Kelly IP has earned a prestigious spot on the 2024 WTR Global IP Awards shortlist for Trademark Litigation Firm of the Year. These awards recognize the most exceptional achievements in intellectual property law, including trademark litigation, prosecution, and transactional work.
Being named to this shortlist places Kelly IP among the leading IP firms globally, acknowledging our dedication to delivering top-tier trademark services. The winners will be announced October 17.
Kelly IP attorneys David Kelly, Linda McLeod, Lynn Jordan, and Stephanie Bald have been selected among the 2024 WTR Global Leaders, a list recognizing the world’s foremost law firm and corporate trademark practitioners.
With four WTR Global Leaders, Kelly IP led all trademark firms in the DC Metro Area. In addition to their WTR Global Leaders honors, the four were among seven Kelly IP attorneys recognized in the World Trademark Review 1000 for 2024:
● David was described as a lawyer who can “adroitly handle high-profile disputes and structure strong trademark portfolios.”
● Linda was said to demonstrate “impressive versatility as a clearance and prosecution pro and experienced litigator.”
● Lynn was described as “a go-to for media and entertainment companies seeking top-tier strategic advice.”
● Stephanie “figures out creative solutions to complex problems and presents them engagingly in court.” Also, Stephanie was recently chosen as one of Managing IP’s Top 250 Women in IP for 2024.
Compiled by Law Business Research, the WTR Global Leaders list draws upon research used to select the WTR 1000. This extensive research process is conducted by a team of independent analysts who interview lawyers and their clients to identify the leading trademark law firms and lawyers globally.
“Don’t you remember the day that you went away and left me?” Wasted Days and Wasted Nights, written by Huey Meaux, performed by Freddie Fender
For years, design patent owners had it pretty, pretty good. Design patents—patents that cover ornamental designs for useful objects—were easier to get and harder to lose than their cousins, utility patents (which cover useful inventions like new drugs, computers, machinery, and the like). Utility patents typically undergo heavy scrutiny by examiners at the Patent Office and can expect robust validity challenges at the Patent Board of Interference and in federal court. But design patents have traditionally sailed through the Patent Office and have rarely been declared invalid due to similarity with prior designs, called “prior art.” That’s largely because until just last month, a party hoping to invalidate a design patent for “obviousness” based on similarity to the prior art faced several hurdles.
First, the challenger had to identify a prior “primary prior art reference” that was “basically the same” as the patented design. Many obviousness arguments foundered on that “primary reference” requirement, with the Patent Office and courts interpreting “basically the same” as almost indistinguishable.
If the challenger managed to clear the first hurdle, it still needed to identify “secondary references” that could modify the “primary reference” to create “a design that has the same overall visual appearance as the [patented] design.” What’s more, the “secondary references” had to be “so related [to the primary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.” In other words, the test for design patent invalidity was rigid, cumbersome, and difficult to satisfy.
That state of play was ideal for the automobile industry. Car makers such as Ford and General Motors harnessed design patents as part of a clever strategy to maintain a stranglehold on “crash parts,” that is, fenders, bumpers, hoods, doors, headlights, taillights, and other components likely to crumple in collisions and need to be swapped out for a replacement part. Automakers realized that they could fend off competition for replacement fenders and bumpers, etc., by obtaining separate
design patents on all the individual parts of their various vehicles. That has been part of the car maker’s playbook for decades. Challenges to this “slice, dice, and design patent” strategy have largely failed.
Until now. On May 21, 2024, the full Federal Circuit, sitting en banc in a case involving a design patent for an automobile fender, tossed out the old test for design patent obviousness, calling it “improperly rigid.” The Federal Circuit noted that the Supreme Court had previously jettisoned a rigid test for utility patent obviousness, finding it at odds with the “broad standard” in the Patent Act’s Section 103, the section settling forth the non-obviousness requirement for patents. The Federal Circuit also looked back to an 1893 Supreme Court case involving saddles, in which the Court used a wholistic approach to assessing design patent validity.
So out with the old design patent obviousness test, in with the new. The new test, however, is rooted in precedent. It harkens back not just to the 1896 saddle case with its more flexible approach, but also to the Supreme Court’s seminal 1966 decision on utility patent obviousness, Graham v. John Deere. There, the Court elaborated that the ultimate test of obviousness is based on “several basic factual inquiries,” including “the scope and content of the prior art,” “differences between the prior art and the [patent] claims at issue” and “the level of ordinary skill in the pertinent art.” In addition, under Graham, secondary considerations such as commercial success, long-felt need, and failure of others can inform the obviousness analysis. The Federal Circuit concluded that the test for obviousness should not depend on the type of patent at issue. Section 103 of the Patent Act applies equally to both utility and design patents, and so should the test for obviousness.
Going forward, the Federal Circuit instructs that identifying analogous art for design patents should be “straightforward,” based on designs for the same “field of endeavor as the article of manufacture of the claimed design.” The Court also noted that, unlike utility patents, design patents have no written description, written claims, or other verbal content that defines the scope of the design invention or describes the “particular problem” the designer was trying to address. After all, a design “invention” is “defined by the overall impression that the drawings [shown in the design patent] convey.” A picture is worth a thousand words. Therefore, the Federal Circuit explained that it would “not delineate the full and precise contours of the analogous art test for design patents,” leaving it “to future cases to further develop the application of this standard.” Flexibility now trumps rigidity.
As for the “primary reference” on which the obviousness determination should turn, the Federal Circuit said it “need only be something in existence,” likely the “closest prior art” to the patented design. . . the more visually similar [ ] to the claimed design, the better positioned the challenger will be to prove [obviousness.]”
Once the scope of the prior art is determined and the closest prior art found, the next step in the analysis is to compare the visual appearance of the patented design to the primary reference, focusing on the perspective of an ordinary designer in the field of the article of manufacture in question, e.g., the perspective of a cell phone designer governs comparisons between cell phone designs.
The analysis looks to whether the primary reference, either alone or combined with secondary references, makes the patented design obvious to the hypothetical ordinary designer. If secondary references are considered, “record-supported reasons” must suggest, without hindsight, using the secondary references to modify the primary reference “to create a design that has the same overall visual appearance as the claimed design.”
As for the case in question about the fender design, the Federal Circuit vacated the determination of non-obviousness and remanded to the Patent Office with instructions to reconsider the evidence under the new flexible standards, the one derived from historical precedents. To paraphrase The Who: “meet the new test, same as the old test?
This decision, which seeks to align design patent obviousness with the law for utility patents, raises as many questions as it answers. Perhaps the most interesting question is this: did the Federal Circuit appreciate the irony of reaching back to a Nineteenth Century case about horse saddles to decide a twenty-first-century case about a fender for a horseless carriage?
Quote of the day: “Design is not just what it looks like and feels like. Design is how it works.” — Steve Jobs
1 LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348, slip op. at 15 (Fed. Cir. May 21, 2024) (en banc)
Kelly IP once again received the highest Tier 1 national ranking for trademark disputes and prosecution from Managing IP in its annual IP Stars ratings. The firm also earned top rankings for trademark disputes and prosecution in D.C. and recommended status for copyright.
In addition to maintaining its firm rankings, six Kelly IP attorneys were recognized by Managing IP as IP Stars in their respective practice areas:
● David Kelly, Trademark and Copyright Star
● Stephanie Bald, Trademark Star
● Rob Litowitz, Trademark and Copyright Star
● Lynn Jordan, Trademark Star
● Linda McLeod, Trademark Star
● Kelu Sullivan, Trademark Star
IP Stars is Managing IP’s annual comprehensive guide to leading law firms for trademark prosecution and disputes. IP Stars rankings are based on extensive research, including peer and client recommendations. Managing IP does not endorse or recommend any firm, and firms cannot vote for their own inclusion, solicit votes from associates, or pay to be included in the rankings.
For more information about IP Stars, please click here.
Kelly IP partner, Stephanie Bald, has been recognized as one of Managing IP’s Top 250 Women in IP for 2024.
Managing IP recognizes senior female IP practitioners in private practice who have performed exceptionally for their clients and firms in the past year. The 2024 edition of Managing IP’s Top 250 Women in IP is based on extensive research between September 2023 and February 2024, across 50 jurisdictions worldwide.
Additional information regarding this recognition and a full list of named practitioners is available at https://www.ipstars.com/SpecialLists/Top250WomenInIP.
On May 9, 2024, the Supreme Court in Warner Chappell Music Inc. v. Nealy held in a split decision that copyright plaintiffs are able to obtain monetary relief for any timely infringement claim, no matter when the infringement occurred.
The Copyright Act provides that “[n]o civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.” 17 U.S.C. § 507(b). Federal courts of appeals, however, have held that this statute of limitations has a “discovery rule” exception – that is, Copyright Act claims are timely when filed within three years of when a plaintiff discovered (or should have discovered) an older infringement.
That left open the following question: when a plaintiff relies upon the discovery rule to sue for copyright infringement that occurred more than three years before suit, does Section 507(b) of the Copyright Act preclude the recovery of damages?
In Warner Chappell Music, the Supreme Court held that “no such limit on damages exists.” Rather, copyright owners may “recover damages for any timely claim.” Writing for the Court, Justice Kagan explained that Section 507(b) is simply a “time-to-sue prescription” that “establishes no separate three-year period for recovering damages.” The Court rejected the contrary view of the Second Circuit in Sohm v. Scholastic Inc., 959 F.3d 39 (2d Cir. 2020). That view is “self-defeating,” Justice Kagan explained, because it depends on the viability of the discovery rule but simultaneously “takes away the value in what it has conferred, by preventing the recovery of damages for those older infringements.”
Warner Chappell Music itself may have limited impact outside of the Second Circuit, the only court of appeals to have adopted the three-year damages bar. The decision, however, raises the salience of the antecedent question whether the Copyright Act’s statute of limitations is subject to a discovery rule exception.
The majority in Warner Chappell Music assumed without deciding that the discovery rule applies to Copyright Act claims, leaving that question for another day. And three Justices (Justice Gorsuch, joined by Justice Thomas and Justice Alito) asserted in dissent that the Copyright Act “almost certainly does not tolerate a discovery rule.” The dissenting Justices would have dismissed the case as improvidently granted and “awaited another squarely presenting the question whether the Copyright Act authorizes the discovery rule.”
As it happens, the Supreme Court does have a case before it squarely presenting whether the discovery rule applies to the Copyright Act: Hearst Newspapers, LLC v. Martinelli. Hearst’s petition for certiorari challenging the Fifth Circuit’s application of the discovery rule was filed in November 2023 and has not yet been decided. The copyright bar will keep a close eye on that case, particularly given that three Justices have signaled their opposition to the discovery rule that plaintiffs have long relied upon when bringing claims based on older infringements.
Kelly IP and its attorneys are once again nationally recognized in the latest World Trademark Review 1000 (WTR 1000) rankings.
The firm earned “Gold” honors, WTR 1000’s highest recognition, as one of the top national trademark firms for the seventh consecutive year and a top-three Washington, DC Metro Area trademark firm for both trademark litigation and prosecution and strategy for the 10th consecutive year. Additionally, WTR 1000 named seven Kelly IP partners as leaders in their field. These individual recognitions demonstrate the high-caliber talent and exceptional trademark experience that define Kelly IP.
As a firm, WTR 1000 report describes Kelly IP as “a team of true experts in intellectual property, who operate at the highest level when it comes to both prosecution and litigation….”
WTR 1000 provided the following client feedback on Kelly IP’s lawyers:
WTR 1000, through an extensive research process conducted by a team of analysts who interview and communicate with numerous lawyers and their clients, identifies the leading trademark law firms and lawyers globally. The complete 2024 WTR 1000 can be found here.
“Cover me, shut the door and cover me.” Cover Me, music and lyrics by Bruce Springsteen
Bruce Springsteen’s 1976 album “Born In the USA,” is known for the riveting title track that launched “The Boss” on a trajectory to sold-out stadium tours and even a Broadway residency. The album is beloved for its canny collection of songs about drifters, rogues, and downbound losers grieving for lost friends and lovers and yearning for their glory days.
“Born In the USA” is also famous for the arresting cover photo by Annie Leibovitz. It features Springsteen shot from behind against the backdrop of a massive Stripes sans Stars, a taut Bruce clad in a Brando-esque T-shirt and blue jeans.
But what brand? If these were Levi’s, you’d know it from the curved back pocket stitching featured on most every style of Levi’s jeans. But here, a red ball cap flaps over the right back pocket, while the faded fabric and bright lighting wash out the left pocket. If you look closely, you can barely see the outline of Levi’s iconic stitch design, two symmetrical arches connected in the middle to form a wide “V.” But who would care enough to try to figure out whether Bruce was wearing Levi’s, Lee, Wrangler, or some other legacy jeans when he moseyed into Annie Leibovitz’s studio that day.
Jeans are jeans. Right?
Not to the companies that make them. Denim companies have used back pocket stitch designs to identify their jeans ever since Levi Strauss began selling jeans to prospectors and cowboys in the 19th century. Levi Strauss took inspiration from the firebrands—graphic symbols ranchers used to mark their livestock. He even placed his stitched “brand” in the same location where ranchers seared their T-Bar or Circle R brands on cattle, the hind quarter.
Since then, Levi’s “arcuate,” as it’s known in the industry, has become a cultural icon. Lee, Wrangler, Calvin Klein, American Eagle, and many others followed Levi’s lead, each creating its own back pocket stitch designs. This is branding “born in the U.S.A.”
Back pocket stitch designs are so important that denim companies zealously protect them. In one recent case, American Eagle sued Walmart for allegedly copying the back pocket stitch from American Eagle’s top-selling women’s jeans. On the eve of the trial, the parties settled, and the court entered a consent judgment recognizing American Eagle’s trademark rights and permanently enjoining Walmart and its supplier from using the accused back pocket stitch.. (Full disclosure, my firm represented American Eagle in this win.)
So, was covering up the “arcuate” on the “Born In the USA” album cover merely an aesthetic choice? Or did Columbia Records’s legal department weigh in, fearing an objection or perhaps more from Levi Strauss & Co.?
Did Bruce cower to brand power?
If so, who’s the real Boss?
Quote of the day: “Trust your neighbor. But brand your cattle.”
Three Kelly IP attorneys, Jason Joyal, Kelu Sullivan and A.J. Schumacher, have been appointed to International Trademark Association (INTA) committees for 2024-25.
Jason will be on the Building Bridges Committee, which works with non-IP and non-legal associations to promote the value of trademarks and brands; Kelu will join The Trademark Reporter Committee, which solicits, writes, and edits articles for INTA’s law journal; and A.J. will be on the Law Firm Committee, which develops and proposes programming, written content, and surveys on the key issues that law firms encounter.
INTA is a global association of more than 33,500 brand owners and professionals from nearly 6,000 organizations dedicated to supporting trademarks and complementary intellectual property.
WASHINGTON, D.C. (August 3, 2023) – Soon after Kelly IP launched in 2013, the firm was heralded as an “instant power” by Law360; this year, the firm reflects on its first decade as it commemorates its 10th anniversary.
Kelly IP was founded by Dave Kelly, Rob Litowitz, Linda McLeod, Lynn Jordan, and Stephanie Bald, former colleagues at an international intellectual property law firm. These five lawyers shared a focus on trademark law and a vision of a firm that could deliver BigLaw expertise in a creative, results-driven setting.
Kelly IP has since tripled its attorney ranks, growing from five to 15, and adding a professional staff of 15. The firm has cleared, prosecuted, registered and enforced thousands of marks across diverse industries ranging from retail and entertainment to technology and manufacturing to pharmaceuticals and transportation. On the litigation side, Kelly IP lawyers have filed and litigated cases in federal district courts nationwide and defended and opposed thousands of marks before the Trademark Trial and Appeal Board.
Kelly IP’s track record in high-stakes and high-profile work earned the young firm significant accolades across the legal profession in its first 10 years:
“Our success in our 10 years would not have been possible without our valued clients, colleagues, staff and others who have helped Kelly IP establish itself as a preeminent U.S. trademark law firm in such a short time,” said Founding Partner David Kelly. “We are honored to celebrate the first decade of Kelly IP, and we look forward to the next.”
About Kelly IP
Kelly IP, LLP focuses on litigation and counseling in trademark, unfair competition, false advertising, right-of-publicity, copyright, design protection, anti-counterfeiting, licensing, and Internet and domain name matters. Its attorneys have been consistently recognized by peers and legal publications as leaders in their fields. Kelly IP is committed to providing sophisticated legal representation with a commitment to quality and cost-effectiveness. For more information: kelly-ip.com.
By Rob Litowitz and Brianna Christenson
Trademark gurus and First Amendment mavens had been waiting for the Supreme Court to decide a case with potentially profound implications for both camps, Jack Daniel’s v. VIP Products.
The issue before the Court was both straightforward and nuanced: Jack Daniel’s has strong trademark rights in its name, bottle shape, logo, and slogans–icons all. But does VIP’s Bad Spaniel’s Old No. 2 dog toy, which, depending on one’s perspective is either harmless canine potty humor or an outright rip-off of Jack Daniel’s goodwill, enjoy special First Amendment protection as an expressive work, pushing the traditional “likelihood of confusion” test for trademark infringement aside?
We now have the Supreme Court’s answer. Here’s what you need to know.
1. The Rogers Test Lives On For Expressive Works
VIP argued that a special threshold requirement, known as the Rogers test, applied because its product—clearly a parody—deserved the same Constitutional safe harbor as film titles and other expressive works. (The Rogers case involved the film title “Fred and Ginger” for a movie about two aged dancers who fancied themselves like the legendary dance team Fred Astaire and Ginger Rogers. Ms. Rogers objected to her name being on movie marquees. The Second Circuit ruled that the First Amendment’s protection for expressive works trumped Ms. Roger’s concerns.)
Some observers worried that the Supreme Court might strike down or limit Rogers. It did not. It simply ruled that Rogers did not apply here. See below.
2. The Rogers Test Does Not Apply To Trademarks Used as Trademarks, No Matter How Funny, Clever, or Bawdy
Justice Kagan’s Opinion laid out a bright-line rule: There is no First Amendment threshold test where “an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods.” That is exactly what VIP did, according to the Court, making this a straight-up case of trademark infringement and dilution.
3. Jokes and expressions still matter.
The Lanham Act isn’t humorless. As the Court noted “a trademark’s expressive message—particularly a [parody]—may properly figure in assessing the likelihood of confusion.” The Court thus threw a bone to VIP and other would be commercial parodists by signaling to the lower courts that they should take jokes seriously because where the message of “ridicule” or “pointed humor” is clear, “a parody is not likely to create confusion.”
In short, VIP no longer can rely on the First Amendment to deflect Jack Daniel’s trademark claims. But Jack Daniel’s still must prove a likelihood of confusion and dilution. It must prove that Bad Spaniel’s Old No. 2 dog toy confuses, not amuses.
Kelly IP partner, Stephanie Bald, has been recognized in Managing IP’s Top 250 Women in IP 2023. Managing IP recognizes senior female IP practitioners in private practice who have performed exceptionally for their clients and firms in the past year. The 2023 edition of Managing IP’s Top 250 Women in IP is based on extensive research between September 2022 and February 2023, across 30 jurisdictions worldwide.
Additional information regarding this recognition and a full list of named practitioners is available at https://www.ipstars.com/SpecialLists/Top250WomenInIP.
Kelly IP received the highest Tier 1 national ranking for both trademark disputes and prosecution by Managing Intellectual Property’s IP Stars. The firm also earned top rankings for trademark disputes and prosecution in D.C., as well as recommended status for copyright.
IP STARS is Managing IP’s annual comprehensive guide to leading law firms for trademark prosecution and disputes. IP STARS rankings are based on extensive research, including peer and client recommendations. Managing IP does not endorse or recommend any firm, and firms cannot vote for their own inclusion, solicit votes from associates, or pay to be included in the rankings.
For more information about Managing IP’s IP STARS, please click here.
By Rob Litowitz
“Here in right field, it’s important you know.
You gotta know how to catch, you gotta know how to throw.” “Right Field,” Music and lyrics by W. Welch
Aaron Judge plays right field for the New York Yankees. Last season, he hit 62 home runs, the most ever by a Yankee. That’s right. More than Maris. More than Ruth. More than Mantle. And certainly more than Horace Clarke (if you get that reference, you, like me, grew up during those dark, joyless days when the once-vaunted pinstriped squad that had accrued World Series rings like our mothers collected S&H Green Stamps had fallen on fallow times, fielding feckless teams that routinely failed to mount any feasible foray into the pennant race, a woeful state of decline that spanned over 10 years, until 1976, when the drought that began after 1964 finally ended.)
Aaron Judge has been a force of nature since he cracked the Yanks’ starting lineup back in 2017. Central casting could not have produced a more fitting figure to play the Yankees’ latest superstar. Tall, graceful at the plate and in the field. dignified, supremely gifted, humble. And, with his magical season of 62 dingers all produced without the stigma of artificial ingredients, a sports hero we not only yearned for, but one we need today during these fractious times.
You’d think that nobody in their right mind would try to obtain federal trademark registrations for slogans like “Here Comes The Judge” and “All Rise” and then claim that they weren’t trying to cash-in on Aaron Judge’s fame. But that’s exactly what one man tried to do. After filing applications to register those phrases and a logo showing a baseball-diamond with a gavel, applicant Michael P. Chisena defended himself by claiming that he cooked up these judicial themed trademarks years before Aaron Judge became a Yankee. Mr. Chisena also claimed that it was just a coincidence that he filed his trademark applications for “Here Comes the Judge” and “All Rise” the same day that Aaron Judge wowed the sports world during the 2017 MLB All Star Game.
Faced with an adversary who seemed intent on channeling the wily ethics of a spitballer, Mr. Judge and his union, the MLBPA had their hands full. Mr. Chisena tossed virtually every pitch one could dream up to put out Judge’s case. Chisena claimed, for example, that he, not Aaron Judge, was the rightful owner of “Here Comes The Judge’ and “All Rise.” Even though Chisena’s trademark application claimed the intent to use those phrases as trademarks on clothing, he argued that they weren’t trademarks when Judge and his licensees did just that. Chisena even argued that consumers wouldn’t associate Aaron Judge with baseball-themed clothing featuring those phrases.
The “ump” for the case was the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office. Although Major League Baseball this season adopted a pitch-clock aimed at shortening games, the TTAB didn’t get the message. It took 61 pages–one short of Aaron Judge’s Yankees home-run record of 62–to make what was an easy call–that Aaron Judge should be the one to own and register “Judge-themed” trademarks, not someone seeking to profit from the fame and marketing clout of this future Hall Of Famer.
So the jury no longer is out. Order has been restored. The final gavel has come down. And for once, Mudville (and all of baseball) can rejoice. The mighty case did not strike out.
The case is Major League Baseball Players Association and Aaron Judge v. Michael P. Chisena, Opposition Nos. 91240180 (parent) 91242556, 91243244
Quote of the day: “You may glory in a team triumphant, but you fall in love with a team in defeat.”
― Roger Kahn, The Boys of Summer
By Jason Joyal and Brianna Christenson
The Case
Does an Apple loss provide guidance for brand owners seeking to use existing rights in physical goods to enforce against virtual goods? Possibly. On April 4, 2023, the Federal Circuit Court of Appeals decided Bertini v. Apple Inc. The primary issue was tacking, which is the doctrine that allows a mark owner to “tack” the date of first use of an earlier mark onto a later mark if the two marks create the same, continuing commercial impression.
In this case, Apple, the tech-giant, applied to register the mark APPLE MUSIC for several services, including the production and distribution of sound recordings and presenting live musical performances. Apple began using the APPLE MUSIC mark in 2015. Bertini, a jazz musician, has been using the mark APPLE JAZZ since 1985 for “[a]rranging, organizing, conducting, and presenting concerts [and] live musical performances.” Bertini opposed Apple’s application on the grounds that Apple’s use of APPLE MUSIC would cause confusion with Bertini’s prior rights in the APPLE JAZZ mark.
In its defense, Apple argued that it was entitled to a 1968 priority date based on rights to the mark APPLE for “[g]ramaphone records featuring music” and “audio compact discs featuring music” that Apple acquired from the Beatles’ record company in 2007. The Trademark Trial and Appeal Board agreed and dismissed Bertini’s opposition on the grounds that Apple established priority through tacking. The Federal Circuit, however, reversed and held that a new use can only be tacked to a prior use if the new goods or services are “within the normal evolution of the previous line of goods or services.” Because the Federal Circuit found that no reasonable person could conclude that gramophone records and live musical performances are substantially identical based on the record before it, it reversed the Board’s dismissal of the opposition.
The Implications
While the Bertini decision did not allow tacking for the services at issue, its holding simultaneously suggests that tacking may be appropriate where a market is modernizing. This may strengthen the rights of mark owners entering the NFT or metaverse space. Indeed, under the reasoning announced by the Federal Circuit, trademark rights for goods sold in the physical world may be able to establish priority for rights in that same mark for that good in the virtual world as a “normal evolution” of the right owner’s use. While this decision arguably narrows the reach of tacking, it may also serve to clarify and pave the way for rights in new, virtual spaces.
By Lynn Jordan & Brianna Christenson
The Parties – Jack versus Dog (Toys)
Petitioner, Jack Daniel’s, has been selling its “Old No. 7” Tennessee whiskey for over 150 years. Its trademarks are well known and have been licensed for many uses including, perhaps unexpectedly, on dog leashes, dog collars, and dog houses.
Respondent, VIP Products (“VIP”), makes a range of pet toys, including a variety of bottle-shaped rubber chew toys referencing existing alcohol brands, such as Dos Perros (Dos Equis), Smella Arpaw (Stella Artois), and KatHula (Kahlúa).
The Controversy – “Bad Spaniel”
VIP made a dog toy with trade dress Jack Daniel’s argues is similar to its whiskey bottle. The bottle and toy are the same size and shape with many of the same elements on both labels, such as turning “Jack Daniel’s” into “Bad Spaniel’s exchanging Jack Daniel’s “Old No. 7” for “The Old No. 2.” Because of the label’s “poop humor” and similarities between trade dress, Jack Daniel’s sent a cease and desist letter. VIP products responded with a declaratory judgment action. Jack Daniel’s counter-claimed for trademark infringement and dilution by tarnishment.
What Happened in the Courts Below?
The District Court of Arizona ruled in favor of Jack Daniel’s on both claims, finding a likelihood of confusion under its infringement claim, and holding that Jack Daniel’s mark is famous and VIP created a negative association under the dilution by tarnishment claim.
The Ninth Circuit did not disturb the finding below that there was a likelihood of confusion. However, the Ninth Circuit vacated the judgment on the infringement claims and remanded on the grounds that heightened First Amendment protection should be applied under the Rogers test because the dog toy is an “expressive work” with a “humorous message.” The Ninth Circuit reversed the dilution by tarnishment claim holding that the use was noncommercial because the use of the mark did more than propose a commercial transaction by being humorous.
Jack Daniel’s filed a petition for a writ of certiorari to the Supreme Court which was granted and the Court heard oral argument on March 22, 2023.
Questions Before the Court
There are two questions before the Supreme Court:
1. Whether heightened First Amendment protection is appropriate for a dog toy design?
2. Does humorous use of the mark fall under the non-commercial exception to the Trademark Dilution Revision Act?
The Rogers Test
The Rogers test was the issue most heavily discussed during oral argument. Briefly, Rogers comes from a Second Circuit decision and uses a two-prong approach to balance First Amendment rights with trademark rights. The test asks: (1) whether the mark is artistically relevant to the underlying work and (2) whether the use of the mark explicitly misleads consumers as to the source or content of the work. Rogers was a case about use of a mark in the title of a movie, though other circuits have expanded the application of the test – including the Ninth Circuit – applying Rogers to other uses including parody uses like in this case below.
The Supreme Court Arguments
The Supreme Court Justices appeared split on the appropriate balance for trademark and First Amendment rights during the oral argument. Counsel for Jack Daniel’s, Lisa Blatt, argued that Jack Daniel’s could win with Rogers intact but that Rogers is atextual therefore the Supreme Court should overrule the case. Matthew Guarnieri, representing the Federal Government as an amicus to Jack Daniel’s (though Justice Gorsuch noted that the Federal Government is not much of a friend to Jack Daniel’s in this case), agreed that Rogers was incorrectly decided and argued that its use as an antecedent test to the Lanham Act is contrary to the will of Congress. VIP, represented by Bennett Cooper, took two approaches to the issue. First, VIP argued that the Rogers test is appropriate and can be applied in favor of VIP. Second, VIP argued that if the Court decided to do away with Rogers or that Rogers should not be applied in parody contexts that more guidance should be given to lower courts on how to balance First Amendment rights for parodies. VIP laid out three questions for courts to consider:
(1) Can the court reasonably perceive the product’s parodic character?
(2) What is the proximity and competitiveness of the party’s goods?
(3) Does the parody otherwise fail to differentiate itself from the parodied mark?
Overall, the justices’ questions seemed to suggest hesitation to do away with Rogers entirely but also skepticism of applying Rogers in this case.
Why Does it Matter? – Paw-sible Effects
The Rogers test is relied on by creators to easily dispose of claims of trademark infringement soon after they are brought. If Rogers is weakened or overturned as no longer good law, it will no doubt have a chilling effect on speech.
It is expected that the Supreme Court will issue an opinion in June.
Kelly IP is on the shortlist of Managing IP’s 2023 Americas Awards in the categories of Trademark Disputes (National), Trademark Prosecution (National), and Trademark Prosecution (Northeast). David Kelly is shortlisted for Practitioner of the Year (Trademark Prosecution). The Managing IP Americas Awards program recognizes remarkable IP achievements and developments in the last year. Managing IP conducts months of extensive and impartial research to develop its annual shortlist of leading IP practitioners and firms. The Americas Awards winners will be announced on April 27, 2023, in New York City. Managing IP is a leading resource for companies and individuals looking for experienced legal practitioners for contentious and non-contentious IP matters. For more information regarding the
Americas Awards, please visit Managing IP Americas Awards 2023: shortlists announced | Managing Intellectual Property.
Kelly IP has again been recognized as an elite, top-tier “Gold” trademark law firm both nationally and in the Washington, DC area by the World Trademark Review 1000 (WTR 1000).
Nationally For the sixth year in a row, Kelly IP was recognized as a “Gold” status trademark firm, WTR 1000’s highest national ranking.
Washington, DC For the ninth consecutive year, Kelly IP was recognized as a “Gold” status firm in both trademark categories—trademark enforcement and litigation and trademark prosecution and strategy.
WTR 1000 also named all seven Kelly IP partners as recommended leaders in the trademark field. These individual recognitions demonstrate the high-caliber talent and significant trademark expertise that are the hallmark of Kelly IP. WTR 1000’s recommended Kelly IP partners are:
• Dave Kelly is a “nationally regarded” attorney who has handled “brand counselling and litigation work for over 35 years and is without doubt one of the country’s top trademark lawyers.” 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.
• Rob Litowitz is a “stand out” attorney known for his “creativity, foresight and vision,” and clients “look to him for his strategic knack for maximising IP assets and thinking outside of the box.” Rob achieved Silver status for trademark enforcement and litigation in the Metro DC area.
• Linda McLeod is “especially well-known for her depth of experience in matters before the TTAB, where she previously served as a judge.” 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.
• Stephanie Bald is an experienced litigator recognized “[f]or federal court disputes, as well as guidance on how to avoid them” and “guidance on both contentious and non-contentious matters.” Stephanie was ranked among top lawyers for trademark enforcement and litigation as a Silver status lawyer both nationally and for the DC Metro area.
• Lynn Jordan is recognized “[f]or compelling insight into business risk – especially for media and entertainment companies – Jordan’s is the name to note.” One client described Lynn “as a close colleague and a vital part of our team – she is incredibly attuned to our needs, very commercially focused and very cost aware. I cannot recommend her highly enough.” Lynn was ranked Gold status for trademark prosecution and strategy in the DC Metro area.
• Jason Joyal is recognized for his work “on the contentious side, but also encompasses strategic advice outside of court.” Clients describe Jason as “very responsive, friendly, thorough and strategic in his advice and provides excellent service” and “enjoy working with him and would certainly recommend him for trademark and copyright work, particularly for matters in the media and content sphere.” Jason was ranked bronze for trademark enforcement and litigation in the Washington, DC area.
• Kelu Sullivan, is recognized for her “practice [that] runs the gamut and includes portfolio management for major players….” with global portfolios. Kelu was ranked Bronze for trademark prosecution 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 2023 rankings are available at World Trademark Review 1000.
About Kelly IP
Kelly IP is an innovative boutique law firm focused on all aspects of trademark, trade dress, copyright, design, domain name and unfair competition law. The five founding partners of Kelly IP are all recognized leaders in the trademark field. In launching Kelly IP in 2013, they leveraged their 110 combined years of ‘big law’ IP experience and created a firm with a collaborative, team-orientated approach and an instant reputation for their creative, practical, responsive and cost-effective advice.
Kelly IP is pleased to announce that Clint Taylor has been elected as the firm’s newest partner. Since joining Kelly IP in 2017, Clint’s dedication, hard work and depth of experience have played a key role in the growth and success of our firm.
According to partner David Kelly, “Clint’s well-earned promotion reflects our firm’s ongoing commitment to developing and recognizing talented lawyers. From the start, Clint’s commitment to high-quality legal work and dedication to the firm’s clients have been exemplary. The firm proudly welcomes Clint to the partnership.”
Clint’s practice focuses on all aspects of trademark and copyright law, including prosecution, counseling, clearance, and enforcement. He has extensive experience handling complex enforcement matters, including helping clients achieve favorable enforcement resolutions at all stages of litigation and prior to litigation commencing. Clint has handled numerous TTAB proceedings through the initial pleadings stage, discovery, dispositive motions, and trial. He also represents clients in Federal court litigation.
Clint is a member of INTA, AIPLA and the IP section of the ABA. He regularly writes and presents on various IP topics, including continuing legal education seminars and courses.
Before joining Kelly IP, Clint worked at a general practice law firm in Texas where he handled trademark, copyright, and domain name law. When Clint is not working on cutting-edge trademark matters, he enjoys cooking and finding new recipes, watching the Texas Tech Red Raiders, traveling, and spending time with his wife and two daughters.
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 at www.kelly-ip.com.