The Least of Ye’s Troubles

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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 →

Podcast Interview: Kaitlin Corey Talks to Harford County Chamber Chat

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Kaitlin Corey spoke with “Harford County Chamber Chat” a podcast hosted by the Harford County (MD) Chamber of Commerce on WHGM Gold. In the December 3, 2022 episode, Kaitlin discussed her intellectual property and business law practice at Goodell DeVries, the many services provided by the firm, and the value of Chamber membership. You can find the interview here or on your iHeart Radio app.

Why Mediate Intellectual Property Disputes?

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Chief Justice Warren Burger admonished the ABA in 1984, “Our litigation system is too costly, too painful, too destructive, too ineffective for a civilized people.” The Chief added, “For many claims trials by the adversarial contest must in time go the way of the ancient trial by battle and blood.” Copyright trademark and trade secret trials may be among the most expensive legal contests, and I am pretty sure the Chief would have recommended mediation.

The number of civil cases that reach trial in the federal courts is a very small percentage of the total cases filed; probably less than 5 percent. The road to settlement, however, can be long and very expensive. We can get these cases settled early on! Continue reading →

Do Analogous State Statute of Limitations Apply When the Lanham Act Provides None, Or Do Equitable Considerations, Such as Laches? How About Both?

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The federal Lanham Act goes beyond trademark protection and establishes causes of action, as well, for unfair competition, false advertising, and false association. Section 43(a), however, does not contain a statute of limitations for claims that arise under the Lanham Act for any of these improper activities. That’s different from the Copyright and Patent Acts which each provide for limitations and apparently that’s the way Congress wants it.

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The Anatomy of a Trademark Case

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This article originally appeared in the Association of Corporate Counsel: Baltimore’s Focus magazine (3Q2022, p. 7-9). Written by Jim Astrachan, Kaitlin Corey, and Donna Thomas.

A trademark infringement suit awarding Variety Stores $95 million dollars against Walmart is instructive as to what the courts in the Fourth Circuit require to establish trademark infringement and willful trademark infringement. Variety Stores, Inc. v. Walmart Inc., 852 Fed. Appx. 711 (4th Cir. 2021) (unpublished).

While the large monetary award has been resolved behind the scenes through a confidential settlement following Walmart’s successful appeal relating to the trial court’s jury instructions concerning whether Walmart acted willfully, the magnitude of the award and the Court’s explanation of what is required to establish trademark infringement are worthy of discussion. This is especially important for those who are called upon to advise their client about whether a trademark is clear and available for use. The analysis for clearing a trademark for use is similar to the analysis that applies to determining whether a client will succeed if it sues on the grounds of trademark infringement.

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The First Amendment and Social Media

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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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