated Congress’ intent with regard to how mental states should be treated vis á vis profit awards for particular violations. Likewise, in other sub-sections of § 1117, mental states are included judiciously in certain instances, but not others. As the Court, in its interpretation of the law, is careful not to read words into statutes that are not present, it declined to adopt the Second and Ninth Circuit’s interpretations and read in a “willful” requirement for violations of § 1125(a).

The Court similarly rejected other arguments lodged by Fossil, again turning to the text of the statute. For instance, Fossil argued a profit award was appropriate pursuant to “principles of equity” in § 1117(a). The Court discussed the definition and meaning of “principles of equity,” finding it unlikely that Congress intended for this language to denote such a narrow rule regarding profit awards. Even considering pre-Lanham Act case law, the Court again noted that there was no clear rule regarding a willfulness prerequisite, leading the Justices to the conclusion that, at most, mens rea was an historically important consideration in awarding profits but never a requirement. As the Court pointed out, the importance of mens rea has continued under the Lanham Act, as reflected in the provision of greater statutory damages for willful violations in § 1117(c). Finally, the Court briefly rejected Fossil’s policy argument, stating that the Court would instead leave the policy decisions to the policymakers in Congress.

With this decision, trademark plaintiffs will face one less obstacle when establishing their entitlement to an award of a defendant’s profits. In practical terms, courts will likely see fewer motions for summary judgment on willfulness, as defendants may no longer use this tool to foreclose a plaintiff’s ability to obtain the defendant’s profits. Though the Court’s decision that courts may award profits absent a finding of willfulness may, in theory, open the doors to more profit awards, it is unlikely to result in windfalls to plaintiffs. As courts have long recognized, the infringer’s state of mind bears on the relief the trademark owner should receive.

The Supreme Court echoed the well-established notion that an infringer’s state of mind bears on the relief the plaintiff should receive when it clearly articulated that a defendant’s mental state “is a highly important consideration in determining whether an award of profits is appropriate” in trademark infringement actions. Romag, 2020 WL 1942012, at *4. There is just no particular mental state required for profit awards, so it remains in the discretion of the courts, and juries, to determine what is appropriate under the circumstances.

This article was published by the Media Law Resource Center (MLRC) on May 6, 2020

CDAS IP Group and Partner Nancy Wolff Recognized in Chambers USA 2020


The highly regarded “Guide to the Top Lawyers and Law Firms” described CDAS as a “highly skilled boutique offering excellent capabilities handling trademark and copyright infringement cases, as well as substantial portfolio management matters. [CDAS] exhibits expertise acting for market-leading entertainment, media and digital platform clients.” In addition to recognizing the firm for Intellectual Property: Trademark, Copyright & Trade Secrets (New York), Nancy Wolff was also recognized as “a leading attorney in IP issues relating to digital media, counseling clients in a broad range of matters including disputes and licensing.”


CDAS’ Nancy Wolff Examines the “Anatomy of an Ad” at the Cardozo Advertising Law Symposium

Join Nancy and other legal and advertising experts as they put advertising under a microscope, taking an in-depth view of the deals, the laws, the risks and the trends in today’s “ad biz.” Register here for the March 23rd event at the Cardozo School of Law.

Top Five List: Protecting Your Podcast (and You)

By Scott J. Sholder

Although podcasts have been around in one form or another since the early aughts, their ubiquity and popularity has skyrocketed in recent years.  Apple, Spotify, Pandora, Google, and Stitcher, among other platforms, have changed the game when it comes to distribution, variety, and access.  Wildly popular programs like Serial, Pod Save America, My Favorite Murder, and The Daily have set the standard for content excellence across the news and mystery genres, while The Joe Rogan Experience, Comedy Bang! Bang!, WTF with Marc Maron, and Conan O’Brien Needs a Friend are leading the way in the comedy space.

If you want your dulcet tones to break into the digital airwaves and bring your audience information or entertainment and laughs (or maybe all three), you will of course need solid distribution and top-notch content.  But you also need legal protection both for you and for your content.  While podcasting may seem straightforward enough to not warrant the involvement of a lawyer, there’s more to it than you might think.  Here are five things to do to protect yourself and your content when entering the world of podcasting.

  1. Form a Company:  You may have already done this, but setting up a company, whether a corporation, partnership, or LLC, is a smart first step in becoming a content provider.  Apart from tax implications (which your accountant can explain to you), the corporate form creates a shield around you to protect your personal assets from certain forms of liability (for instance, breach of contract), limiting legal exposure to the assets of the company where it can be said that the company is the liable party.  The corporate form may not protect you from torts such as defamation and copyright infringement if you (intentionally or not) slip up in your individual capacity, but the company can still potentially absorb the exposure for torts it is deemed to have committed.  You may also want to use a corporation or LLC to hold your intellectual property (more on IP below) or “loan out” your services as talent, which can be helpful from a financial standpoint (again, talk to your accountant).  Setting up a company can be simple enough to be a DIY project but might become more complicated, requiring professional advice, depending on the arrangement you want and if you have multiple shareholders or members.  But it’s generally not that expensive and could save you headaches in the long run.  Once you’ve formed your company, make sure that you assign any existing contracts to the company (an attorney can help you with this as well), and that future contracts are in the name of the company – not your own name.

  2. Obtain Copyright and Trademark Protection:  To protect your original content, you should apply to register copyrights in that content.  While ideas and concepts are not copyrightable, the tangible expression of those ideas is, including scripts, sound recordings, skits or sketches, songs, and even, in some instances, individual jokes.  If the content is original to you (i.e., not simply copied from someone else) and is in a “fixed” medium of expression, you can apply to register your work with the U.S. Copyright Office.  The application process is more straightforward than the trademark process (discussed below) and the basic fees are reasonable; the bar to obtaining a registration is also pretty low in that “originality” for copyright purposes requires only minimal creativity, and it is far less likely that another copyright owner will challenge your application.  While it may seem onerous to register each episode of a podcast – especially if you release episodes more than once a week – there are ways to potentially streamline the process and keep costs down, and copyright counsel can be helpful in this regard.  Registering copyrights will also help you if your podcast one day moves into other media, such as television or a published book.

    Have a clever name for your podcast?  You should consider applying for a trademark registration.  If you offer goods or services (including entertainment services like podcasts) using a name, logo, or short phrase as a source indicator, you may be eligible for federal trademark protection through the U.S. Patent and Trademark Office.  Simply using the word, phrase, or logo “in commerce” is enough to give you some rights to enforce against infringers, but registration gives you more rights and enhanced damages if someone tries to rip off your mark.  It’s important to note, though, that there are filing fees and other expenses involved in applying to register a trademark (and in maintaining a trademark once it is registered), and during the application process other trademark owners have a chance to challenge your mark if they think it is too similar to theirs.  The application process is also more complex than applying to register a copyright and it is usually advisable to seek legal counsel to help ensure your mark is not “blocked” or otherwise rejected. 

  3. Obtain Necessary Licenses, Releases, and Permissions:  If you are using third-party content (playing audio clips or music, reading from a script or a book, etc.), you should make sure you have permission to do so from the owner of the copyright.  Despite popular misconceptions, there is no magic percentage that you can use without consequence (e.g., 8 measures of a song, 30 seconds of a comedy bit, 5% of a book) and the question of whether something is “fair use” is complex, gray, and extremely fact sensitive.  The best practice is to make sure you have a license (whether written or oral) to use content that is not exclusively yours or seek out content from royalty-free libraries or that can be used under Creative Commons licenses.  And when that content includes the voice or other identifying aspect of a third party, you’ll need to get that person’s permission as well, separate from the necessary copyright permissions.  A person’s voice is part of their “right of publicity” which is distinct from copyright and generally (with some exceptions) requires permission to use.

    If you have guests appear on your podcast, make sure they sign an appearance release that allows you to use their names and likenesses (e.g., voices) including for commercial, advertising, and promotional purposes and that releases you from liability for the ways in which guests’ names and likenesses are used.  While the best practice is to get written permission, you can also secure this consent verbally by having the guest read a brief script on air.  There are special considerations when dealing with minors that are beyond the scope of this article, and in such situations, it is best to consult a lawyer familiar with minor talent. 

  4. Vet Your Content and Read Your Contracts:  Related to number 3, if you are using third-party content (assuming you have permission), you should make sure that content doesn’t infringe anyone else’s rights.  Issues in the podcasting space, especially in comedy, usually arise in the context of defamation.  For example, if you source a clip of another comedian’s latest standup special and that comedian makes a defamatory statement about another identifiable person, you may be liable for re-publishing that defamatory statement.  The best practice is to review content before using it and consult a lawyer if you have concerns about any piece of content. 

    Also, if you sign any contracts, whether to acquire or license content, or for a third party to distribute or host your own content, read them before you sign them.  If you sign a contract you normally are bound even if you haven’t read it, so always understand what you are signing before you put pen to paper or fingers to keyboard.  When licensing third-party content, make sure you’re indemnified in case the person who provided you with the content didn’t have sufficient permission to do so, and when reviewing terms set out by hosting platforms, know who controls your RSS feed; typically, the host will control it for the period they host it, but unless your content is exclusive to one platform (for instance, Spotify), the platform should not own the stream or the content.  And note that in many jurisdictions, an email agreement is considered a binding contract – so be careful what you agree to via email.  Usually the best time to engage an attorney is when an offer is initially made to you – even if it takes the form of an email as opposed to a formal contract.  There are obviously more issues that may arise than just these, so don’t sign away your rights unknowingly!

  5. Get Errors and Omissions Insurance:  Many insurance companies offer E&O insurance for media and entertainment companies (such as AXIS Capital, AXA XL, QBE, and OneBeacon) and getting coverage is a smart idea particularly given how much litigation arises out of media and entertainment properties.  Media insurance policies often cover copyright and trademark claims, contract claims, defamation claims, and other risks that commonly arise in the media and entertainment space.  While this may seem like an unnecessary cost, especially for an individual or small business, those who make their living in media and entertainment should seriously consider it – and as the podcast business becomes more mature and sophisticated, insurance is increasingly being required in connection with certain forms of distribution.

CDAS Named a Top Tier Firm, Nationally, for Entertainment Law and Trademark Law in U.S. News – Best Lawyers® “Best Law Firms in America 2020,” and achieved High Rankings in Copyright and Media Law

CDAS achieved a Tier 1 ranking nationally for Entertainment Law – Motion Pictures & Television as well as Trademark Law. The firm was also ranked nationally in Tier 2 for Copyright Law. Within New York City, CDAS was ranked in Tier 1 for Entertainment Law – Motion Pictures & Television, Copyright Law and Trademark Law, and in Tier 3 for Media Law.

These competitive rankings are based on extensive client and peer review, focused on practice group expertise, responsiveness, understanding of business needs, cost-effectiveness, and other important parameters. Inclusion in “Best Law Firms” is considered a significant achievement.

SCOTUS Rules Federal Ban on Registration of “Immoral” or “Scandalous” Trademarks Violates the First Amendment

In a major win for free speech advocates, on Monday, June 24, 2019, the United States Supreme Court ruled that a federal statutory ban on the trademarking of words and symbols that are “immoral” or “scandalous” violates the First Amendment.

Erik Brunetti of Los Angeles, a fashion designer for the streetwear brand “FUCT,” brought suit after being denied registration of the mark “F-U-C-T.” Brunetti applied for registration of the mark in 2011, but an examining attorney of the United Stated Patent and Trademark Office refused registration on the grounds that the phonetically profane term was too “highly offensive” and too “vulgar.” Brunetti appealed to the Trademark Trial and Appeal Board (the “TTAB”), but to no avail, as the TTAB affirmed the registration refusal. Brunetti took his case to the Court of Appeals for the Federal Circuit and sought a facial Constitutional challenge to the Lanham Act’s ban on “immoral or scandalous” marks; the appeals court held that the ban violated the First Amendment, and the Supreme Court granted cert.

In a rare bipartisan ruling, Justice Elena Kagan wrote for the majority, and in a 6-3 decision, was joined by Ruth Bader Ginsburg, Samuel Alito, Neil Gorsuch, Brett Kavanaugh, and Clarence Thomas. Justice Alito added a brief concurrence, and justices Sotomayor, Roberts, and Breyer each concurred in part and dissented in part.

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Cowan, DeBaets, Abrahams & Sheppard LLP Recognized as a 2019 Tier 1 National Firm for Entertainment Law – Motion Pictures & Television by U.S. News-Best Lawyers “Best Law Firms”

Cowan, DeBaets, Abrahams & Sheppard LLP is pleased to announce it has been named a Tier 1 national firm for Entertainment Law – Motion Pictures & Television for the second consecutive year by the 9th Edition of U.S. News-Best Lawyers “Best Law Firms.” CDAS is one of only 24 firms to receive this honor. Review the full list here.

CDAS was also recognized as a Tier 1 New York City Regional Firm in the areas of Copyright Law, Entertainment Law – Motion Pictures & Television and Trademark Law.

Law firms ranked in the top-tier of the “Best Law Firms” guide are recognized for professional excellence and consistently receiving high ratings from clients and peers. The U.S. News – Best Lawyers “Best Law Firms” rankings are determined by a rigorous peer-review survey comprised of more than 7.3 million evaluations from leading lawyers, as well as client evaluations, peer reviews from top attorneys and more.

Earlier this year, six CDAS attorneys were selected for inclusion in the 25th Edition of “The Best Lawyers in America:”

Frederick P. Bimbler         Entertainment Law – Motion Pictures and Television

Susan H. Bodine                Entertainment Law – Motion Pictures and Television; Media Law

Andrea F. Cannistraci       Entertainment Law – Motion Pictures and Television

Eleanor M. Lackman         Copyright Law; Trademark Law

Stephen Sheppard             Entertainment Law – Motion Pictures and Television

Nancy E. Wolff                   Copyright Law; Trademark Law

 

 

Chambers USA 2018 Ranks Partners Lackman and Wolff as Top IP Attorneys; Recognizes Two Cowan, DeBaets, Abrahams & Sheppard LLP (CDAS) Practice Groups

Cowan, DeBaets, Abrahams & Sheppard LLP is delighted to announce that partners Eleanor M. Lackman and Nancy E. Wolff and both CDAS’s Entertainment and IP, Copyright and Litigation Practices have been recognized by Chambers and Partners in the Chambers USA 2018: America’s Leading Lawyers for Business guide.

Eleanor M. Lackman

Nancy E. Wolff

This is the fifth consecutive year Ms. Lackman and the second consecutive year Ms. Wolff have been ranked in the Chambers USA guide. They are both among just 41 New York lawyers ranked in the field of “Intellectual Property: Trademark, Copyright & Trade Secrets – New York.”

“Impressed sources” told Chambers that Ms. Lackman is “an absolutely incredible trademark litigator” and added: “She is very practical and always seems to make the right call.” She also has notable experience handling copyright matters, often advising clients across the media and entertainment industries.

Chambers describes Ms. Wolff as “very well-known and well-respected.” She receives plaudits for her expertise in a range of complex copyright matters and is highlighted for her particular skill across the photography and visual art industry.

CDAS’s Entertainment Practice was awarded a regional designation of “Noted Firm” in “Media & Entertainment: Film, Music, Television & Theater – New York” for the third consecutive year, while the Firm’s IP, Copyright and Litigation Practice received a  “Noted Firm” designation in “Intellectual Property: Trademark, Copyright & Trade Secrets – New York” for the second consecutive year.

The annual guide ranks law firms and lawyers based on in-depth interviews with clients and lawyers, technical legal ability, professional conduct, client service, commercial astuteness, diligence, commitment, and other qualities most valued by the client.

Children’s Clothing Company Sinks in Trademark Row Against Viacom Over its Use of Term “GUPPIES” in Promotional Merchandise for “Bubble Guppies” Cartoon

The U.S. Court of Appeals for the Sixth Circuit recently affirmed a lower-court decision that Viacom’s use of the trademark “BUBBLE GUPPIES” for promotional merchandise for its show of the same name did not infringe on a children’s clothing brand that had registered the trademark “GUPPIES,” primarily because the “GUPPIES” mark – which had been used for many years before Viacom’s use– was relatively unknown to the public.

According to the lawsuit, Plaintiffs Debbie and Dean Rohn have operated Guppie Kids, Inc., a children’s apparel brand, since 1990.  The couple registered two trademarks for apparel-related items: one for the word “GUPPIE,” an acronym for “Growing Up Playing Pursuing Individual Excellence,” and the other for a logo: the word “GUPPIE,” in which a fish in a necktie forms the letter G.   Continue reading

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