The Least of Ye’s Troubles

The rapper formerly known as Kanye West is in a dump truckload of trouble for, among other things, his display of a “White Lives Matter” T-shirt.  The slogan’s so-called owners are calling him out for trademark infringement.

As bad as the politics might be, Ye, as he is now known, did no trademark harm. The U.S. Patent and Trademark Office, as a general rule, will refuse to register a trademark if the submitted specimen shows that use of the mark is decorative or ornamental.  A trademark must indicate a source of goods. Continue reading

The First Amendment and Social Media

The Texas Legislature enacted HB 20, a gobsmacking law, in September 2021, declaring social media platforms and interactive computer services to be “common carriers,” charged, as the bill reads, with a public interest of being “central forums for public debate.”

HB 20 defines social media as an internet website having more than 50 million users that is open to the public and allows users to create accounts to communicate with others through the posting of information, comments, and messages or images. Media giants like YouTube and Twitter are affected. A few days ago, the U.S. Court of Appeals for the 5th Circuit held the law to be constitutional and enforceable.

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Bankruptcy Treatment of Trademark Licenses

Worth mentioning if a licensee or licensor of a mark is facing bankruptcy, is a 2019
Supreme Court decision.  Mission Product Holdings, Inc. v. Tempnology, LLC, 139 S.Ct. 1652 (2019).  Decided 8–to–1 following a split among the circuits, the Court resolved the effect of a debtor in bankruptcy’s attempted rejection of a trademark license.

The question was would the rejection constitute a breach of contract, or a recission that would bar the licensee from ongoing use of the licensed mark?  The stakes are high for most licensees that want to continue to do business using the licensor’s mark. Continue reading

Protection of Unregistered Trade Dress

The requirements to protect unregistered trade dress are well established. Still, it’s worth revisiting this subject from time to time, whether for trademark novice or pro.

At one time, trade dress only included packaging or “dressing” of the goods, but modern courts have pretty much universally expanded the meaning of trade dress to include the design of a product.  For example, the shape of the Coke bottle, the red sole of a Christian Lorboutin shoe, the shape of the Weber BBQ kettle. See, Stuart Hall Co., Inc. v. Ampad,  51 F.3d. 780 (8th Cir. (1995)).  Unregistered trade dress is protected.  If not registered, the burden is the owner’s to prove if the trade dress meets all requirements to make it protectable. Lanham Act Section 43(a)(3) specifically refers to a civil action for trade dress infringement for trade dress not registered on the principal register.  If registered on the principal register, it is presumed that the trade dress is distinctive, with the owner having demonstrated secondary meaning to the examiner. Continue reading