Andrea Shannon (US)

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U.S. Supreme Court Agrees to Hear Case on Application of the Discovery Rule on Damages

By Andrea Shannon (US) on October 2, 2023 Posted in Copyright, Intellectual Property

The U.S. Supreme Court agreed on Friday to hear a case this term to decide whether a copyright plaintiff can recover damages for acts that occurred more than three years after the filing of a lawsuit. The case is poised to resolve a judicial split among the federal courts of appeal in how they apply … Continue reading

Taco Bell Petitions to Cancel TACO TUESDAY Trademarks at U.S. Trademark Office

By Andrea Shannon (US) on May 24, 2023 Posted in Trademark

Almost everyone has probably heard of “Taco Tuesday.” Ads, local restaurants, celebrities—they use this popular slogan to refer to the idea that it is fun to eat tacos on Tuesdays. But although this phrase is used by many, two restaurant companies actually own TACO TUESDAY trademark registrations that they can assert as conclusive evidence of … Continue reading

Federal Circuit upholds constitutionality of TTAB judges

By Andrea Shannon (US) and Robert Greeson (US) on September 7, 2021 Posted in Patents, Trademark

This week the Federal Circuit rejected a constitutional challenge to the Secretary of Commerce’s appointment of administrative judges to the Trademark Trial and Appeal Board (“TTAB”) at the U.S. Patent and Trademark Office (“USPTO”). The decision comes on the heels of the Supreme Court’s decision in June in Arthrex v. Smith & Nephew, which stated … Continue reading

A Generic Word Combined With “.Com” Can Create A Protectable Trademark

By Felicia Boyd (US) and Andrea Shannon (US) on July 8, 2020 Posted in Trademark

In United States Patent And Trademark Office, Et Al., v. Booking.Com B. V. (No. 19-46, Jun. 30, 2020), the Supreme Court held that the combination of a generic term with “.com”—referred to as a “generic.com term”–could be a protectable trademark. Booking.com, an enterprise that maintains a travel-reservation website by the same name, sought federal registration … Continue reading

USPTO Expedited Initial Examination for COVID-19-Related Trademark Applications

By Andrea Shannon (US) on June 18, 2020 Posted in Trademark

On June 15, 2020, the U.S. Patent and Trademark Office (“USPTO”) announced a new program, effective June 16, 2020, to help expedite the initial examination of U.S. trademark applications for marks relating to qualifying COVID-19 medical goods or services. The USPTO typically examines trademark applications in the order they are filed, with most applicants receiving … Continue reading

U.S. Supreme Court and “Scandalous” Trademarks

By Andrea Shannon (US) on June 24, 2019 Posted in Trademark

Two years after the United States Supreme Court struck down the ban on disparaging trademarks, the Supreme Court has now struck down the Lanham Act’s similar ban on the registration of scandalous and immoral trademarks at the U.S. Patent and Trademark Office. Iancu v. Brunetti, No. 18-302, 588 U.S. _____ (2019). On June 24, 2019, … Continue reading

The Slants Win: SCOTUS rules “Disparaging” trademark provision unconstitutional

By Andrea Shannon (US), Saul Perloff (US) and Andre Hanson (US) on June 20, 2017 Posted in Trademark

On June 19, 2017, the United States Supreme Court issued a much-anticipated decision, holding that the so-called “disparagement clause” of the Lanham Act is an impermissible restriction on free speech under the First Amendment. The ruling is the culmination of years of litigation, and clears the way for Simon Shiao Tam and the Slants to … Continue reading

U.S. Trademark fees increase on January 14

By Andrea Shannon (US) on January 4, 2017 Posted in Trademark

On January 14, 2017, the U.S. Patent & Trademark Office (USPTO) will implement a number of fee increases for trademark applications and other trademark filings. A full schedule of the fee changes is available on the USPTO’s website. As we previously reported, the USPTO proposed most of these fee changes last summer with a period … Continue reading

Update: INTA files amicus brief with SCOTUS in Slants case

By Andrea Shannon (US) and Saul Perloff (US) on December 21, 2016 Posted in Trademark

On December 16, 2016, the International Trademark Association (“INTA”) filed an amicus brief with the U.S. Supreme Court in support of Simon Tam, founder of the Slants. Lee v. Tam, No. 15-1293, Br. Of Amicus Curiae Int’l Trademark Assoc. INTA—a global association comprising more than 7,000 trademark owners and legal practitioners—urged the Court to uphold … Continue reading

USPTO files opening brief in Slants case

By Andrea Shannon (US) on November 14, 2016 Posted in Trademark

The First Amendment does not require the government to support disparaging speech, the U.S. Patent and Trademark Office (“USPTO”) argued in its opening brief filed last week in the “Slants” trademark case currently pending before the Supreme Court. Lee v. Tam, No. 15-1293, Pet. Brief at 20 (Nov. 9, 2016). Background As we’ve previously … Continue reading

Houston College of Law enjoined from using name

By Andrea Shannon (US) on October 17, 2016 Posted in Trademark

On Friday, October 14, 2016, a federal judged ruled that Houston College of Law must change its name, at least for the duration of pending trademark litigation. The temporary injunction stems from a trademark infringement suit the University of Houston brought against Houston College of Law, a private law school which until June had been … Continue reading

Seattle Seahawks fans still the 12th Man under new trademark licensing deal with A&M

By Andrea Shannon (US) on September 19, 2016 Posted in Trademark

Football season is upon us, and fans of the Seattle Seahawks were no doubt celebrating the thrilling 12-10 victory over the Miami Dolphins during their first game of the season on Sunday, September 11, 2016. Seattle fans, who have been referred to as “The 12th Man” since the 1980s, can also celebrate the team’s ability … Continue reading

That’s My Mark! Enforcing Trademark Rights on Social Media

By Andrea Shannon (US) on September 8, 2016 Posted in Trademark

It is no doubt surprising and frustrating for brand owners when they find that someone has appropriated their trademarks on social media. A few of the common scenarios include: small competitors modifying logos and passing them off as their own; unauthorized distributors using logos and trademarks on their social media advertising; and social media users … Continue reading

USPTO announces new trademark use audit program

By Andrea Shannon (US) on July 25, 2016 Posted in Trademark

The U.S. Patent and Trademark Office (“USPTO”) has proposed a rule change that would enable it to conduct random audits of affidavits or declarations of use filed under sections 8 and 71 of the Trademark Act as a permanent extension of the pilot program. See Federal Register, Vol. 81, No. 120 (Wednesday, June 22, 2016) … Continue reading

U.S. Trademark Office proposes fee increases

By Andrea Shannon (US) on June 27, 2016 Posted in Trademark

Brand owners should be aware that the U.S. Patent and Trademark Office (USPTO) has proposed an increase of its trademark registration and filing fees. The proposed rule was published in the Federal Register, with the period for public comment expiring on July 11, 2016. See Trademark Fee Adjustment. The USPTO stated that the proposed fee … Continue reading

Redskins seek to join Slants case at Supreme Court

By Andrea Shannon (US) on April 29, 2016 Posted in Trademark

While football teams and fans across the country are gearing up for this weekend’s NFL draft, the Washington Redskins will be preparing for another potential showdown—this one at the Supreme Court. The Redskins petitioned the high court on Monday to hear the case over the team’s controversial trademark registrations. Pro-Football, Inc. v. Blackhorse, et. al., … Continue reading

Supreme Court asked to review disparaging trademarks decision

By Andrea Shannon (US) on April 21, 2016 Posted in Trademark

On Wednesday, April 20, 2016, the United States Patent and Trademark Office petitioned the Supreme Court to take up the case on disparaging trademarks. Petition, Michelle K. Lee, Director, United States Patent and Trademark Office, Petitioner v. Simon Shiao Tam, No. 15-1293 (April 20, 2016). The filing comes after the Federal Circuit struck down the … Continue reading

PTO not required to register disparaging trademark until cert deadline passes

By Andrea Shannon (US) on April 14, 2016 Posted in Trademark

In December 2015, the Federal Circuit struck down the “disparagement” clause of §2(a) of the Lanham Act on First Amendment grounds. However, according to a recent ruling from the court, the USPTO is not required to register disparaging trademarks just yet. In re Tam, No. 16-121 (Fed. Cir. Mar. 30, 2016) (denying petition for writ of … Continue reading

Federal court affirms cancellation of Redskins’ trademark

By Andrea Shannon (US) on July 9, 2015 Posted in Trademark

A federal district court in Virginia has affirmed the U.S. Patent and Trademark Office’s (“USPTO”) 2014 decision to cancel the Washington Redskins’ federal trademark registrations pursuant to Section 2(a) of the Lanham Act. Mem. Op., Pro-Football, Inc. v. Blackhorse, et. al., No. 1:14-cv-01043-GBL-IDD (E.D. Va. July 8, 2015). This provision of the federal trademark law … Continue reading

Consumer confusion with marketing on social media

By Andrea Shannon (US) on December 12, 2014 Posted in Trademark

Social media often serves as a powerful mechanism that trademark owners can employ to promote and expand their brands, but a case currently pending in the Southern District of California illustrates just how easily social media can also be used to spread consumer confusion. In Faegin v. LivingSocial, Inc., No. 14CV00418-WQH-KSC, 2014 WL 5307186, at … Continue reading