The Ninth Circuit recently rejected efforts to expand the doctrine of aesthetic functionality to cover logos, as such an expansion would do away with trademark protection, according to the court. Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc. et al., Case No. 04-16174, ___ F.3d _____, 2006 WL 2325105 (9th Cir. August 11, 2006). The Ninth Circuit also articulated its test for aesthetic functionality.
Continue Reading Ninth Circuit Declines to Expand Aesthetic Functionality Doctrine

A group of six Native American tribal leaders have filed a petition to cancel the REDSKINS® trademark registration, a moniker used by the Redskins professional football team since it first changed its name to the Boston Redskins in 1933. According to some accounts, the team was so named to honor its first coach who was a Native American. (See https://www.intellectualpropertylawblog.com/redskinsTMdecision.pdf). The team moved to Washington D.C. in 1937 and have been known as the Washington Redskins since that time.
Continue Reading Football Fans Take Note

The Meaning and Scope of the Trademark Fair Use Defense

Most intellectual property practitioners are familiar with the concept of a "fair use" defense in the context of copyright infringement actions. But the decision by the United States Supreme Court in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) devoted quality time to considering the meaning and scope of the fair use defense as it exists in the context of trademark infringement actions. In so doing, the High Court made its own "lasting impression" on trademark infringement analysis. 
Continue Reading Making A “Lasting Impression” Without Violating Trademark Rights

Several attorneys from Sheppard Mullin attended the International Trademark Association Annual Meeting from May 7 through May 10, 2006 in Toronto, Canada. This year’s meeting focused on cross-border protection, licensing, and registration of trademarks and service marks, with particular attention on the unique challenges trademark owners face with cross border protection.
Continue Reading WHOIS Changes on the Horizon?

Last week the California Senate voted to give California wines a naming system similar to that protected so vigorously by the French. If passed, bill SB 1380 will allow wines to be named by region as well as by grape and label. This bill applies to wines grown in the regions of Sonoma, Mendocino, Monterey, San Benito, San Luis Obispo, and Santa Barbara. Wines from the Napa Valley region have been named in this way since 2001. In order to qualify for the appellation label, at least 75% of the grapes used in production must come from the labeled region.

Continue Reading What’s In A Name?

For over three decades, Franklin Loufrania, a French native, has raked in millions of dollars in licensing fees on smileys, now through his London-based company, SmileyWorld, when he began securing trademarks for the happy face in over 80 countries around the world. With the smiley already reproduced at least 50 million times in the U.S. by the early 1970’s, however, making it then part of the public domain, Loufrania’s trademark strategy could not penetrate the United States. Meanwhile, over the last 10 years, Wal-Mart has invested billions of dollars prominently displaying the iconic yellow happy face in its advertising, linking the Wal-Mart name to the yellow circle with two dotty eyes and a loopy grin. It wasn’t until 1997 that Loufrania applied to control the symbol in the U.S. Now Wal-Mart and Loufrania are fighting it out in front of the U.S. Patent and Trademark Office. Continue Reading SmileyWorld v. Wal-Mart: Who Will Remain With the Happy Face?