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Kelly IP Recognized by Managing IP as the Top Trademark Contentious Law Firm in the Northeast United States.

Managing IP (MIP) hosted its annual Americas awards dinner in New York City on April 7, 2022. Kelly IP received the award for the top trademark contentious law firm in the Northeast United States, which recognized specific contentious work handled by Kelly IP.

This award is in addition to MIP’s IP Stars recognizing Kelly IP a few weeks earlier in its 2022 rankings of U.S. law firms as a Tier 1 firm nationally for both trademark litigation (1 of only 6 firms) and trademark prosecution (1 of only 4 firms). This was Kelly IP’s sixth consecutive Tier 1 national rating for trademark litigation and fifth for trademark prosecution. Kelly IP was one of only three firms to receive the Tier 1 national ranking for both trademark litigation and prosecution.

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News

Kelly IP Again Recognized by Managing Intellectual Property’s IP Stars as a Tier 1 National Trademark Firm for Both Litigation and Prosecution.

Managing Intellectual Property (MIP), a leading global legal ranking and referral guide, released its IP Stars rankings of U.S. trademark law firms for 2022. MIP recognized Kelly IP in Tier 1 of U.S. law firms nationally for both trademark litigation (1 of only 6 firms) and trademark prosecution (1 of only 4 firms). This is Kelly IP’s sixth consecutive Tier 1 national rating for trademark litigation and fifth consecutive Tier 1 national rating for trademark prosecution. Kelly IP was one of only three U.S. firms to receive the national Tier 1 ranking for both trademark litigation and prosecution.

In MIP’s rankings of trademark firms for select U.S. jurisdictions, Kelly IP received the highest ranking of “Highly Recommended” for the Washington, DC area for both trademark litigation (1 of 5 firms) and trademark prosecution (1 of 7 firms). Kelly IP has received the highest ranking each year since the local rankings were introduced in 2019.

IP Stars highlights the country’s leading intellectual property firms and lawyers and is based on surveys completed by peers and in-house counsel and on interviews with clients and leading in-house counsel. The 2022 rankings of U.S. trademark law firms are available at www.ipstars.com.

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Announcements News

Six Kelly IP Lawyers Recognized in the 2022 World Trademark Review 1000

In addition to Kelly IP’s “Gold” national and Washington, DC firm rankings for 2022 (top-tier national trademark firm for the fifth consecutive year, and top 3 DC Metro area trademark firm for both trademark litigation and prosecution and strategy for the eighth consecutive year), the World Trademark Review 1000 (WTR 1000) has again recognized Kelly IP’s lawyers as leaders in the field. These individual recognitions demonstrate the high-caliber talent and significant expertise that define Kelly IP.

As a firm, the WTR 1000 report describes Kelly IP as “[a] tailormade strike force for prestigious clients, Kelly IP is a brands boutique that, in under a decade, has cemented its name as a top player. It has a uniquely collaborative culture in which lead relationship partners loop in colleagues to take on the tasks they are best suited to without concern for compensation-related issues. It’s an approach that places clients’ needs front and centre at all times and leads to optimal results, and that is made possible by an absence of the usual bureaucracies associated with BigLaw.”

WTR 1000 provided the following client feedback on Kelly IP’s lawyers:

  • Dave Kelly, is described as a “redoubtable litigator . . . who has an impeccable reputation and is unanimously hailed as one of the foremost trademark minds in the United States.” Dave was named to the top “Gold” band of lawyers nationally and for the DC Metro area for both trademark enforcement and litigation and prosecution and strategy.
    Linda McLeod, a former Trademark Trial and Appeal Board Judge, is described as “given her insider insight as a former trademark examiner and TTAB judge – she knows how the USPTO works as well as anyone. Highlights for the firm during the review period include extensively assisting Disney and related companies (ABC, Marvel, Pixar and Lucasfilm) with clearance matters, oppositions and cancellations, enforcement and complex prosecution.” Linda achieved Gold status for both trademark enforcement and litigation and prosecution and strategy for the DC Metro area and Silver status for enforcement and litigation nationally.
  • Rob Litowitz, is described as giving clients “a wonderful sense of confidence when he’s in your corner” and “as a master strategist who goes above and beyond to get great results. He is reasonably aggressive, an excellent out-of-the-box thinker and an articulate and persuasive strategist.” Rob achieved Silver status for trademark enforcement and litigation in the Metro DC area.
  • Stephanie Bald, is described as “a master of all trades when it comes to branding; . . . offer[ing] wide-ranging support to Fortune 500 company Capital One, frequently liaising with top-level executives due to the high-profile nature of . . . assignments” and “representing American Eagle Outfitters (AEO) in a trademark infringement suit against Walmart concerning AEO’s pocket stitching trademark for women’s jeans.” Stephanie was ranked among top trademark lawyers for trademark enforcement and litigation as a Silver status lawyer both nationally and for the DC Metro area.
  • Lynn Jordan, is described as “one of the stars of prosecution and TTAB practice” and as “more like a colleague than an external adviser. She is practical, user friendly, incredibly knowledgeable and a delight to deal with. There is no more suitable candidate for inclusion in the WTR 1000 – the same would be true if it were a top 10.” Lynn was named a Gold status lawyer for trademark prosecution and strategy in the DC Metro area.
  • Jason Joyal is described as “incredible to partner with” and “[h]e communicates complex legal matters clearly, understands the business side of things and is always available and responsive”. Jason was named a bronze status lawyer for trademark enforcement and litigation in the Washington, DC area.

The WTR 1000, through an extensive research process conducted by a team of analysts that interview and communicate with numerous lawyers and their clients, identifies the leading trademark law firms and lawyers globally. The WTR 1000 2022 results can be found at www.WTR1000.com.

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News

Kelly IP Again Recognized as a Top-Tier “Gold” National Trademark Firm by the 2022 World Trademark Review 1000

Kelly IP has again been recognized as a top-tier “Gold” trademark law firm both nationally and in the Washington, DC area by the 2022 World Trademark Review 1000 (WTR 1000).

  • Nationally, for the fifth year in a row, Kelly IP was recognized as a “Gold” status trademark firm, WTR 1000’s highest national ranking.
  • In the Washington, DC area, for the eighth consecutive year, Kelly IP was recognized as one of a few “Gold” status firms in both trademark categories—trademark enforcement and litigation and trademark prosecution and strategy.

The WTR 1000 report describes Kelly IP as “[a] tailormade strike force for prestigious clients, Kelly IP is a brands boutique that, in under a decade, has cemented its name as a top player. It has a uniquely collaborative culture in which lead relationship partners loop in colleagues to take on the tasks they are best suited to without concern for compensation-related issues. It’s an approach that places clients’ needs front and centre at all times and leads to optimal results, and that is made possible by an absence of the usual bureaucracies associated with BigLaw.”

The WTR 1000, through an extensive research process conducted by a team of analysts that interview and communicate with numerous lawyers and their clients, identifies the leading trademark law firms and lawyers globally. The WTR 1000 2022 results can be found at www.WTR1000.com.

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Announcements

Kelly IP Announces its First Annual 1L Diversity Fellow Program

Kelly IP is pleased announce its first annual 1L Diversity Fellow Program. At Kelly IP, a diverse, inclusive, and equitable workplace is one where all attorneys and staff, whatever their gender, race, ethnicity, national origin, age, sexual orientation or identity, education level, or disability, feel valued and respected. We are committed to a nondiscriminatory approach and provide equal opportunity for employment and advancement. We respect and value diverse life experiences and heritages and ensure that all voices are valued and heard. We recognize and appreciate that a talented and diverse workforce is a key competitive advantage.

Kelly IP’s 1L Diversity Fellow Program awards one fellowship annually to a first-year law student from a background traditionally underrepresented in the legal profession who wants to explore a career in trademark and copyright law. The 1L Diversity Fellow will spend 6-8 weeks (at the Fellow’s election) as a paid summer associate at Kelly IP. The Fellow will also receive formal mentorship from at least one partner and one associate at Kelly IP during the summer and throughout the following academic school year, and participate in the Leadership Council on Legal Diversity (LCLD) 1L Scholars Program.

The 1L Diversity Fellow program is open to all first-year law students from a group historically underrepresented in the legal profession that is currently enrolled in an ABA-accredited law school with demonstrated interest in trademark and copyright law.

To learn more or to apply, please visit our Careers page.

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News

Six Kelly IP Lawyers Recognized in the 2021 World Trademark Review 1000

On February 12, 2021, in addition to Kelly IP’s “Gold” national and Washington, DC firm rankings for 2021 (top-tier national trademark firm for the fourth consecutive year, and top 3 DC Metro area trademark firm for both trademark litigation and prosecution and strategy for the seventh consecutive year), the World Trademark Review 1000 (WTR 1000) has again recognized Kelly IP’s lawyers as leaders in the field. These individual recognitions demonstrate the high-caliber talent and significant expertise that defines Kelly IP.

As a firm, WTR 1000 commented that “rights holders line up to sing the praises of Kelly IP, an elite boutique that makes it its mission to provide a flexible, agile and cost-effective service without comprising on quality. A collaborative approach proves crucial in this regard – the practitioners here share work freely without stressing about compensation formulas, so clients get the best available skills for their unique assignments. Setting the tone in this regard are founding partners David M Kelly, Rob Litowitz, Linda K McLeod, Lynn M Jordan and Stephanie Bald, who collectively dispense a full-bodied brands service.”

WTR 1000 provided the following client feedback on Kelly IP’s lawyers:

• Dave Kelly, is “hailed as a cutting-edge strategist” who is “prudent and sagacious in his counsel” and a “top litigator who is never rattled and always stays calm.” Dave was named to the top “Gold” band of lawyers nationally and for the DC Metro area for both trademark enforcement and litigation and prosecution and strategy.

• Linda McLeod, a former Trademark Trial and Appeal Board Judge, is described as “a leading and highly decorated TTAB and appellate lawyer” who also plays a key role in the firm as a mentor. Linda achieved Gold status for both trademark enforcement and litigation and prosecution and strategy for the DC Metro area and Silver status for enforcement and litigation nationally. 

• Rob Litowitz, is described as a “brilliant advocate” who has an “excellent ability to lay out clear paths forward and gives concise opinions that afford clients a 360-degree view of their issues, thereby enabling easy decision making” and who “thinks forward and navigates complex matters with skill.” Rob achieved Silver status for trademark enforcement and litigation in the Metro DC area. 

• Stephanie Bald, is described as having “a creative mind that she applies very effectively to novel and complex legal issues” while being “very conscious of business and budgeting realities.” Stephanie was ranked among top trademark lawyers for trademark enforcement and litigation as a Silver status lawyer both nationally and for the DC Metro area. 

• Lynn Jordan, is recognized as a “leading authority in the entertainment and media field” and “unbeatable for her combination of expertise, commerciality, pragmatism, pricing, and rapid turnaround”. Lynn was named a Gold status lawyer for trademark prosecution and strategy in the DC Metro area. 

• Jason Joyal, is described as “deeply knowledgeable about TTAB precedents” and a “tremendous brief writer.” Jason was named a bronze status lawyer for trademark enforcement and litigation in the Washington, DC area


The WTR 1000 is dedicated to identifying the world’s leading trademark law firms and practitioners and is the only standalone publication to recommend individual practitioners and their firms exclusively in the trademark field. Through an extensive research process conducted by a team of highly qualified, full-time analysts that interview and communicate with numerous lawyers and their clients, the publication identifies the leading trademark law firms and lawyers in more than 80 key jurisdictions globally. The WTR 1000 2021 results can be found at www.WTR1000.com.

Categories
News

Kelly IP Recognized as a Top-Tier “Gold” National Trademark Firm by the 2021 World Trademark Review

On February 12, 2021 Kelly IP has again been recognized as a top-tier “Gold” trademark law firm both nationally and in the Washington, DC area by the 2021 World Trademark Review 1000 (WTR 1000).

  • Nationally, for the fourth year in a row, Kelly IP was recognized as a “Gold” status trademark firm nationally, WTR 1000’s highest national ranking.
  • In the Washington, DC area, for the seventh consecutive year, Kelly IP was recognized as one of only three or four “Gold” status firms in both trademark categories—trademark enforcement and litigation and trademark prosecution and strategy.

The WTR 1000 report had high praise for Kelly IP, stating that “rights holders line up to sing the praises of Kelly IP, an elite boutique that makes it its mission to provide a flexible, agile and cost-effective service without comprising on quality. A collaborative approach proves crucial in this regard – the practitioners here share work freely without stressing about compensation formulas, so clients get the best available skills for their unique assignments. Setting the tone in this regard are founding partners David M Kelly, Rob Litowitz, Linda K McLeod, Lynn M Jordan and Stephanie Bald, who collectively dispense a full-bodied brands service.” Dave Kelly, managing partner of Kelly IP, said “We are excited to be honored by WTR 1000 again as one of its top-tier “Gold” national and Washington, DC area trademark firms.  We started Kelly IP to be a collaborative, flexible firm that provided top-end trademark legal services at a better value for our clients, and we are happy to receive client feedback that we have continued to succeed in our goals.”

The WTR 1000 is dedicated to identifying the world’s leading trademark law firms and practitioners and is the only standalone publication to recommend individual practitioners and their firms exclusively in the trademark field. Through an extensive research process conducted by a team of highly qualified, full-time analysts that interview and communicate with numerous lawyers and their clients, the publication identifies the leading trademark law firms and lawyers in more than 80 key jurisdictions globally. The WTR 1000 2021 results can be found at www.WTR1000.com.

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News

Trademark Modernization Act: New Procedures to Challenge Registrations for Non-Use

The Trademark Modernization Act of 2020 (“TMA”), signed into law on December 27, 2020, amends the Lanham Act to create new expungement and reexamination procedures to challenge registrations with inaccurate claims of use in commerce. The new procedures allow a party to unilaterally seek to cancel a registration in whole or in part outside of a time-consuming and contested inter partes proceeding before the Trademark Trial and Appeal Board (“TTAB”). Among other things, the new procedures are intended to remove deadwood from the register and to address the increasing number of trademark applications and registrations covering marks not in use in commerce. As detailed below, the TMA also codifies the existing Letter of Protest procedure, creates a new expungement claim before the TTAB, and restores a rebuttal presumption of irreparable harm in certain proceedings. The TMA also allows the U.S. Patent and Trademark Office (“PTO”) to set shorter office action response periods. During the next several months, the PTO will establish rules and regulations to implement the TMA, which becomes effective on December 27, 2021. 

 

1. Expungement & Reexamination to Cancel Registrations for Non-Use

 

Section 16A of the TMA creates new ex parte expungement procedure to “petition to expunge a registration on the bases that the mark has never been used in commerce on or in connection with some or all of the goods or services recited in the registration.” A petition for expungement may be filed, or instituted on the Director’s own initiative, at any time following the expiration of 3 years after the date of registration and before the expiration of 10 years following the date of registration. For a period of 3 years after the date of enactment of the TMA, a petition for expungement may be filed or instituted by the Director at any time following the expiration of 3 years after the date of registration.  A similar new expungement ground for cancellation will be available before the TTAB at any time following the expiration of 3 years after the date of registration, but not limited to before 10 years following the date of registration.  The new expungement procedure is available against registrations issued under Sections 1(a), 44(e), and 66(a).

A petition for ex parte expungement must: (1) identify each registration at issue; (2) identify each good and service recited in the registration for which it is alleged the mark was never in use in commerce; (3) include a verified statement that sets forth the reasonable investigation the petitioner conducted to determine that the mark was never in use in commerce; (4) include supporting evidence on which the petitioner relies; and (5) be accompanied by a fee prescribed by the Director. The PTO will promulgate regulations regarding fees, response times, “reasonable investigations,” and types of evidence required.

In addition, Section 16B of the TMA establishes a reexamination procedure where any person may “file a petition to reexamine a registration on the basis that the mark was not in use in commerce on or in connection with some or all of the goods or services recited in the registration on or before the relevant date.” The “relevant date” for determining use in commerce under reexamination means the date when a use-based application was initially filed under Section 1(a), the date an amendment to allege use is filed under Section 1(c), and the date a statement of use is filed under Section 1(d).  A petition for reexamination may be filed, or instituted on the Director’s own initiative, “at any time not later than 5 years after the date of registration.” The new reexamination procedure is available against registrations that ultimately issue under Section 1(a) and is not available against registrations issued under Sections 44(e) and 66(a).

The Director will determine whether the petition establishes a prima facie case to institute an expungement or reexamination proceeding and order registrant to respond with evidence showing use in commerce beyond the specimens of record. For an expungement proceeding regarding registrations issued under Section 44(e) or Section 66(a), registrant may offer evidence showing that nonuse is due to special circumstances that demonstrate excusable nonuse. After reviewing the evidence, the Director will decide whether to remove some or all of the challenged goods or services from the registration. If the Director determines that the registrant had used the trademark with some or all of the challenged goods or services, no new or further ex parte expungement challenges will be permitted, regardless of the identity of the petitioner.

If the Director grants a petition for expungement or reexamination, the registrant may appeal the decision to the TTAB, and thereafter to the U.S. Court of Appeals for Federal Circuit.

These new exparte procedures and expungement cancellation claim should help businesses clear the register of potentially conflicting marks that do not appear to have been in use in commerce on or before the relevant filing date or since registration. It will also provide another tool to challenge registrations, including those issued to foreign domiciliaries, that appear to have overbroad identifications of goods and services or digitally altered or fabricated specimens that were potentially not in actual use.

 

2. Codifying Letter of Protest Procedure

 

The TMA codifies existing Letter of Protest procedures that allows third parties to submit evidence and challenge a trademark application during the examination stage. Under the TMA, the Letter of Protest submission “shall identify the ground for refusal and include a concise description of each piece of evidence submitted in support of each identified ground for refusal.”  A Letter of Protest allows third parties to challenge a pending trademark application on grounds of likelihood of confusion with a prior registered mark, descriptiveness, genericness and other grounds, with supporting evidence attached to the Letter of Protest. See TMEP § 1715.01(a).  In a recent  “Trademark Alert,” the PTO also stated that it is discontinuing the Specimen Protest Pilot Program in favor of allowing a Letter of Protest if a party believes an application contains specimens that have been digitally altered or fabricated.  Within two months after the filing date, the PTO Director “shall determine whether the evidence should be included in the record of the application.” 

 

3. Flexible PTO Office Action Response Periods

 

Under the TMA, the PTO will have the authority to set office action response periods that are shorter than the current six-month response deadlines, but not less than 60 days.  An applicant may request extensions to have a full six months to respond.  Any extension request must be filed on or before the response deadline originally set by the PTO. The Director of the PTO will set the procedures, deadlines, and fees for extensions by rule making.

 

4. Rebuttable Presumption of Irrepreable Harm for Injunctive Relief

 

The TMA also provides that a trademark owner seeking injunctive relief is entitled to a rebuttable presumption of irreparable harm upon a finding of infringement or a likelihood of success on the merits. This uniform rule will help trademark owners enforce their rights against infringers in federal court.

 

 

Disclaimer:  This news alert has been prepared and published for informational purposes only and is not offered, nor should be construed, as legal advice.

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Announcements

Kelly IP Elects Firm’s Newest Partner

Kelly IP is pleased to announce that Kelu Sullivan has been elected as the firm’s newest partner. Since joining Kelly IP in 2016, Kelu’s leadership, dedication and hard work have played a key role in the growth and success of our firm.


According to partner David Kelly, “Kelu’s promotion is well-earned and reflects Kelly IP’s ongoing commitment to developing and recognizing lawyers who are devoted to advancing the interests of our clients and the values of the firm. From the start, Kelu has consistently worked at the highest level of professional accomplishment and has earned the trust of Kelly IP’s clients.”


Kelu’s practice focuses on all aspects of trademark and copyright law, including portfolio management, licensing, and litigation. Kelu has particular experience in managing large domestic and international trademark portfolios. She has extensive experience working with clients’ legal and business partners to develop and implement key trademark and copyright portfolio strategies. Kelu also represents clients before the Trademark Trial and Appeal Board


Kelu has also dedicated her career to increase diversity in the legal profession. She is an active member of the National Asian Pacific Bar Association and has mentored young attorneys and law students through APABA, APABA-DC Educational Fund, where she was a director, and through AIPLA. She is also currently a guest lecturer at the University of Iowa College of Law, where she teaches the IP Advocacy class that prepares students for trademark and patent moot court competitions. 


Before joining Kelly IP, Kelu was a partner at BakerHostetler in Washington, DC. She is also on the Board of Trustees at the WillowWind School in Iowa City, Iowa. She enjoys baking and running so she can eat her baked goods.

About the firm: Kelly IP is a nationally recognized boutique firm specializing in all aspects of trademarks, copyrights, domain names, false advertising, unfair competition, and related areas. We offer a full range of services in these areas, including trademark clearance, prosecution, portfolio management, counselling, licensing, prelitigation opinions, enforcement, civil litigation, and litigation before the Trademark Trial and Appeal Board (“TTAB”). For more information, please visit our website at www.kelly-ip.com.

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Announcements

Kelly IP Named a Top-Tier Trademark Firm for Both Litigation and Prosecution in Legal 500 U.S. 2020

Legal 500 U.S., a leading global legal ranking and referral guide, named Kelly IP to the top tier of U.S. law firms nationally for both “trademark litigation” and “trademarks non-contentious (including prosecution, portfolio management and licensing).” These rankings place Kelly IP among the top 6 law firms in the country for trademark litigation and among the top 4 firms in the country for non-contentious trademark work. 
The editorial content accompanying the rankings contained the following testimonials about Kelly IP:

  • ‘Kelly IP is that unique type of firm that provides ‘Big Firm’ expertise and services, but operates as a personal, client-first boutique.’
  • ‘They care and go beyond the necessary to provide exceptional and exceptionally good advice and services.’
  • ‘They not only provide exceptional services, but do so in a personal, client-first manner.’

In addition, Legal 500 recognized six Kelly IP lawyers as Recommended Lawyers.  

With this ranking, Kelly IP has achieved top national rankings for 2020 from Legal 500, IP Stars, and WTR 1000.  Kelly IP is one of only 3 firms in the entire country that achieved 2020 rankings in the top tier of national firms in all trademark categories recognized by Legal 500, IP Stars, and WTR 1000 for 2020. 

Dave Kelly, managing partner of Kelly IP, said: “We are excited to be honored by Legal 500 as one of its handful of top-tier national trademark firms for both litigation and non-contentious work, and to be one of only three firms named to all of the top tiers of Legal 500, IP Stars, and WTR 1000 for 2020.  We are especially grateful to work with such amazing clients and appreciate their recognition of Kelly IP’s “personal, client-first” approach and “exceptional” representation.

Detailed information regarding Kelly IP’s 2020 rankings is available at (https://www.legal500.com/c/united-states/intellectual-property/trademarks-litigation/)  and (https://www.legal500.com/c/united-states/intellectual-property/trademarks-non-contentious-including-prosecution-portfolio-management-and-licensing/). For more information about Kelly IP, please visit our website.

Categories
Announcements Trademark

Brady TM Bunch

Tom Brady attempts to trademark 'Tompa Bay' and 'Tampa Brady ...

At the end of the 2019 NFL season, the handwriting seemed on the wall for the New England Patriots. Coach Bill Belichick, impatient with failure, seemed ready to move on from his 6 time Super Bowl champion quarterback. And the quarterback himself began signalling that his days of throwing soul-crushing strikes to the likes of Julian Edelman and “Gronk” at Gillette Stadium were coming to an end. But not his career.

Down south on I-95, Super Bowl nemesis (and for many outside of Big Blue nation a dubious Hall of Fame candidate) Eli Manning called it quits after 16 years leading the Giants. Although drafted by San Diego, Eli’e entire career had been spent in Blue, with two improbable Super Bowl W’s over the Patriots, the two gems in an otherwise quotidian career. It was a foregone conclusion that the junior Manning would not emulate big brother Peyton and continue his career in another uniform.

But what about the King of New England? The guy had entered his mid-forties in elite condition, thanks largely to a strict diet of eating absolutely nothing anyone would classify as “delicious,” He gave no hint that the Patriots would be his one and only stop on the NFL train. Indeed, he entered 2020 as an unrestricted free agent. And many teams needed a boost at the QB position and the box office.

So what factors and criteria would guide the soon to be former Patriot’s rebellious decision to leave the cradle of the Revolution? How was the Pats undisputed GOAT to choose where to take his talents?

Well, based on filings at the USPTO, one of those criterion apparently was trademarks! Last week, the new QB for the Florida team called The Buccaneers filed two applications for trademarks that could not have been coined if he had signed with any other team: TOMPA BAY and TAMPA BRADY. Both applications were filed based on Mr. Brady’s sworn bona fide intent to use each mark on “Clothing; Headwear; Footwear.” Both appear to have been “audibles,” strategically filed to preempt others from cashing-in on Brady’s lucrative persona. Mr. Brady now will have up to 36 months to begin selling his new signature product line once the Trademark Office approves his applications.

It’s not unusual for sporting legends to brand themselves and use their brands to sell merchandise. Michael Jordan with his AIR JORDAN comes to mind. But it’s either a lucky coincidence or sheer marketing genius for a player to choose to write the last chapter of a legendary career at the one place that synched with his first and last name to provide such potent brand potential.

Maybe Eli Manning would still be looking forward to another season if the NFL had accelerated its UK expansion plans with a team in Manchester?

 

Categories
Trademark

Master of Its TM Domain

Forever Champions at the Masters

As we head towards Easter Sunday having polished off the last of the Manischewitz from Passover, the void left in our daily lives by Covid-19 continues to expand exponentially, like the virus itself. Working from home and self-quarantining, mired in Netflix, Amazon, and Hulu, the absence of professional sports from our TV and news landscapes feels particularly stark this weekend.

In normal times, sports fans would be feasting not just on Passover brisket and Easter lamb, but on the first major tournament of the professional golf season–the Masters, held each year in the same place, Augusta National in Georgia. It’s one of the premier events in all of sport, and perhaps the sporting world’s toughest ticket. Even getting a pass to attend a practice round is considered a real coup. Past champions include all of the greats–Palmer, Nicklaus, Player, Watson, Michelson, Mcilroy, and Tiger.

Mark Image

Along with the money and prestige that comes with winning, each Masters champion gets to don and wear the event’s signature wardrobe item–the Green Jacket, like the ones Arnie, Jack, and Gary are sporting above. There’s one caveat. The green jacket stays at the club, where its stored until the former champion returns and can wear it at the annual Champion’s dinner that precedes the tournament’s first round.

It’s only fitting for such a tailor made symbol that it’s become a registered trademark. In March of this year, (which now feels like an eternity ago), the U.S. Patent and Trademark Office issued Registration No. 6,000,045.

“How can a garment be a trademark ?”, you may ask. Well, standing alone, it can’t. Minnie Pearl, the legendary star of the Grand Ole Opry, was certainly known by her “trademark” straw hat with its band of fake flowers and dangling price tag. (Indeed, “hat” is the answer to the NY Times crossword puzzle clue “Minnie Pearl’s trademark.”) But although Ms. Pearl talked about branding and trademarks when she was the keynote speaker at the International Trademark Association’s annual meeting when it was held in Nashville, she never secured a registration for signature wardrobe accessory. (It does however, reside today at the Smithsonian on the National Mall, not too far from the Trademark Office in Alexandria. Virginia.)

So how was Augusta National able to trademark the green jacket? Two reasons. First, it used the Green Jacket symbol in connection with actual services, namely, ““promotion of goods and services through sponsorship of sports events” and “organizing and conducting golf tournaments.” Second, Augusta National proved that the Green Jacket had acquired trademark significance–what we in the trademark game call secondary meaning–though over 70 years of use. Indeed, Augusta National convinced the Trademark Office that this was no ordinary item of haberdashery, but has long served as the famous brand symbol of Augusta National and the Masters tournament.

There will be no Green Jacket awarded this weekend. With the county not feeling up to par, the Masters has been moved to November, with fingers crossed that the sporting world will eventually reopen for business. This may be frustrating news for players and fans, but there’s one possible silver lining. Last year’s champion and five-time Masters winner Tiger Woods will have six more months for his aching back to heal and be ready to defend his title. If he does, it will not only be another dazzling career achievement, it will save Augusta National several hundred bucks and Mr. Wood’s Green Jacket will fit like a glove. Past winners simply slip on their own jacket. Membership has its privileges.

Categories
Trademark

Color My World . . . Trademark?

Registration of Color Trademarks on Product Packaging: The TTAB ...
Registration of Color Trademarks on Product Packaging: The TTAB ...

On a grey day towards the end of week 4 of our Covid conundrum, a little color is a welcome diversion–even if it comes from a trademark case. The latest development in this vibrant sub-set of trademark law concerns the packaging for Forney Hacksaw Blades and other hardware products. Forney claims that its particular packaging palette, shown at the top, featuring a black band at the top and then morphing from yellow to red, is as much of a trademark as the FORNEY name itself.

Yes Colors can be Trademarked - Owens Corning Fiberglass Pink ...

Now, claiming color is a trademark is nothing new. Way back when, Owens Corning registered “pink” as the trademark for fiberglass insulation, riding the popularity of TV commercials featuring the Pink Panther to prove that the color pink had achieved a “secondary meaning”–i.e., had acquired trademark distinctiveness– besides being a nice color.

Owens Corning had to go all the way to the U.S. Court of Appeals for the Federal Circuit to get its registration.

Qualitex PC-48 FGR-RC Press Pad

A few years later, the U.S. Supreme Court weighed in, ruling on a single-color trademark claim for the color of a dry cleaning press pad, a color that humorist Jean Shepherd (creator of the classic film “A Christmas Story”) might have called “goat-vomit green:”

The Supreme Court confirmed that a single color of a product can be a trademark, but only if “secondary meaning” has been earned through long use, commercial success, and substantial advertising. That case was Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995).

But proving secondary meaning for a single color applied to a product or packaging can sometimes be a challenge, as General Mills discovered when it tried to register “yellow” as a trademark for this pantry staple:

The TTABlog®: Precedential No. 24: Yellow Cheerios Box Lacks ...
General Mills' effort to trademark yellow box fails | Food ...

Despite decades of sales and advertising, General Mills’ efforts to establish secondary meaning for its yellow box failed because many other cereals also come in yellow boxes.

Wouldn’t it be easier for aspiring trademark colorists if color marks were treated like word marks, where words that are made-up, like KODAK, arbitrary like APPLE for computers, or suggestive like BEAUTYREST for mattresses, are deemed “inherently distinctive” and instantly protected without the need to prove “secondary meaning.”

In Forney’s case, Forney argued that its non-verbal cascading colors for product packaging were likewise inherently distinctive. But the Trademark Office resisted. It’s ruling turned on the fact that Forney’s application did not include any defined package perimeter or shape. According to the Trademark Office, Forney’s application was akin to claiming a trademark in “color alone,” which the Supreme Court has said can never be an inherently distinctive trademark for a product itself.

But the Trademark Office had overlooked a critical distinction, the U.S. Court of Appeals for the Federal Circuit ruled. Fornay’s color mark was applied to packaging –not products themselves. And the Supreme Court precedents had left the door open for color to be inherently distinctive when used on packaging. The Court of Appeals said that “Fornay’s mutli-color product packaging mark . . falls firmly within the category of marks the [Supreme] Court described as potential source identifiers. The Supreme Court precedent simply does not support the [] conclusion that a product packaging mark based on color can never be inherently distinctive.”

The Court of Appeals went further, rejecting the Trademark Office’s conclusion that to be inherently distinctive, multi-color marks for product packaging require a “specific peripheral shape.”

The Appeals Court sent the case back to the Trademark Office with instructions to consider whether Forney’s multi-color mark met the test for inherent distinctiveness. That review likely will focus on whether Forney’s cascading color scheme and palette are “unique or unusual” in Forney’s product category.

The takeaway from the Forney case is this: when it comes to claiming color combinations for product packaging as inherently distinctive trademarks, there are, as the saying goes, “No Borders, No Boundaries.”

The case is In re Forney Industries, Federal Circuit, April 8, 2020.

Categories
Trademark

A Dog Walks Into A Bar…

For decades, parody and trademarks have had a fraught relationship, particularly when it come to the interface between human brands and products for man’s best friend. Back in the 90s, the luxury chocolate maker Godiva sued over a dog treat named Dogiva. And some years later, the luxury clothier and luggage maker Louis Vuitton sued over a brand of dog treats called Chewy Vuitton. Godiva won. Vuitton lost.

Last week, the latest decision in this line of cases came down, finding that a dog toy shaped like the iconic Jack Daniel’s whisky bottle and bearing both the name Bad Spaniels and the scatological slogan “Old No. 2” did not infringe the venerable bourbon’s trademark rights in the Jack Daniel’s name, the square bottle shape, the black and white labeling, and the slogan “Old No. 7.”

The case turned on whether Bad Spaniels name and bottle were a transformative expressive homage to Black Jack and therefore protected by the First Amendment and its stringent expressly misleading standard, or whether it just was plain old trademark use, in which case the lesser likelihood of confusion standard applies.

The judge came down on the side of parody and free expression. Acknowledging that the Bad Spaniels name, motto, and packaging were a far cry from the Mona Lisa, the judge nonetheless concluded that the canine toy maker had produced an expressive work that did not warrant being relegated to the trademark doghouse. The court explained that “[a] work need not be the expressive equal of Anna Karenina or Citizen Kane” to be considered expressive; nor is a work “rendered non-expressive simply because it sold commercially.”

The decision is sure to add to the ongoing debate on whether punsters deserve punishment when they parody a famous brand not through a cartoon or story but by putting out a product with a humorous twist.

So, when happy hour rolls around Fido, Spot, Snoopy, and Scooby Doo can enjoy their own plastic libation as their best friends break out the Jack and Ginger or have their Tennessee sippin’ whiskey nice and neat. And in these days of Work at Home and sheltering-in-place, it’s always five o’clock somewhere.

The case is VIP Prods. LLC v. Jack Daniel’s Properties, Inc., No. 18-16012 (9th Cir. Mar. 31, 2020).

Categories
Copyright

The Song Goes On Forever; Can the Copyright End?,

Joe Ely - Letter to Laredo - Amazon.com Music

The path of a professional musician is rocky and strewn with obstacles. Many struggle to find an audience, to earn a living, to be picked up by a major record label. But even for those who make it, the road is still precarious. One reason is in the devil’s bargain they had to make to get their first recording contract.

The term “quid pro quo” had gone viral until a real virus took hold of our collective attention. But “quid pro quo” applies to more than just phone calls between heads of state. For most emerging singer/songwriters, the quid pro quo for getting a record deal was this: the record company demanded that the artist assign her copyrights to the label. And that demand came in the form of an offer the artists couldn’t refuse–either assign the copyrights or no deal–a classic case of one party to a deal holding all the cards and having all the leverage.

Congress, back in the day when bipartisanship and legislative compromise weren’t dirty words, recognized the artists’ dilemma and provided a fix. The fix is by no means quick. But it is real and potentially lucrative–in the 1976 revision of the Copyright Act, Congress included a “termination right” to that artists like Joe Ely pictured above, Bruce Springsteen, Tom Petty, and others who had signed-away their copyrights at the start of their recording careers can take back their rights, lock, stock and barrel, after 35 years.

But, as Ringo sang, “it don’t come easy.” Artists must follow strict procedures about the timing and content of their termination notices. And as might be expected, the record companies, having given an artist a “big advance,” (like The Boss gets at the end of Rosalita), aren’t exactly keen to see the valuable copyrights revert to an artist whose career the company launched and helped sustain for decades. And so, some of the current corporate copyright holders have vowed not to give up without a fight and have refused to honor termination requests from Joe Ely and many others.

Mr. Ely, however, along with English musician John Waite, “won’t back down,” as Tom Petty sang. They are lead plaintiffs in a class action lawsuit against UMG, a major music corporation. In the lawsuit, Ely and Waite argue that UMG has no good reason or legal basis for rejecting their termination notices.

UMG, for its part, argues that the musicians never had a termination right because their original recording contracts included language that called the musician’s songs “works for hire.” So technically, UMG argues, artists like Mr. Ely never owned the copyrights in the songs they wrote and recorded while under contract to the recording companies. They further argue that the musicians should have sued over the “work for hire” issue decades ago, within three years of signing their contracts, so that the statute of limitations applies and bars their current claims.

Earlier this week, a federal judge rejected UMG’s theory, writing that denying the artists’ their termination right based on things they did or didn’t do over thirty years ago “at a time during which the artist and recording company may still have disparate levels of bargaining power — would thwart Congress’s intent and eviscerate the right itself.”

So the case continues on to a trial to determine whether Ely and the rest properly exercised their right of termination and can regain control of their copyrights.

The case is: Waite et al. v. UMG Recordings Inc. et al., case number 1:19-cv-01091, in the U.S. District Court for the Southern District of New York.

One of Joe Ely’s Texas Troubadour compatriots, Robert Earl Keen, sings “The Road Goes On Forever and The Party Never Ends.” This case will determine whether a record company’s party–it’s hold on copyrights it insisted on owning decades ago when it had superior bargaining power, will go on forever, or at least until the copyright expires many years in the future. The recent ruling shooting down UMG’s first line of defense leaves Mr. Ely and the other Plaintiffs with “their hopes up high.”

Categories
Trademark

Cooped Up Case for Cooped Up Times

No need to be chicken about copying in poultry feeder case ...

Entering our third week of staying at home, we look for connection from any quarter. Yesterday I found it in the form of a new trademark decision from the Fourth Circuit about chicken feeders. The Court of Appeals affirmed a lower court decision that nixed trademark protection for the shapes and color of the chicken feeder shown above on the left. The plaintiff had claimed that the configuration and red color scheme of its bird feeder had acquired trademark significance through years of commercial success. There was no doubt that the plaintiff’s feeder was popular among poultry raisers. And the defendant’s feeder (on the right) looked like a dead ringer for the plaintiff’s.

So why did the plaintiff’s trademark claim flounder and flail like a, well, the proverbial chicken with its head cut off? The problem for the plaintiff was it’s patents. Yes, product configurations and color schemes can theoretically attain trademark status through long use, large sales, and extensive advertising, especially if the advertising verbally or visually highlights the shape, features, or colors without touting their utility. But even if these measures have worked, even if consumers recognize a product’s shape, features, or colors as source indicators, i.e., trademarks, the law won’t extend trademark protection to features or shapes that are essential to the product’s function or purpose.

And here, the features and red color that the plaintiff claimed as trademarks were also covered by the plaintiff’s utility patents—strong evidence of their functionality. Indeed, the patents showed that the product shape allowed birds to feed more easily while the color red attracted them to their meals. As the court recognized, it is fundamentally unfair for a patent owner to convert the limited patent monopoly for useful features into a perpetual trademark monopoly, thereby depriving rivals of useful features needed to compete effectively.

The case is CTB Inc. v. Hog Slat Inc., case number 18-2107, in the U.S. Court of Appeals for the Fourth Circuit.

So, how does a case about chicken feeders provide meaning and connection in these days of isolation? Well, the first case I worked on as a fledgling trademark lawyer was about a chicken feeder. Early in the litigation, my fellow associate and I drafted up a scathing letter to the other side over some perceived deficiency. We loaded the correspondence with all the invective and indignation we could muster. The recipient happened to be the boyfriend of our mentor, and he worked for the rival firm across the street. He was an excellent lawyer and a wonderful guy, and he used his reply to school us neophytes about civility and effective advocacy, characterizing our screed for its “intemperate tone.” Of course, he cc’d our mentor, his girlfriend. From that day on my colleague and I became known throughout the firm as “The Intemperate Tones.” Good band name, bad nickname for young lawyers or lawyers of any age.

Moral of this post, don’t be so impressed with your own heated rhetoric that you lose sight of the ultimate goal, resolving disputes that counsel should be able to resolve cooperatively and failing that persuading not alienating the judge. Resist the urge to strut like a Rooster, lest you end up like the birds scrambling to feast at these feeders–served up on a plate for a judicial rebuke.

Categories
Copyright

Slam Dunk Win for NBA Video Game Accused of Tattoo Copyright Infringement

Norwegian teen tattoos McDonald's receipt on his arm, confirms Big ...

It’s a generational thing, I know, but I just don’t get tattoos. Back in the day, they were associated with grifters, carnies, and drunken sailors. Popeye had one on his forearm. Mighty Mouse did not.

Recently, however, I got an anthropology lesson on tattoos and their cultural significance. I learned that “tattoos have been part of human expression for thousands of years,” and that “modern tattoos reflect the personal expression of the person bearing the tattoo and are intended for that purpose.”

That lesson came not from a book or article, but from expert testimony in a court decision involving the tattoos of none other than LeBron James. The issue was whether the maker of the video game NBA 2K infringed the copyrights in the tattoos of Mr. James, and two other NBA stars, when the trio were included as video game figures, in NBA 2K, tattoos and all.

First, some basics. Yes, tattoos are pictorial works subject to copyright. And yes, absent a written agreement between the tattoo artist and the client, the artist owns the tattoo copyright, which gives the artist the right to control when and how the tattoo is reproduced. So in theory, including Mr. James’s likeness with his tattoos could implicate the tattoo artist’s copyright.

In this case, the artist had granted an exclusive license to the copyright to the plaintiff, a company formed primarily to enforce the copyright against the video game company and others who similarly included likenesses of tattooed stars in commercial products such as video games.

The court of law, in this case, took a very dim view of the plaintiff’s efforts to profit from the tattoos’ presence in a virtual court of basketball. In fact, the judge agreed with all of defenses:

First, U.S. District Judge Laura Taylor Swain ruled that there was no copyright infringement because the tattoos in question were not “substantially similar” to the copyrighted tattoos. The virtual tattoos were a fraction of the actual tattoos in size and were barely visible, appearing only fleetingly on moving figures who themselves were part of a larger group of moving figures in the video game as its being played.

Second, the court ruled that the artists had granted LeBron and the others implied licenses to allow the tattoos to be publicly displayed, including in video games. “The tattooists necessarily granted the players nonexclusive licenses to use the tattoos as part of their likenesses,” Judge Swain wrote. “The players, who were neither requested nor agreed to limit the display or depiction of the images tattooed onto their bodies, had implied licenses to use the tattoos as elements of their likenesses.”

Finally, Judge Swain concluded that including the tattoos in the virtual likenesses of LeBron and others was “fair use.” She concluded the company had made a “transformative use” of the tattoos, noting: “The tattoos were originally created as a means for the players to express themselves through body art,” Judge Swain wrote. “Defendants reproduced the tattoos in the video game in order to most accurately depict the players.”

Judge Swain was also swayed by a survey conducted by Dr. Deborah Jay that showed that consumers do not buy NBA 2K for the tattoos on LeBron James’s likeness.

The full court press of defenses thus produced a blowout win for NBA 2K and a stinging loss for the plaintiff.

As for me, I still may not totally get cultural phenomenon that is the modern tattoo. But guided by the expert testimony in this case about the history and significance of tattoos across the millennia, I can finally accept that my aversion and skepticism were narrow-minded, misguided, and worthy of an OK BOOMER retort.

The case is Solid Oak Sketches LLC v. Visual Concepts LLC et al., case number 1:16-cv-00724, in the U.S. District Court for the Southern District of New York.

Categories
Trademark

TM Suit by BRIZZY against VIZZY Lacks Sparkle, Court Rules in Denying P.I. Motion

Image result for brizzy hard seltzer

“Hard seltzer” has been one of the brightest product categories in a declining market for alcoholic beverages. As reported by Bloomberg, “Alcohol drinkers are becoming more and more concerned about health and wellness, and are becoming more involved in mindful drinking. Hard seltzers are meeting these consumer needs.”

What is hard seltzer? It’s carbonated water infused with 5% alcohol and flavorings. It has fewer carbs and calories than beer. Hard seltzer drinkers tend to be younger, have higher incomes and skew more female than traditional beer drinkers, according to Bloomberg.

The man generally credited for sparking the hard seltzer craze is Von Mandl, a wine maker from Canada. His company’s WHITE CLAW hard seltzer currently accounts for 55%, with annual sales hovering at $1.6 billion. WHITE CLAW hard seltzer has been such a success that Mandl has been able to devote attention to his first passion, wine making, turning out bottles that sell for upwards of $250.

With such a lucrative and expanding market, it was only a matter of time until hard seltzer bubbled up into a trademark dispute. In a decision handed down yesterday, a Texas federal judge refused to block mega beer-maker Molson-Coors from selling its new VIZZY brand hard seltzer, scheduled to hit the market this month. The suit was brought by a much smaller hard seltzer company that has been selling the trendy beer alternative under its federally registered BRIZZY trademark.

With the products poised to compete head to head in the growing hard seltzer marketplace, the only real issue for the court to decide was whether Molson-Coor’s new brand VIZZY was too close for comfort to prior mark BRIZZY –stated in legal terms, are BRIZZY and VIZZY so similar that an appreciable number of ordinary consumers are likely to be confused?

In denying BRIZZY’s motion for a preliminary injunction–a temporary ban on VIZZY sales while the case goes ahead to trial–the judge found that “Plaintiff cannot realistically hope that by obtaining a mark based on and characterized dominantly by one word (‘fizzy’), it can prevent competitors from doing the same.” Miller-Coors swayed the judge with evidence of many other trademarks on the market derived from the word “fizzy.” The court was further persuaded that confusion is unlikely because the parties’ cans look noticeably different. Even though the court recognized that “V” and “B” are “easily confused,” it agreed with Molson-Coors that the “logos, font, coloring, cans, and packaging could not be more different.”

Law 360 reported today that the plaintiff intends to move forward with the case and is seeking a permanent injunction and unspecified damages.

The case is Future Proof Brands LLC v. Molson Coors Beverage Co. and MillerCoors, case number 1:20-cv-00144, in the U.S. District Court for the Western District of Texas.

Stay tuned to see whether this case will yet lead to a substantial verdict in favor of the David against an industry Goliath or whether BRIZZY will again fall flat. Until then, stay thirsty for trademarks, my friends. And drink responsibly.

Categories
Copyright

Music Is Love

Everybody’s saying it–music is love.

“Music is Love” music and lyrics by David Crosby, from the album “If I Could Only Remember My Name.”
Brown and Black Gramophone

On a grey day, when sheltering in place begins to wear thin, a break from trademark themes seems in order. Trying to find the silver lining behind this dark cloud of Corona Virus may not be easy. But linings of silver are there to be discovered, whether its the chance to work side-by-side with one’s significant other and to discover what exactly it is that they actually do all day, to the opportunity to multi-task as dedicated work-at-homer and day-care provider, or one’s transformation from restaurant patron to intrepid pantry explorer–those dried beans were never going to hop into the Instant Pot themselves.

Among the few changes that have not been unpleasant has been the explosion of live musical performances being posted on social media and YouTube by artists and musicians across the musical spectrum. Neil Young shared intimate mini concerts from his fireside, filled with gems and rarities. Willie Nelson and friends recast their canceled Luck Reunion as an online musicthon. And many other artists and venues have followed suit, often tying their impromptu concerts with to a good cause, such as supporting fellow musicians or the dedicated staffs at venues and concert halls.

For the Internet concert curious, here are some lists compiled by leading music publications to help you find tunes to ease a troubled mind:

So while music halls from Nashville to New York City remained shuttered, there are still plenty of ways to support live music, even from the couch. Perhaps you’ll make some new discoveries or reconnect with a favorite artist. Just a few years ago, none of this would have been possible. Today, our digital connectivity can help keep us connected with the healing power of music.

No Softrights post would be complete without at least some mention of intellectual property. So since this one concerns music, remember, artists make their living from their copyrights. So respect the artists and respect their creations by being a legit consumer–subscribe to a digital music service, buy CDs and other merchandise, and when Covid is history, buy a concert ticket, go to a festival, and enjoy music the way it was intended to be heard–live.

Categories
Intellectual Property

Fools Rush In To Cash In On Circle R

Image result for gold rush

When confronting a global pandemic, it seems like folks would have better things to worry about than dreaming up schemes to monetize the panic part of the pandemic. Yet predictably within days of Corona Virus and Covid-19 becoming household words, the US Trademark Office was flooded with applications for phrases such as CLASS OF COVID-19 for sweatshirts, COVID IMMUNE for wristbands, COVID-19 SURVIVOR for t-shirts, and COVID KIDS for children’s clothing.

Like most of their COVID brethren, these applications were filed based on the applicant’s professed “bona fide intent to use” the mark in commerce. That’s a fancy legal term that means that the application must be more than a pipe dream, much more in fact. Trademark law demands that aspiring trademark owners be able to back up their aspirations with real commercial evidence, like having a prototype, investing in equipment, or having a strategic plan.

And before the Trademark Office will issue a certificate of registration with the impressive ribbon and official seal, the applicant must submit evidence that it has actually selling good or offering services under its trademark. These can’t be mere token sales to friends and family; they but must be genuine commercial transactions. Otherwise, if the applicant filed first and tried to develop a product or business later or relied on trumped up sales, the resulting registration can be challenged as having been void from the start.

So, many of these Covid trademark hopefuls are likely due for a rude awakening. Not only will the market for their novelty products run its course along with the novel virus, but the money they spent on these trademark applications likely would have been better spent on other things, like toilet paper and hand sanitizer.

Categories
Likelihood of Confusion Under 2(d)

Too Good To Be True: A Trade Dress Saga

I don’t put much stock in mirages. They may be good plot devices for movies set in the Sahara or a Bugs Bunny cartoon. But in the real world, I’ve never come close to experiencing the confluence of dehydration and desperation thought to produce the hallucinatory visions depicted in film and in literature.

Then came Covid-19 and sheltering in place. Within a few short days, things shifted from well-stocked supermarket shelves to the “new normal” where many staples have been in short supply. Not wanting the cupboard to go bare, we found an organic ranch in California that still had plenty of beef, lamb, and pork and would ship to our door.

I’ve long believed the adage “never shop for groceries on an empty stomach.” I’m here to report that the advice holds doubly true when ordering meat from the Internet. With a few clicks of the mouse, we had purchased approximately an entire side o’beef, or so it seemed from the price tag.

A few days later, UPS delivered a heavy box marked “PERISHABLE, OPEN IMMEDIATELY.” After puzzling over what might be inside, it dawned on me that we now HAVE THE MEAT! I found the nearest sharp object and tore open the box. Reaching inside, I began to remove not the prime-aged cuts I’d been craving, but plastic white tubes with red lettering–one after the other, like circus clowns emerging from a tiny car.

This is where the mirage theme comes in. My mind’s eye saw the white and red tubes not for what they were–15 one pound packages of ground beef that rounded out our order. I saw what I wished them to be–tantalizing cylinders of Taylor Pork Roll (pictured above), a rare and unusual Spam-like meat product that comes from only one place on the planet–Trenton, New Jersey, my hometown. I had practically been weaned on the savory blend of pork and spices that Trentonians traditionally grilled or fried, topped with American cheese, and served on a fresh, crust Kaiser roll with mustard.

For an instant, I was thrilled. Then doubt began to seep in. Why would a premium organic beef purveyor have commingled 15 Taylor Pork Roll rolls among the T-bones, filets, and sirloins? The rock-frozen pork roll may be cheap, but not cheaper than dry ice!

But my initial belief that I’d received a motherload of the very pork roll brand my mother once served-up was no mirage. It was a by-product of the facet of trademarks called “trade dress.” You see, more than words and logos can function as a brand. Trademark protection also can extend to the appearance of packaging itself–the combination of colors, shape, and overall “look and feel” that can identify a product’s source as strongly as its name. Prime examples include the COCA-COLA bottle and the Cracker Jack Box. In most cases, companies must earn trademark protection for their product packaging through five years or more of sales and advertising. They must prove what’s known as “secondary meaning,” which means that the trade dress has acquired brand significance among relevant consumers.

The Taylor Pork Roll package has all the hallmarks of protectable trade dress. The company has been selling its product in the same white and red packaging for decades while earning a devoted fan base of New Jerseyans that have migrated across the land and globe.

Considering the striking similarity between the Taylor trade dress and the ground beef now loaded into every nook and cranny of our freezer, my mirage moment is both understandable and forgivable. I’m sure I’ll be enjoying these meal-size packets of quality ground beef for weeks to come, and hopefully long after sheltering-in-place gives way to barbecuing with friends and family. And I’m equally sure that after shoppers pillage the supermarket shelves of dairy, groceries, and all other manner of comestibles, there’ll probably still be a few packages of pork roll left. And every time I take a package of that ground beef out of the freezer to thaw, I’ll smile to myself and think of the white and red Taylor Pork Roll trade dress.

Categories
Intellectual Property

Blowin’ In the Wind

Every day these days feels like it has a black could overhead. New revelations, new worries. But even with so much uncertainty in the air, we trademark junkies can find something to write about other than panic and pandemic.

I was out for a brief dose of sun and fresh air, walking along deserted streets with my rambunctious dog when I came across two bright orange road signs. Both were broken, crumpled, bent over to the ground. Could the Covid-19 be so potent as to level even these rugged devices built to withstand heavy winds and other physical adversities?

As my dog began dragging me to the nearest shrub for some satisfying sniffing (by him, not me), I noticed that the crippled road signs each had twin plastic orange springs at the base. And instantly, I recognized the source. These were signs made by TrafFix, the company that years ago had famously sued to protect its orange dual-spring design as a trademark. The case was TrafFix Devices, Inc. v. Marketing Displays, Inc. It made it all the way to the U.S. Supreme Court, where TrafFix’s trademark hopes were dashed by the Court’s unanimous decision. The Court held that no matter how recognizable those dual-springs might be, (as they were to me) trademark law can’t protect them because they are functional features whose main purpose was bolstering street signs against the wind and elements, not serving as a brand. The Achilles Heel for TrafFix’s trademark claim was another form of intellectual property–a utility patent. The patent covered the very characteristic that TrafFix sought to protect by trademark, leading the Supreme Court to conclude that giving TrafFix trademark rights on top of its patent would unfairly give TrafFix a perpetual monopoly on a useful feature and put other companies at a competitive disadvantage.

The TrafFix case thus joined a body of famous trademark cases that, like modern celebrities such as Kanye, Madonna, J-Lo, and Shakira, are known simply by one name. (I’ll cover others in future posts.)

Pulling my dog away from the felled road signs, their “Caution” warnings flattened by some mysterious force, I glanced up and saw a trio of mature cherry trees in full bloom across the street. That they had been planted in front of a funeral home did not dim the thrill of seeing the delicate, ephemeral pale pink blossoms. We may not be able to go to see the annual wonder of cherry blossoms draping the tidal basin and Jefferson Memorial like a gauze tapestry, we know that Spring is here, even if a few TrafFix springs, and ourselves, have seen better days.

Categories
Trademark

Does Endless Summer Have Two Rs?

Surfing has strangely been on my mind lately. I’ve been reading the book Barbarian Days, A Surfing Life by William Finnegan. In it, Mr. Finnegan chronicles his early fascination with the sport, sparked not only by his family’s proximity to surfing meccas in Southern California and Hawaii, but also by the surf culture of the early-to-mid sixties, indelibly captured by the guitar driven surf music of Dick Dale and The Ventures and in films such as Beach Blanket Bingo, Gidget, and Ride the Wild Surf. I grew up during in those days, only an hour or so drive “down” the Jersey Shore. And though my sporting interests were rooted in terra firma, I recall my family’s first visit to Long Beach Island, a sliver of a barrier island north of Atlantic City. After a day in the sun, the five of us sat on logs around a small fire and listened to a local cover band tear through a credible version of the ultimate surf instrumental, Wipeout. I fell asleep that evening with visions of taking drum lessons and then mesmerizing my classmates with a virtuoso performance of Wipeout’s iconic drum solo. But when school rolled around that September, I was given a Bundy clarinet, began free lessons, and was forever consigned to the woodwind section, several strata below the rarefied cool of brass and percussion.

Around that time, in 1966, a bunch of us kids walked downtown to see a film called The Endless Summer. Produced and directed by Bruce Brown, the movie followed two surfers on a surfing trip around the world in search of “the perfect wave.” Again, I was a city kid who had as much contact with surfing and surf culture as I had with bullfighting. Yet the film’s exotic locations and thrilling action photography captivated me like no movie before or since.

So, with surfing and The Endless Summer on my mind, I was surprised by the odd coincidence of seeing The Endless Summer in today’s intellectual property news. According to IP 360, “The filmmaker behind “The Endless Summer” is suing Nike and Foot Locker for trademark infringement, alleging that an ad campaign that ran last year used the movie’s title and graphics from its poster to sell shoes and other apparel.” In the Complaint filed in, where else, Los Angeles, the filmmaker’s company alleges not only that The Endless Summer is “considered to be one of the most influential films to depict surfing and the surfing lifestyle,” but also that “The Endless Summer and the images emblematic of the Endless Summer film poster have become famous and distinctive brands.” The Complaint goes on to allege that the Foot Locker/Nike “Endless Summer” ads confused consumers into thinking that the filmmakers had approved the campaign. The question posed by the case is this: Does The Endless Summer have to Rs–the “r” in summer and the “Circle R”–the registered trademark symbol? And, yes, the filmmakers do own a federal registration for THE ENDLESS SUMMER. The case is Bruce Brown Films LLC v. Foot Locker Inc. et al., case number 2:20-cv-02553, in the U.S. District Court for the Central District of California.

The Endless Summer has been on my mind for another reason. In 2003, Bruce Brown’s son put out a sequel to The Endless Summer called Step Into Liquid. Naturally, I had to see it. And I did–during the aftermath of a massive storm that knocked-out power in D.C. for nearly a week, leaving us unmoored and insecure. I’d been thinking about that small disruption during our current, more dire, national public health crisis. And reading William Finnegan’s surf memoir has been transporting me back to The Endless Summer of 1966 and to that film’s classic poster: the faceless silhouettes of three male surfers against an eye-popping Day-Glo background dominated by a giant yellow sun.

Today, during the first week in what likely will be a long and challenging test of our collective resolve, compassion, and ingenuity, when my age demographic appears to be at greatest risk, it’s strangely comforting to see that something so intertwined with my generation’s collective cultural consciousness–a film about a challenging journey, about risks, about courage and about the danger and beauty of the natural world–remains as vital and relevant today as it did over 50 years ago. Let “the perfect wave” be a metaphor; never stop searching.

Categories
Trademark

As We Circle the Wagons, Count On “Circle R “

In what feels like the blink of an eye, our world has been turned upside down, inside out. Phrases we never before heard or uttered–coronavirus, social distancing–became part of our shared lexicon overnight. Many of us who can’t remember the last time we missed a day of work, have seen our offices closed. So we’ve converted dining room tables and spare rooms into satellite offices for our companies and firms. In a matter of days, we’ve begun to suspect that these strange days may become our new normal.  Sure, this enforced proximity to spouses, children, and pets has its joys. But let’s face it, there are only so many times you can read that book, stream that show, walk to the park, and have that conversation before you begin to miss the solitude of the daily commute and anticipation of lunch at Chipotle.

With the very core and fabric of our economy and way of life facing this existential threat, those of us who practice trademark law can be forgiven for beginning to question whether our vocation has anything to add for the safety and welfare of our communities and our nation.

Turns out, its an easy question to answer. Yes! Now, when facing or experiencing shortages of vital supplies and products, we need trademarks more than ever. The U.S. has long been a leader in protecting all forms of intellectual property. We’ve been on the front lines of enacting laws to combat counterfeit products, aka low-quality fakes and knock-offs, to tackle cybersquatting, i.e., hijacking trademarks in phony email addresses, and to beat back grey market goods, i.e., goods intended for foreign markets that differ materially from genuine goods in quality, performance, or warranties. These laws that have protected us so well so far now are more vital than ever.  If unscrupulous profiteers prey on fear and panic with ersatz merchandise, the  Federal Lanham Act allows counterfeit products to be seized from store shelves and ports of entry.  And if online pirates try to deceive consumers with fake websites selling fake products online, those fraudulent sites and products can be taken down.

Simply put, the ®, the symbol that signifies a registered trademark, has long served business and consumers well in ordinary times.  In these extraordinary times when nothing seems certain and everything feels surreal, there’s comfort in knowing that ® is up to the task.

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Announcements

Kelly IP Recognized as Top-Tier “Gold” National Trademark Firm by 2020 World Trademark Review

Kelly IP has again been recognized as a top-tier “Gold” trademark law firm both nationally and in the Washington, DC area by the 2020 World Trademark Review 1000 (WTR 1000).

  • Nationally, for the third year in a row, Kelly IP was recognized as a “Gold” status trademark firm, WTR 1000’s highest ranking.
  • In the Washington, DC area, for the sixth consecutive year, Kelly IP was recognized as one of only three firms to receive “Gold” status in both trademark categories—trademark enforcement/litigation and trademark prosecution/strategy.

The WTR 1000 report had high praise for Kelly IP, stating that “[e]lite boutique Kelly IP has a lot going for it, including a collaborative team of service-minded lawyers, vast experience on all aspects of brand business, highly professional paralegals and a combination of lower rates and more flexibility than bigger outfits. Unsurprisingly, it garners superlative feedback from diverse stakeholders in the IP market.” The client feedback that WTR 1000 received during its research included that “Kelly IP never disappoints. It is more streamlined than big law firms and works efficiently as a team. Although compact, it has tremendous resources including UDRP specialists and amazing paralegals. It also represents exceptional value for money.”

Dave Kelly, managing partner of Kelly IP, said “We are excited to be honored by WTR 1000 again as one of its top-tier “Gold” national and Washington, DC area trademark firms. We started Kelly IP to be a collaborative, flexible firm that provided top-end trademark legal services at a better value for our clients, and we are happy to receive client feedback that we have succeeded in our goals.”

The WTR 1000 is dedicated to identifying the world’s leading trademark law firms and practitioners. Through an extensive research process conducted by a team of highly qualified, full-time analysts that interview and communicate with numerous lawyers and their clients, the publication identifies the leading trademark law firms and lawyers in more than 80 key jurisdictions globally. The WTR 1000 2020 results can be found at www.worldtrademarkreview.com.

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Announcements

Five Kelly IP Lawyers Recognized Again in 2020 World Trademark Review 1000

In addition to Kelly IP’s “Gold” rankings both nationally and among Washington, DC firms, the 2020 World Trademark Review 1000 (WTR 1000) has again recognized Kelly IP’s lawyers as leaders in the field. These individual recognitions demonstrate the high-caliber talent and significant expertise that defines Kelly IP.

As a firm, the WTR 1000 recognized Kelly IP as an “elite boutique” trademark firm that “garners superlative feedback from diverse stakeholders in the IP market,” with client feedback including that “Kelly IP never disappoints. It is more streamlined than big law firms and works efficiently as a team. Although compact, it has tremendous resources including UDRP specialists and amazing paralegals. It also represents exceptional value for money.”

Specifically, the WTR 1000 highlighted praise bestowed by the firm’s clients:

Dave Kelly, is described as “one of the best there is at coming up with creative solutions that precisely fit a brand’s needs. He is strategic, thoughtful and responsive, and continues to raise the bar for what it means to be an excellent external partner.” “He has an uncanny ability to immediately reach the right conclusion on something – he doesn’t need time to process things.” Moreover, “he . . . doesn’t make it all about him,” meaning that his equally brilliant colleagues thrive too. Dave was also recognized for his expertise on the intersection of trademark law and the First Amendment. Dave was named to the top “Gold” band of lawyers nationally for trademark litigation (fifth consecutive year) and trademark prosecution (third consecutive year) and in the DC metro area for both trademark enforcement (tenth consecutive year) and litigation and trademark prosecution and strategy (sixth consecutive year).

Linda McLeod, a former Trademark Trial and Appeal Board Judge “who brings immense oppositions and cancellations expertise to the team,” is described by clients as an “attorney who is always well prepared” and who is “admirably committed to educating and helping younger lawyers.” For the seventh straight year Linda achieved Gold status for prosecution and strategy and either Gold or Silver status for enforcement and litigation in the Washington, DC area. Linda was also recognized nationally in the ”Silver” band for trademark enforcement and litigation.

Rob Litowitz, was praised for his role in handling a complex U.S. litigation for Bugatchi Uomo Apparel against German company Bugatti, which involved German authorities denying service of the complaint under the Hague Convention. Kelly IP – together with German co-counsel – persuaded a German court that this was an erroneous decision, thereby allowing the US lawsuit to proceed. Rob achieved Silver status for enforcement and litigation in the Washington, DC area for the seventh year in a row. 

Stephanie Bald, was described by clients as “an invaluable part of her clients’ internal teams [who] is perfect in the trusted adviser role. Her responsiveness and professionalism are top notch and you can always count on her to deliver a great result regardless of the issue.” Stephanie, who was also recognized for her key role in the Bugatchi case discussed above, was named for the first time to the “Silver” band of lawyers nationally for trademark enforcement and litigation, and was ranked among top Washington, DC area trademark lawyers as a Silver status lawyer for trademark enforcement and litigation for the fifth year in a row. 

Lynn Jordan, was described by clients as one of the “foremost experts on the intersection of trademark law and free speech” who is “relied on by many major media and entertainment companies” because her “approach is always practical but grounded in an encyclopedic knowledge of case law and decades of on-the-ground experience.” Lynn is also recognized by clients as a “fierce and sophisticated advocate.” Lynn was named a Gold status lawyer for prosecution and strategy in the Washington, DC area for the fifth year in a row. 

The WTR 1000 is dedicated to identifying the world’s leading trademark law firms and practitioners. Through an extensive research process conducted by a team of highly qualified, full-time analysts that interview and communicate with numerous lawyers and their clients, the publication identifies the leading trademark law firms and lawyers in more than 80 key jurisdictions globally. The WTR 1000 2020 results can be found at www.worldtrademarkreview.com.

Categories
Announcements

Kelly IP Again Shortlisted for Managing Intellectual Property Americas IP Awards

Managing Intellectual Property (“MIP”) announced the shortlists for its Americas IP Awards for 2020. For the fifth consecutive year, Kelly IP was shortlisted as a finalist for national and regional awards in both trademark categories—Trademark Contentious and Trademark Prosecution.  Kelly IP was shortlisted in the following categories:

  • Trademark Prosecution National
  • Trademark Prosecution Northeast
  • Trademark Contentious Northeast

Dave Kelly, Managing Partner of Kelly IP, said “We are excited that MIP has again recognized Kelly IP. It is a great honor to be shortlisted as one of only a handful of trademark firms at the top of our profession. The honor is especially gratifying because it recognizes that our boutique firm founded in 2013 competes at the highest level with long-established national and international firms.”

Kelly IP previously received MIP’s Americas IP Award for Top Trademark Prosecution Firm in the U.S. Kelly IP has been similarly recognized in MIP’s IP Stars rankings, which ranked Kelly IP in Tier 1 as one of only several U.S. law firms for trademark litigation (2017, 2018, 2019) and for trademark prosecution (2018, 2019).  

The Americas IP Awards will be presented on March 26, 2020 in New York City. The lists of law firms and individuals shortlisted for MIP’s 2020 awards are available here.

Categories
Announcements

Kelly IP Recognized as One of the Top 5 National Trademark Firms by the 2019 World Trademark Review

Kelly IP has again been recognized as a top-tier trademark law firm both nationally and in the Washington, DC area by the 2019 World Trademark Review 1000 (WTR 1000).

  • Nationally, for the second year in a row, Kelly IP was recognized as one of only five “Gold” status trademark firms in the country, WTR 1000’s highest national ranking.
  • In the Washington, DC area, for the fifth consecutive year, Kelly IP was recognized as one of only three “Gold” status firms in both trademark categories—trademark enforcement/litigation and trademark prosecution/strategy.

The WTR 1000 report had high praise for Kelly IP, providing the following comments based on client feedback:

  • “Over the past five years Kelly IP has developed a reputation for excellence. It provides top-tier trademark, unfair competition, false advertising and copyright services, but its particular niche lies in internet-related matters.”
  • With acute business sense, an expeditious response rate and a strong grasp of commercial realities the firm is a trusted ally for brand owners of all sizes.” 
  • “While the “Kelly IP” team is compact it ‘punches well above its weight’ and is the place to go for big-ticket disputes.”

Dave Kelly, managing partner of Kelly IP, said “We are excited to be honored by WTR 1000 as one of its five top-tier national trademark firms.  We are especially proud of the recognition that a boutique firm like Kelly IP is identified a “go-to firm” for “big-ticket disputes.”

The WTR 1000 is dedicated to identifying the world’s leading trademark law firms and practitioners. Through an extensive research process conducted by a team of highly qualified, full-time analysts that interview and communicate with numerous lawyers and their clients, the publication identifies the leading trademark law firms and lawyers in more than 80 key jurisdictions globally. The WTR 1000 2019 results can be found here.

Categories
Announcements

Five Kelly IP Lawyers Recognized Again in the 2019 World Trademark Review 1000

In addition to Kelly IP’s “Gold” national and Washington, DC firm rankings for 2019 (top 5 national trademark firm for the second consecutive year, and top 3 DC Metro area trademark firm for both trademark litigation and prosecution and strategy for the fifth consecutive year), the World Trademark Review 1000 (WTR 1000) has again recognized Kelly IP’s lawyers as leaders in the field. These individual recognitions demonstrate the high-caliber talent and significant expertise that defines Kelly IP.

As a firm, WTR 1000 2019 client feedback recognized Kelly IP as providing “top-tier trademark, unfair competition, false advertising and copyright services” and having “acute business sense, an expeditious response rate and a strong grasp of commercial realities,” and identified Kelly IP as “a go-to [firm] for big-ticket disputes.” 

WTR 1000 provided the following client feedback on Kelly IP’s lawyers:

• Dave Kelly, is described by clients as “the man to call” for “make-or-break disputes,” and being “smart as a whip and always 10 steps ahead of his rivals. When complex questions arise, he thinks outside of the box to deliver ingenious solutions.”  Dave was again named to the top Gold band of lawyers both nationally and in the DC metro area for both trademark enforcement and litigation and trademark prosecution and strategy.

• Linda McLeod, a former Trademark Trial and Appeal Board (TTAB) Judge, is described by clients as “the reigning queen of the TTAB” because Linda’s “previous [TTAB] experience is valuable when it comes to deftly maneuvering through the [TTAB] system.” For the sixth straight year Linda achieved Gold status for prosecution and strategy and either Gold or Silver status for enforcement and litigation in the Washington, DC area. 

• Rob Litowitz, described by clients as a “thoughtful opponent,” was praised for his first-chair role at trial in “a stunning win for Philips in a case against Hunt which threatened the core of the company’s business.” Hunt had sought sweeping injunctive relief and hundreds of millions of dollars in damages against Philips. Rob achieved Silver status for enforcement and litigation in the Washington, DC area for the sixth year in a row. 

• Stephanie Bald, described by clients as “a fierce advocate for her clients” who provides “advice that works in the short and long term” with “honesty, integrity and transparency are the principles she lives by,” and as a lawyer who always keeps her clients’ best interests at heart.” Stephanie, who was also recognized for her key role in the trial victory for Philips, was ranked among top Washington, DC area trademark lawyers as a Silver status lawyer for trademark enforcement and litigation for the fourth year in a row. 

• Lynn Jordan, described by clients as providing “clued-in counsel [for] brand management puzzles” and “user-friendly,” was lauded for her promptness and ability to “craft strategy that is aligned with commercial objectives” and recognized as “a leading expert in the field of entertainment law” whose “judgement is highly valued by others.”  Lynn was named a Gold status lawyers for prosecution and strategy in the Washington, DC area the fourth year in a row. 

The WTR 1000 is dedicated to identifying the world’s leading trademark law firms and practitioners. Through an extensive research process conducted by a team of highly qualified, full-time analysts that interview and communicate with numerous lawyers and their clients, the publication identifies the leading trademark law firms and lawyers in more than 80 key jurisdictions globally. The WTR 1000 2019 results can be found at www.worldtrademarkreview.com.

Categories
Announcements

Kelly IP Again Recognized as a Tier 1 National Trademark Firm by IP Stars

Managing Intellectual Property (MIP), a leading global legal ranking and referral guide, released its IP Stars rankings of U.S. trademark law firms for 2019.  MIP recognized Kelly IP in Tier 1 of U.S. law firms nationally for both trademark litigation (1 of only 5 firms) and trademark prosecution (1 of only 3 firms).  This is Kelly IP’s third consecutive Tier 1 national rating for trademark litigation and second consecutive Tier 1 national rating for trademark prosecution.
MIP also introduced in 2019 its rankings for select U.S. jurisdictions. For the Washington, DC area, Kelly IP received the highest ranking of “Highly Recommended” for both trademark litigation (1 of 5 firms) and trademark prosecution (1 of 6 firms).

Five Kelly IP partners—Dave Kelly, Rob Litowitz, Linda McLeod, Lynn Jordan, and Stephanie Bald—were individually recognized as “IP Stars” by MIP in its individual rankings of trademark lawyers for 2014-2018. The individual rankings for 2019 will be released soon.

IP Stars highlights the country’s leading intellectual property firms and lawyers and is based on surveys completed by peers and in-house counsel and on interviews with clients and leading in-house counsel. The 2019 rankings of U.S. trademark law firms are available at ipstars.com. 

Categories
Announcements

Kelly IP Elects Firm’s Newest Partner

Kelly IP is pleased to announce that Jason Joyal has been elected as the firm’s newest partner. Since joining the firm three years ago with substantial litigation experience, Jason has consistently distinguished himself as a creative, resourceful, and highly-effective IP advocate for Kelly IP’s elite clientele.

Jason Joyal

According to partner David Kelly, Jason’s partnership is well-earned and richly deserved: “From the start, it was apparent that Jason was and is a top-flight litigator with the imagination, creativity, and resiliency to successfully navigate the complex trademark, copyright, and unfair competition issues and cases Kelly IP routinely handles. Jason has been instrumental in numerous victories and has distinguished himself through his dedication, legal acumen, and savvy judgment. From running big cases to counseling clients, Jason consistently excels and has earned the trust of Kelly IP’s clients.”

Before joining Kelly IP, Jason gained significant intellectual property experience as an associate in both the Los Angeles and Washington, D.C. offices of an international law firm. He also served as a judicial law clerk to a U.S. District Judge in the Central District of California where he helped draft hundreds of judicial orders and published opinions, including many involving trademark and copyright issues.

A native of Southern California, Jason and his family relocated to the Washington, D.C. area in 2014. Jason enjoys rooting for his hometown Los Angeles Dodgers, but enjoys spending time with his wife and three boys even more.

Jason is the first attorney promoted to partner since Kelly IP’s original five partners founded the firm in 2013. Kelly IP congratulates Jason on this tremendous achievement.

About the firm: Kelly IP is a nationally recognized boutique firm specializing in all aspects of trademarks, copyrights, domain names, false advertising, unfair competition, and related areas. We offer a full range of services in these areas, including trademark clearance, prosecution, portfolio management, counseling, licensing, prelitigation opinions, enforcement, civil litigation, and litigation before the Trademark Trial and Appeal Board (“TTAB”). For more information, please visit our website.

Categories
Trademark

Mind Your Deadlines: USPTO Remains Open During Federal Government Shutdown

The USPTO remains open for business as normal during the partial Federal government shutdown.  According to the USPTO, the agency can use prior-year fee collections to continue normal operations for a few weeks. If these funds are exhausted before the government reopens, however, the USPTO may have to shut down at that time, except for a small staff that will continue handling new applications and IT infrastructure.  For further information regarding adjustments to the USPTO’s operating status, it is important to monitor the USPTO website.

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Federal Circuit

Federal Circuit Kicks ITC Ruling on Converse Chuck Taylor All Star Case

The Federal Circuit in Converse, Inc. v. ITC, ___ F.3d___, 2018 WL 6164571 (Fed. Cir. 2018), gave Converse’s trademark case against several shoe companies new life; a new “sole,” if you will. Converse has long been battling Skechers, New Balance, and others, alleging trade dress infringement of its Chuck Taylor All Star shoe shown below (“Chuck Taylor All Star Mark”) both before and after Converse’s registration of the mark in 2013. Two years ago, the International Trade Commission (“ITC”) heard the case and ruled against Converse, leaving a significant scuff on Converse’s trade dress rights. The ITC viewed Converse’s Chuck Taylor All Star Mark as two separate marks—a registered mark and a common law mark—during the alleged infringements before registration and found both marks invalid and unenforceable for not having acquired secondary meaning. Now, the Federal Circuit has vacated the ITC’s ruling, and given Converse another chance to cobble its rights in the Chuck Taylor All Star Mark.

Chuck Taylor All Star Mark

First, the Federal Circuit found the ITC’s approach of viewing Converse’s Chuck Taylor All Star Mark as two separate marks “confusing and inaccurate;” instead, the case should be viewed as concerning a single mark, with different rights arising from common law and federal registration. The court also took issue with the ITC’s assessment of secondary meaning, stating that secondary meaning must be determined as of a specific date, namely, prior to each alleged infringer’s first use. In Converse’s case, the Federal Circuit joined “the majority of circuits” in holding that Converse’s registration entitled it to a presumption that the mark is valid and has acquired secondary meaning, which thereby shifts both burdens to the other parties to prove otherwise. However, the court added a vital knot to this holding: this presumption of secondary meaning only begins as of the date of registration, not earlier. As a result, Converse cannot rely on this presumption of secondary meaning for its claims of infringement occurring before registration. On remand, Converse will have to establish that its mark acquired secondary meaning in the Chuck Taylor All Star Mark before each of the alleged infringing uses occurred.

Considering the main remaining defendants started selling their allegedly infringing shoes well before Converse’s registration of the Chuck Taylor All Star Mark, this finding may have knocked Converse back on its heels. But all hope shouldn’t be lost for Converse. Although the court’s decision may not help its case against the remaining defendants, Converse should be able to lace its arguments in any future proceedings on remand with some of the Federal Circuit’s findings that are more favorable to Converse. For example, the Federal Circuit affirmed the ITC’s finding that Converse’s Chuck Taylor All Star Mark is nonfunctional and criticized the ITC’s overreliance on the defendants’ survey evidence regarding secondary meaning. Of course, the defendants may be arguing on remand that the ITC should reassess whether the products are substantially similar to Converse’s Chuck Taylor All Star Mark. Until the proceedings resume on remand, it will be difficult to predict to which side the ITC will ultimately give the boot.

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TTAB

TTAB ON APPEAL: Recent Federal Circuit Appeals From TTAB Ex parte Final Decisions

Categories
Music

Chill Another ‘chella? Not So Fast, Judge Tells Coachella Music Fest

The countdown has begun, with less than a year until Woodstock turns 50. Like Watergate a few years later, Woodstock occupies that rarefied world of one-word names that conjure up not just a place or an event, but a cultural watershed. Although Woodstock was not the first music festival of the Summer of Love era, it’s the one that dominates the collective memories of an entire generation, many of whom claim to have wallowed in the mud with the 500,000 souls who actually slogged their way to Yasgur’s farm to hear some of the leading rock, folk, soul, and blues acts of the day. Hendrix electrified with his searing “Star Spangled Banner,” Richie Havens strummed fervently for “Freedom,” Canned Heat celebrated the simple pleasure of “Going Up the Country,” while Country Joe and his Fish echoed the nation’s  angst with their sardonic “Fixin’ to Die Rag” (“And it’s one, two, three, what are we fighting for?) All this and more was immortalized in an Oscar® winning documentary that cemented Woodstock as the defining music festival for generations of concert goers.

Continue reading “Chill Another ‘chella? Not So Fast, Judge Tells Coachella Music Fest”

Categories
Announcements

Kelly IP Partners Recognized as IP Stars

Managing Intellectual Property (MIP), a leading global legal ranking and referral guide, released its list of U.S. lawyers recognized as IP Stars.  All five Kelly IP partners—Dave Kelly, Rob Litowitz, Linda McLeod, Lynn Jordan, and Stephanie Bald—were recognized as IP Stars for 2018. This is the fifth consecutive year that all five partners were recognized as IP Stars. The published feedback on the firm’s lawyers included the following:

  • Dave Kelly was identified by clients as a “leader in the field,” a “superstar,” and as having “unparalleled knowledge and experience in trademark litigation and TTAB cases”
  • Stephanie Bald was identified as “an expert in district court and TTAB proceedings” who clients described as “proactive,” “creative” and “realistic”
  • Rob Litowitz was identified for his work defending Philips in a trademark infringement litigation, in which he led the team in obtaining a judgment of non-infringement after a five-day bench trial
  • Linda McLeod is identified as “a leading TTAB practitioner” who “is able to draw on her experience as a former judge for the board”
  • Lynn Jordan is identified as “a trusted trademark counselor to several major clients” who clients described as “smart, analytical” and a lawyer who “always provides concise, practical advice”

Earlier this year, MIP released its rankings of U.S. trademark law firms for 2018 in its IP Stars publication. MIP recognized Kelly IP in Tier 1 of U.S. law firms nationally for trademark litigation (1 of only 5 firms) and in its Tier 2 of firms for trademark prosecution (putting Kelly IP in the top 8 firms in the country).  The published feedback on the firm included the following:

  • “Kelly IP is a top-shelf trademark counseling and litigation practice”
  • “[Kelly IP’s] high quality work inspires confidence time after time”
  • “Kelly IP’s trademark-focused professionals have decades of experience advising on intellectual property issues and handling disputes”

IP Stars highlights the country’s leading intellectual property firms and lawyers and is based on surveys completed by peers and in-house counsel and on interviews with clients and leading in-house counsel. The 2018 IP Stars rankings of U.S. lawyers are at https://www.ipstars.com/states/district-of-columbia/us-dc#/ip-stars and the 2018 IP Stars rankings of trademark law firms are available at https://www.ipstars.com/countries/united-states-national/us.

Kelly IP is an innovative boutique firm specializing in all aspects of trademarks, copyrights, domain names, false advertising, unfair competition, and related areas. We offer a full range of services in these areas, including trademark clearance, prosecution, portfolio management, counseling, licensing, pre-litigation opinions, enforcement, civil litigation, and litigation before the Trademark Trial and Appeal Board. Kelly IP is consistently ranked in the top tier of national trademark firms in the United States, and its lawyers are recognized among the best in the country. For more information, please visit our website.

Categories
TTAB

TTAB ON APPEAL: THANK YOU for Wine

The TTAB sustained Modern House of Wine LLC’s (“Petitioner”) petition to cancel (Cancellation No. 92058885) Hidden Wineries Inc.’s (“Registrant”) registration for the mark THANK YOU for wines in Class 33 on the grounds of void ab initio and abandonment. Registrant has filed an appeal to the U.S. District Court for the Northern District of California (Case No. 3:18-cv-02174), which is pending.

Procedural Twists and Turns

This case had some interesting procedural and evidentiary twists and turns before the TTAB. Both parties had some trouble introducing and relying upon evidence at trial.

During the testimony period, Registrant (acting pro se) attempted to take the deposition of several witnesses, but failed to comply with the rules for noticing and taking depositions. In one notice, for example, Registrant failed to name the intended witnesses to be deposed. In another notice, Registrant named five witnesses, but they were not properly identified in its pretrial disclosures. Thus, the TTAB granted Petitioner’s motion to quash Registrant’s notices of deposition. Registrant did identify three other witnesses for deposition, but it failed to take any depositions during the prescribed time period.

Registrant also attempted to attach an officer’s declaration, three third-party statements, and documents to its trial brief. The TTAB sustained Petitioner’s objection to this untimely and improper evidence under Trademark Rule 2.123(a)(1) (testimony of witnesses must be filed during the proffering party’s testimony period) and Trademark Rule 2.122(g) (notice reliance must be filed during the testimony period).

Proving Standing and Grounds

Petitioner faced its own procedural and evidentiary hurdles during its testimony period. With respect to standing, Petitioner argued that it had proven standing because two of its applications to register the marks MERCI and THANK YOU MODERN HOUSE WINES & Design were refused registration under Section 2(d), based on Registrant’s registration. However, Petitioner failed to properly submit copies of the applications or the pertinent Office Actions under notice of reliance or testimony declaration. As noted by the TTAB, unlike the file history of the registration sought to be cancelled, Petitioner’s pleaded applications and their file histories are not automatically of record. See TBMP § 704.03(b)(2). Nor did the TTAB take judicial notice of such applications and file histories.

Petitioner next argued that Registrant’s admissions in its Answer establish that the applications were refused based on Registrant’s THANK YOU registration. Registrant did admit in its Answer that Petitioner filed the applications, but it denied allegations pertaining to the refusals. Petitioner maintained that Registrant’s responses to interrogatories also proved its standing, but here again Registrant only admitted the applications were filed, and not the refusals of registration. Petitioner also argued that it had standing based on common law use of MERCI for wine, but Petitioner did not submit any testimony evidence to prove such common law rights.

The TTAB eventually found that Petitioner established standing based on Registrant’s interrogatory answers, where the TTAB found in essence that Registrant admitted “the parties are direct competitors, both being in the wine business,” which was sufficient for standing.

With respect to the abandonment and void ab initio claims, the TTAB found that Registrant admitted in response to discovery that it did not sell wine bearing the mark until several years after the registration issued (April 6, 2010). While Registrant’s discovery responses identified wine label approvals dated December 2014, this occurred years after registration issued. According to the TTAB, there were no bills of sales or invoices to show Registrant’s use of the mark. The TTAB noted Registrant’s letters from web designers and retail store representatives attesting to Registrant’s sale of wine in 2009, but the letters were “conspicuously silent” on the actual dates of any sales of THANK YOU brand wines. Moreover, the TTAB found that none of these documents were authenticated, and the statements were nonetheless hearsay.

Petitioner also submitted pages from Registrant’s website hiddenwineries.com and gotcheers.com. While one of the pages invited users to choose a “Thank You” wine gift, the website access date of April 29, 2015 was after the registration date.

Accordingly, the TTAB sustained the cancellation on the ground that Registrant’s registration was void ab initio because it did not use the THANK YOU mark for wine before the filing date under Trademark Act Section 1(a). In addition, the TTAB concluded that Registrant’s subsequent nonuse of the mark for three years, accompanied by the absence of any evidence of an intent to resume or commence use of the mark, constituted abandonment. Registrant’s appeal before the U.S. District Court for the Northern District of California is pending.

Categories
TTAB

TTAB ON APPEAL: The Fight Over TAI-CHI for Tea Before the Federal Circuit

Zheng Cai (“Registrant”) filed a notice of appeal before the Court of Appeals for the Federal Circuit (“Federal Circuit”) on March 12, 2018 (Case No. 2018-1688), seeking review of the Board’s final decision in Diamond Hong, Inc. v. Zheng Cai DBA Tai Chi Green Tea Inc. (Cancellation No. 92062714). In that case, the Board sustained Diamond Hong, Inc.’s (“Petitioner”) petition to cancel Registrant’s TAI CHI GREEN GEA WU DANG & Design mark shown below for “green tea; tea; tea bags,” on the ground of likelihood of confusion with Petitioner’s registered mark TAI CHI & Design shown below for “processed herbs; processed ginseng used as an herb; herbal food beverages; royal jelly for food purpose; and tea.”

The Board held that Petitioner established priority of use of its mark dating back to 1999.  The Board observed that “in a cancellation proceeding where both the petitioner and respondent are owners of registrations, the petitioner must prove priority of use.” Citing Christian Broad. Network Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560, 1565 (TTAB 2007).  Registrant did not present any evidence of prior use of its mark, and instead relied on the May 26, 2011 filing date of its underlying application. With respect to the goods, the Board found that the identification of goods in the Registrant’s registration and Petitioner’s pleaded registration both included tea. Here, the parties’ goods were considered identical in part for purpose of a likelihood of confusion.  Where the goods are identical, the Board presumed that the such goods move in the same channels of trade and are available to the same classes of consumers, in this case general consumers who consume or purchase tea. Thus, the Board found that both the second and third du Pont factors favored Petitioner. The Board next considered the first du Pont factor, namely, the similarity of the parties’ marks in their entirties.  As a whole, the Board concluded, Petitioner’s and Registrant’s marks share strong similarities in appearance, sound, meaning, and overall commercial impression. 

According to the Board, both marks “incorporate a large yin-yang symbol.  Because color was not claimed as part of Petitioner’s registered mark, the Board noted that it could be presented in a green-and-white color scheme like Registrant’s mark.  Further, the Board noted that both marks make prominent use of the identical term TAI CHI, which are the only works in Petitioner’s mark and reinforced by the Chinese characters that also mean “tai chi.”  There are differences between the marks, as the Board acknowledged the terms “GREEN TEA” and “WU DANG” in Registrant’s mark.  However, the Board found that “green tea” is generic in association with Registrant’s goods, and thus consumers are likely to accord less weight in distinguishing the parties marks.

Moreover, the Board concluded that “WU DANG” is likely to be viewed by consumers as a variation or brand extension of Petitioner’s mark. Based on the similarities of the marks, identical goods, and the same customers and channels of trade, the Board sustained the petition for cancellation of Registrant’s mark. Registrant’s appeal to the Federal Circuit is pending.

Categories
Announcements

Kelly IP Named Top Trademark Prosecution Firm in the U.S. for 2018 by Managing Intellectual Property

Kelly IP was honored by Managing Intellectual Property at its Americas 2018 IP Awards ceremony on March 15, 2018 in New York City. Kelly IP received the national award for Trademark Prosecution Firm of the year for 2018. This is the second year in a row Kelly IP received this award. Kelly IP was also shortlisted among several firms for national and regional awards for trademark litigation.

Kelly IP has received several other prestigious recognitions in 2018, including:

  • IP Stars 2018 recognized Kelly IP as a Tier 1 firm in the country for trademark litigation (1 of 3 firms) and a Tier 1 firm in the country for trademark prosecution (1 of 5 firms). 
  • World Trademark Review 1000 2018 named Kelly IP as one of only 6 “Gold” status trademark firms in the country, WTR 1000’s highest national ranking.
  • World Trademark Review 1000 2018 recognized Kelly IP as one of the top 3 “Gold” status firms in the Washington, DC area for both trademark enforcement/litigation and trademark prosecution/strategy.
  • World Trademark Review 1000 2018 recognized all five Kelly IP partners as leading trademark practitioners.

Managing Intellectual Property, IP Stars, and World Trademark Review 1000 all base their awards and recognitions on extensive research, including interviews with in-house counsel and peers in private practice, to identify leading law firms and practitioners in the trademark field. 

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Trademark

Profiles In Trademarks: For One Slogan, There’s More To The Picture Than Meets The Eye

Many songs are laden with “hooks,” musical barbs that implant themselves indelibly in the cultural consciousness, like Eric Clapton’s searing guitar riff in “Layla.” But how many hooks are tied to a trademark?

I can think of one. Neil Young’s “Hey, Hey, My, My (“Into the Black”), Neil’s masterpiece from the late ‘70s, complete with crushing guitar chords, a raw and piercing solo on Neil’s feedback-laden “Old Black” Gibson Les Paul, and the defiant refrain “Rock and Roll will never die.” Summing it all up—so much so that it became the album’s title—is the song’s urgent justification for why “It’s better to burn out than to fade away”—”Rust Never Sleeps.”

Now, Neil Young’s lyrics, both before and after “Rust,” typically display a poet’s cryptic lyricism. Whether “searching for a heart of gold,” or “lying in a burned out basement with the full moon in [his] eyes,” Neil Young has always been a “dreamer of pictures.” So it may come as a surprise that “Rust Never Sleeps,” one of his most iconic metaphors, came not from his febrile imagination (legend has it that he wrote “Down By The River” and “Cowgirl In The Sand” in one flu-ish afternoon), but from the world of advertising.

That’s right, the iconoclastic Mr. Young— who’s chided fellow songsters for selling their artistic souls to the devilish Mad Men (listen to “This Note’s For You” to hear his disdain for peers who’ve rented their hits for TV ads)—this champion of creative purity, actually adopted one of his most iconic images from an unlikely corporate source—”Rust-Oleum,” the protective paints and coatings maker “whose long-time slogan was, you guessed it, “Rust Never Sleeps”— three words that succinctly and convincingly conveyed the inexorable fate of any piece of metal whose owner was careless or neglectful enough to leave nakedly unprotected.

As products go, Rust-Oleum has a backstory worthy of a Neil Young shanty (for a taste of Neil’s nautical bent, listen to “Captain Kennedy,” his mournful anti-war lament.) According to company lore, Rust-Oleum’s founder, sea captain Robert Fergusson, “looking for ways to keep his ship in shape, “noticed that an accidental splash of fish oil had stopped the relentless spread of corrosion on his rusty metal deck, he immediately recognized it for what it was: A valuable solution.” https://www.rustoleum.com/about-rust-oleum/our-history

Although they worked in different genres and achieved different results, both Cap’n Ferguson and Neil Young experienced epiphanies—sparks of inspiration—that yielded something enduring, be it the protective properties of Ferguson’s oleaginous paint, or the ragged glory of Young’s song, which remains a staple of his concert setlists.

Today, with the advent of social media, snap chat, and e-commerce, some experts fear that taglines and slogans have begun to fade away from the advertising landscape. While many slogans retain their cache—sometimes over decades (think “Good to the Last Drop” and “You’re in good hands with Allstate”)—some observers believe taglines have become less relevant when so many other brand-messaging options exist. http://deniseleeyohn.com/taglines-are-deadlong-live-taglines/.

Neil Young’s song, with its borrowed hook providing a furious crescendo that rails against atrophy and irrelevance, ensures that the one-time slogan “Rust Never Sleeps” will neither burn out nor fade away.

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Announcements

Kelly IP Achieves “Gold” Status in the 2018 World Trademark Review National Rankings

Kelly IP, LLP has again been recognized as a top-tier trademark law firm nationally and in the Washington, DC area in the 2018 World Trademark Review 1000 (WTR 1000).

  • Nationally, Kelly IP was recognized as one of only six “Gold” status trademark firms in the country, WTR 1000’s highest national ranking.
  • In the Washington, DC area, for the fourth year in a row, Kelly IP was recognized as one of only three “Gold” status firms in both trademark categories—trademark enforcement and litigation, and trademark prosecution and strategy.

The WTR 1000 report had high praise for Kelly IP, providing the following comments based on client feedback:

  • “Despite coming into existence just a few years ago, Kelly IP has already cemented its position as one of the pre-eminent names in the trademark world; this year, the revered outfit joins the exclusive WTR 1000 national gold tier club”
  •  It is “an amazing firm that does impeccable work at a fraction of the cost that you would expect given its quality”
  • The firm’s “insight is really sharp when it comes to filing and strategy,” but it also houses “a talented litigation team” and is “superb in contentious mandates”
  • “It is fantastic at clearing marks and is especially adept in the entertainment sphere”
  • “The ‘tremendous firm’ continues to enjoy a rapidly increasing demand for its services, and the 2016-2017 period saw it bring on board a number of new clients – and new lawyers to advise them”

Dave Kelly, managing partner of Kelly IP, said “We are excited to be honored by WTR 1000 as one of its top-tier national trademark firms. With this recognition, and top-tier national trademark rankings by Legal 500 and IP Stars, Kelly IP has achieved top-tier national status with all of the leading trademark ranking publications.  We are very proud to be singled out for these prestigious recognitions, especially given the caliber of the other larger and older nationally ranked firms.”

The WTR 1000 is dedicated to identifying the world’s leading trademark law firms and practitioners. Through an extensive research process conducted by a team of highly qualified, full-time analysts that interview and communicate with numerous lawyers and their clients, the publication identifies the leading trademark law firms and lawyers in more than 80 key jurisdictions globally. The WTR 1000 2018 results can be found at www.worldtrademarkreview.com.

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Announcements

Kelly IP Achieves “Gold” Status in the 2018 World Trademark Review National Rankings

Kelly IP, LLP has again been recognized as a top-tier trademark law firm nationally and in the Washington, DC area in the 2018 World Trademark Review 1000 (WTR 1000).

  • Nationally, Kelly IP was recognized as one of only six “Gold” status trademark firms in the country, WTR 1000’s highest national ranking.
  • In the Washington, DC area, for the fourth year in a row, Kelly IP was recognized as one of only three “Gold” status firms in both trademark categories—trademark enforcement and litigation, and trademark prosecution and strategy.

The WTR 1000 report had high praise for Kelly IP, providing the following comments based on client feedback:

  • “Despite coming into existence just a few years ago, Kelly IP has already cemented its position as one of the pre-eminent names in the trademark world; this year, the revered outfit joins the exclusive WTR 1000 national gold tier club”
  •  It is “an amazing firm that does impeccable work at a fraction of the cost that you would expect given its quality”
  • The firm’s “insight is really sharp when it comes to filing and strategy,” but it also houses “a talented litigation team” and is “superb in contentious mandates”
  • “It is fantastic at clearing marks and is especially adept in the entertainment sphere”
  • “The ‘tremendous firm’ continues to enjoy a rapidly increasing demand for its services, and the 2016-2017 period saw it bring on board a number of new clients – and new lawyers to advise them”

Dave Kelly, managing partner of Kelly IP, said “We are excited to be honored by WTR 1000 as one of its top-tier national trademark firms. With this recognition, and top-tier national trademark rankings by Legal 500 and IP Stars, Kelly IP has achieved top-tier national status with all of the leading trademark ranking publications.  We are very proud to be singled out for these prestigious recognitions, especially given the caliber of the other larger and older nationally ranked firms.”

The WTR 1000 is dedicated to identifying the world’s leading trademark law firms and practitioners. Through an extensive research process conducted by a team of highly qualified, full-time analysts that interview and communicate with numerous lawyers and their clients, the publication identifies the leading trademark law firms and lawyers in more than 80 key jurisdictions globally. The WTR 1000 2018 results can be found at www.worldtrademarkreview.com.

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Announcements

Two Kelly IP Partners Ranked in Top 250 Women in IP Worldwide by IP STARS

Kelly IP is pleased to announce that Stephanie Bald and Linda McLeod have been recognized in the Top 250 Women in IP worldwide by IP STARS. This ranking recognizes women IP practitioners in private practice who have performed exceptionally for their clients and firms in the past year. It is based on global research conducted by IP STARS, including interviews and surveys of IP practitioners in private practice and in-house. IP STARS is one of the most authoritative and comprehensive IP legal directories published by Managing Intellectual Property (MIP).  For more information, please visit www.ipstars.com.

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Announcements

Kelly IP Among Top Trademark Firms in Legal 500 U.S. Rankings for 2017

The Legal 500, a leading global legal ranking and referral guide, has again recognized Kelly IP in the top tiers of U.S. law firms for both “trademark litigation” and “trademarks non-contentious (full coverage).” These rankings place Kelly IP among the top 9 law firms in the country for trademark litigation and among the top 12 firms in the country for non-contentious trademark work. 

In addition, all five Kelly IP partners—Dave Kelly, Rob Litowitz, Linda McLeod, Lynn Jordan, and Stephanie Bald—were again identified as Recommended Lawyers by Legal 500.  

Detailed information regarding Kelly IP’s 2017 rankings is available at The Legal 500.

Categories
Intellectual Property

Trial of the Century: Trademark Style

“So this is the Day of The Dead” from “We All Lose One Another” by Jason Collett Trial of the Century! For most Americans, those words conjure two letters—O.J. But for the past week or so, O.J. arguably has been upstaged by an unlikely figure—Dan Aykroyd. That’s right, Dan Aykroyd–one of Saturday Night Live’s original “Not Ready For Prime Time Players” who won the fame as the staccato pitchman in SNL’s “Bass-O-Matic” infomercial parody, and who cemented his place in comedy’s pantheon with the original “Ghostbusters” and “Blues Brothers” films. That Dan Aykroyd has evolved into a trademark crusader for his real-life brand of vodka called “Crystal Head,” sold in a distinctive skull-shaped bottle:

As with most things, success breeds imitators. For Crystal Head, imitation came in the form of rival KAH brand of tequila, also packaged in skull-shaped bottles. Unlike Aykroyd’s brand, those skulls were opaque, brightly colored affairs:

KAH founder Kim Brandi claimed that Mexico’s iconic Day of The Dead imagery had inspired her skull design. Aykroyd and his business partner Globefill, Inc., didn’t buy it. They sued for trademark infringement back in 2010. But in a 2013 trial, Brandi beat back Aykroyd’s infringement claim. She testified that she hadn’t even seen Aykroyd’s skull bottles. And the jury bought it.

Dan Aykroyd didn’t give up. He and his lawyers appealed and won a new trial. That new trial, which unfolded last week in a California courtroom, featured showmanship, skullduggery, and scandal worthy of one of Aykroyd’s big-budget Hollywood movies. Aykroyd cast himself in the role of star witness for the prosecution. Wielding a tape measure, Aykroyd systematically compared the features, angles, and dimensions of his skull bottle to Brandi’s. He also testified that confusion in the marketplace was threatening his brand. Claiming to have found a broken glass inside a KAH bottle, Aykroyd told the jury: “I thought, even more reason for me to be concerned about source. What if someone got hurt? And for someone to think we have a product on the market that’s inferior to our vodka, that’s unacceptable.” Aykroyd also testified that KAH tequila “obviously” was a confusingly similar copycat: “I really couldn’t count about how many people who have come and asked us about our new tequila in the skull bottle. We had to say, ‘It’s not ours.’”

Brandi, for her part, argued that Aykroyd shouldn’t be able to block all skull shaped liquor bottles, especially ones like Brandi’s, whose bright colors evoked iconic Mexican imagery. And Brandi stuck to her story, insisting that she hadn’t seen Aykroyd’s skull bottles when decided on the Day of The Dead theme for her tequila bottles. She brushed-aside the similarities Aykroyd had pointed out as “coincidence.”

That’s when the real drama happened. In a finale worth of Perry Mason, Aykroyd’s legal team unveiled a bombshell—the guy Brandi hired to design her bottles. This surprise witness testified that Brandi handed him one of Aykroyd’s skull bottles and told him to make a plaster cast of it so that she could model her design on Aykroyd’s distinctive skull container. Armed with this testimony, Aykroyd’s lawyer told the jury that Brandi had lied. Four hours later, the jury returned its verdict—guilty as charged.

So now, seven years after the story began, Dan Aykroyd and his legal team are close to achieving their perfect ending. All that remains is for the Judge to decide the remedy. That phase of the case is still to come. For now, Aykroyd has the satisfaction of knowing that, at least for now, justice delayed is not justice denied.

The name of the case is Globefill Inc. v. Elements Spirits Inc., 2:10-cv-02034, U.S. District Court for the Central District of California.

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Announcements

The Legal 500 Names Dave Kelly to Inaugural Hall of Fame of U.S. Lawyers

The Legal 500 announced the creation of its Hall of Fame, which “highlights individuals who have received constant praise by their clients for continued excellence . . . and who are at the pinnacle of the profession.” Starting with the United States, the criteria for entry is to have been recognized by The Legal 500 as one of the elite leading lawyers in a practice area for six consecutive years.

Only 11 trademark lawyers were recognized in the categories of either trademark litigation or trademark non-contentious. Dave Kelly was the only lawyer in the country named to the Legal 500 Hall of Fame in both trademark categories. Dave earned this honor by being named as an elite leading lawyer by The Legal 500 in both trademark practice areas for nine consecutive years.

Stephanie Bald, a co-founder and partner of Kelly IP, said, “Dave is a brilliant legal strategist and advocate, with a common sense, no-nonsense approach to the practice of trademark law. His advice is driven by marketplace and business realities, not detached legal theories. And his care and attention to clients’ needs and interests is nothing less than obsessive. Dave is the problem-solver in chief, and clients love him because he is adept at quickly navigating and resolving complex legal issues, so the business can get back to work. The firm is thrilled by Dave’s induction into The Legal 500 Hall of Fame. There is no one more deserving.”

The Legal 500 is an independent guide that ranks law firms and individual lawyers around the world. It conducts comprehensive research and analysis, and it recommends law firms and lawyers purely on merit based on interviews with clients and peers. The Legal 500’s inaugural Hall of Fame for United States lawyers is available at https://www.legal500.com/hall-of-fame.

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Announcements

Kelly IP Named Top Trademark Prosecution Firm in U.S. (2017) by Managing Intellectual Property

Kelly IP was honored twice by Managing Intellectual Property (“MIP”) at its North American IP 2017 Awards ceremony on March 23, 2017 in Washington, D.C. Kelly IP received the national award for 2017 Top Trademark Prosecution Firm Nationally and the regional award for the 2017 Top Trademark Prosecution Firm in the Northeast United States.  Kelly IP was also shortlisted for national and regional awards for trademark litigation.

Kelly IP has received a number of other prestigious recognitions in the past year, including:

  •  IP Stars 2017 recognized Kelly IP as among the among the top 5 firms in the country for trademark litigation and the top 8 firms in the country for trademark prosecution.
  •  World Trademark Review 2017 recognized Kelly IP as one of the top 3 firms in the Washington, DC area for both trademark enforcement/litigation and trademark prosecution/strategy, and as one of the top 16 trademark firms in the country.
  •  Legal 500 U.S. 2016 recognized Kelly IP among the top 10 firms in the country for trademark litigation and among the top 11 firms in the country for non-contentious trademark work.

The nominees and winners of MIP’s North America Awards were selected following extensive research, including interviews with in-house counsel and peers in private practice.

Details on MIP and its North America Awards are available at www.managingip.com.

Categories
Announcements

WIPR Recognizes Kelly IP Partners Dave Kelly and Linda McLeod as 2017 “World IP Leaders”

Kelly IP partners Dave Kelly and Linda McLeod have been selected for inclusion in World Intellectual Property Review’s (WIPR) 2017 directory of “World IP Leaders”  for the second straight year.  WIPR launched its inaugural WIPR Leaders in 2016 as a comprehensive guide to the leading practitioners worldwide in the areas of trademarks and patents.  For 2017, WIPR recognized 1,700 individuals worldwide “as the best and the brightest in IP private practice.”
 
To compile this list, WIPR contacted more than 12,000 individuals, both in-house counsel and private practice attorneys, for peer nominations. WIPR then researched and examined every nominated lawyer, including their “practice history, industry expertise and notable cases,” among other things, before arriving at the final list.  More information about WIPR’s 2017 directory of “World IP Leaders” is available at https://www.worldipreview.com/listing/leaders.

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Announcements

Kelly IP and Dave Kelly Again Shortlisted for Managing IP’s 2017 North America Awards

Managing Intellectual Property, a leading global legal ranking and referral guide, announced the shortlists for Managing IP’s North America Awards for 2017. For the second consecutive year, Kelly IP was one of several firms shortlisted for national and regional awards in both the Trademark Contentious and Trademark Prosecution categories (seven law firms were listed in each category):

Trademark Contentious National
Trademark Prosecution National
Trademark Contentious Northeast
Trademark Prosecution Northeast

Kelly IP was one of only three firms shortlisted for national awards in both the Trademark Contentious and Trademark Prosecution categories.

Managing Intellectual Property also shortlisted individuals for “Outstanding IP Litigator Awards” in select U.S. jurisdictions. Dave Kelly was one of ten lawyers shortlisted for this award for the District of Columbia for the second year in a row, and one of only two trademark lawyers shortlisted.

The lists of law firms and individuals shortlisted for the 2017 awards are available at https://www.managingip.com/us.

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Announcements

Kelly IP Recognized as a Top National Trademark Firm by IP Stars

Managing Intellectual Property (MIP), a leading global legal ranking and referral guide, released its rankings of U.S. trademark law firms for 2017 in its IP Stars publication. MIP recognized Kelly IP in Tier 1 of U.S. law firms nationally for trademark litigation (1 of only 5 firms) and in its Tier 2 of firms for trademark prosecution (putting Kelly IP in the top 8 firms in the country).

All five Kelly IP partners—Dave Kelly, Rob Litowitz, Linda McLeod, Lynn Jordan, and Stephanie Bald—were previously recognized as “IP Stars” by MIP in its individual rankings of trademark lawyers for 2014, 2015, and 2016. The individual rankings for 2017 will be released in the next few months.

IP Stars highlights the country’s leading intellectual property firms and lawyers and is based on surveys completed by peers and in-house counsel and on interviews with clients and leading in-house counsel. The 2017 rankings of U.S. trademark law firms are available at http://www.ipstars.com/countries/us/us.

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Announcements

Kelly IP Makes Moves Up in the National Rankings in the 2017 World Trademark Review 1000

Kelly IP, LLP has again been recognized as a leading trademark law firm nationally and in the Washington, DC area in the 2017 World Trademark Review 1000 (WTR 1000). 

  • In the Washington, DC area, for the third year in a row, Kelly IP was recognized as one of the top 3 firms for 2015 in both trademark categories—trademark enforcement and litigation, and trademark prosecution and strategy. 
  • Nationally, Kelly IP was recognized as one of the top trademark firms in the country for the third year in a row, this year moving into the top 16 trademark firms in the country.

The WTR 1000 report contained client feedback on the firm, including:

  • “Every single one of its lawyers is really incredible”
  • “What makes its group of all-stars super-competitive is that you receive a world-class service at a significantly reduced rate – you get so much for your money”

The WTR 1000 is dedicated to identifying the world’s leading trademark law firms and practitioners. Through an extensive research process conducted by a team of highly qualified analysts that interview and communicate with numerous lawyers and their clients, the publication identifies the leading trademark law firms and lawyers in more than 80 key jurisdictions globally. The WTR 1000 2017 results can be found at www.worldtrademarkreview.com.

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Announcements

All Five Kelly IP Partners Recognized in the 2017 World Trademark Review 1000

In addition to Kelly IP’s Washington DC and national firm rankings for 2017 (top 3 trademark firms in DC Metro area for both litigation and prosecution and strategy, and among the top 16  trademark firms in the country), the World Trademark Review 1000 (WTR 1000) has again recognized all five Kelly IP partners as leaders in the field. These individual recognitions demonstrate the high-caliber and significant expertise that defines Kelly IP.

The WTR 1000 report contained the client feedback on Kelly IP that “Every single one of its lawyers is really incredible,” with the following specific comments on Kelly IP’s partners:

  • Dave Kelly was named one of the top 11 lawyers nationally for trademark enforcement and litigation, the fourth year in a row that Dave was named in this top national band.  In addition, Dave was one of 7 lawyers in the highest Gold band ranking for enforcement and litigation and one of 10 Gold status lawyers for prosecution and strategy in the Washington, DC area, the third year in a row that Dave was awarded Gold status in both categories. Clients described Dave as a “superb lawyer” with a “transnational reputation” who “is massively experienced, has a fantastically clear grasp of things and is an eminently practical and skilled negotiator” who “has always been excellent . . . and there was no doubt that we would follow him” when he co-founded Kelly IP.
  • Rob Litowitz was recommended for trademark enforcement and litigation. Rob achieved Silver status for enforcement and litigation in the Washington, DC area for the fourth year in an a row.  Rob is described by clients as “a fearless and tireless advocate” and “an undeniably brilliant legal writer” and who “commands respect and with his pragmatism he can get businesses to back away from the ledge in heated situations.”
  • Linda McLeod was recognized in both trademark categories.  For the fourth straight year Linda achieved Gold status for prosecution and strategy and either Gold or Silver status for enforcement and litigation in the Washington, DC area.  Linda was recognized because clients commended Linda because she is “stellar at handling oppositions and cancellations,” as well as appeals before the Federal Circuit, and “she has reviewed hundreds, if not thousands, of trademark office cases and possesses a very sharp legal mind – if you need a heavy hitter, she’s the person to call.” In addition, Linda is a “wonderful attorney” who is “deeply familiar with all aspects of trademark law” and “always achieves the optimal outcome in any situation.” 
  • Lynn Jordan was recognized for prosecution and strategy.  Lynn was one of only 10 Gold status lawyers for prosecution and strategy in the Washington, DC area for the second year in a row.  Clients describe Lynn as “incredibly experienced, helpful, friendly and cost effective” and “an extremely reliable and responsive attorney.” 
  • Stephanie Bald was ranked among top Washington, DC area trademark lawyers for trademark enforcement and litigation for the second year in a row.  Stephanie was named a Silver status lawyer for enforcement and litigation.  Stephanie is described as “a jack of all trades who does a fabulous job in everything. She possesses a business-minded outlook, her fundamental understanding of the law is top-notch and, importantly, she is a real joy to work with.”

The WTR 1000 is dedicated to identifying the world’s leading trademark law firms and practitioners. Through an extensive research process conducted by a team of highly qualified, full-time analysts that interview and communicate with numerous lawyers and their clients, the publication identifies the leading trademark law firms and lawyers in more than 80 key jurisdictions globally. The WTR 1000 2017 results can be found at www.worldtrademarkreview.com.

Making waves since its debut on the trademark scene just a few years ago, compact boutique Kelly IP has rapidly ascended both the local and national tables. “A clear gold-tier firm locally” and “a very strong name nationally”, it receives ringing endorsements for the calibre of its practitioners: “Every single one of its lawyers is really incredible.” “What makes its group of all-stars super-competitive is that you receive a world-class service at a significantly reduced rate – you get so much for your money.” Serving a roster of the world’s most prestigious brands – such as Twentieth Century Fox, BBC, Aston Martin, Yahoo! and Disney – it saw several other household names flock to its doors of late, including The Hershey Company and BMW. “One of the finest trademark lawyers in the world”, David Kelly leads a “superb team that has excellent knowledge of substantive and procedural law, with a stunning track record in delivering great results”. “Kelly is terrific in TTAB disputes and a tough litigator. Strategic and effective, he has a solid grasp of all the issues.” His “succinct advice, robust advocacy and negotiation skills are all invaluable”. A former TTAB judge, the “confident, courteous and reasonable” Linda McLeod is “stellar at handling oppositions and cancellations”, as well as appeals before the Federal Circuit. “She has reviewed hundreds, if not thousands, of trademark office cases and possesses a very sharp legal mind – if you need a heavy hitter, she’s the person to call.” The “wonderful attorney” is “deeply familiar with all aspects of trademark law” and “always achieves the optimal outcome in any situation”. She continues to support Travelers in the protection of its famous red umbrella logo; as do Robert Litowitz and Lynn Jordan. Litowitz is “a fearless and tireless advocate” and “an undeniably brilliant legal writer”. “He commands respect and with his pragmatism he can get businesses to back away from the ledge in heated situations.” “An extremely reliable and responsive attorney”, Jordan is “incredibly experienced, helpful, friendly and cost effective”. The final member of its partnership is Stephanie Bald, “a jack of all trades who does a fabulous job in everything. She possesses a business-minded outlook, her fundamental understanding of the law is top-notch and, importantly, she is a real joy to work with.”