The Trademark Registration Process Trademark Registration Process – How does one go about registering a trademark?  What are some of the requirements in order to obtain protection?  There are many steps and several issues to consider, but overall the process is not arcane or excessively complicated (unlike, for instance, the steps necessary to obtain a...Read More

Swarovski Aktiengesellschaft v. Building No. 19 – Nominative Fair Use Nominative Fair Use – This case highlighted the fact that trademark law is constantly evolving – the major issue was so-called “nominative” use of a trademark, i.e., use of a trademark to refer to the trademark holder’s own goods in an advertisement by a seller...Read More

Trade Dress – Does it Have to Have Secondary Meaning? In a previous post we’ve touched on the idea of trade dress – the packaging of a product, and its “look and feel.”  The configuration of the product itself, such as the shape of a bottle, may also be considered trade dress.  Trade dress is protectable...Read More

Titles of Artistic Works – Implications of Dastar Artistic Works – The United States Court of Appeals for the 7th Circuit recently decided the case of Eastland Music Group v. Lionsgate Entertainment.  This action for trademark infringement, and the court’s subsequent analysis helped settle an issue long weighed by courts and commentators – to what extent...Read More

When Terms are Merely Descriptive Part 2 Merely Descriptive Part 2 – Today we continue our discussion of certain interesting topics within the larger question of when certain terms are classified as merely descriptive.  The classification of a term as a descriptive mark carries with it the consequence that the mark receives no protection whatsoever unless secondary...Read More

Attorneys Fees Under the Lanham Act Attorneys Fees – Today we look at Aviva USA Corporation v. Vazirani, a case recently heard by the United States District Court for the District of Arizona.  Interestingly, Arizona is located in the famous (or infamous) 9th Circuit of the United States, the largest circuit including areas as diverse as Alaska,...Read More

When are Terms Merely Descriptive? Part I We have previously discussed trademark issues with descriptive terms.  To recap, terms that are merely descriptive receive the least amount of trademark protection. A descriptive term, such as “Fish-Fry” – generally does not qualify for protection unless the term has acquired some form of secondary meaning in the perception of...Read More

When is it Ok to Use Another’s Artwork? Use Another’s Artwork? – Today we take a look at the case of Seltzer v. Green Day and examine the circumstances under which one may use the creative works of another person. The major issue in the case was fair use of copyrighted material – in this...Read More

Fair Use of Descriptive Marks Fair Use – Today we take a look at the fair use defense to allegations of trademark infringement.  Beware!  The fair use defense in trademarks is quite different from its more notorious cousin, the fair use defense in copyright actions.  In a previous post we looked at Zatarain’s v. Oak Grove Smokehouse to...Read More

Preliminary Injunctions for Trademark Infringement Preliminary Injunctions – When you accuse someone of infringing your valuable trademark, what actually happens?  In American Rena International Corp v. Sis-Joyce International the United States Court of Appeals for the Ninth Circuit issued a ruling that very clearly articulated the standards for what is known as preliminary injunctions. Preliminary Injunctions, Generally...Read More