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Author: Linda McLeod

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Announcements

KELLY IP CELEBRATES 10 YEARS OF THE FIRM’S “BRAND NEW WORLD”

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:

  • Law360 named Kelly IP among its “10 Boutiques Giving BigLaw A Run For Its Money.”
  • Managing Intellectual Property’s IP STARS recognized Kelly IP as one of only several national “Tier 1” firms, its highest ranking, in trademark categories for the past seven years.
  • World Trademark Review 1000 ranked Kelly IP as one of only several “Gold” status national trademark firms, its highest ranking, for the past six years.
  • Legal 500 recognized Kelly IP as one of only several national “Tier 1” firms, its highest ranking, for the past four 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.

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Announcements

Jack Daniel’s v. VIP Products: 3 Takeaways from the Supreme Court Decision

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.

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Announcements

Stephanie Bald Recognized in Managing IP’s TOP 250 Women in IP 2023

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.

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Announcements News

Kelly IP Receives Top National Trademark Ranking from Managing Intellectual Property’s IP STARS

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.

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Likelihood of Confusion Under 2(d) News TTAB

Trademark Justice for Aaron Judge

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

 

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Federal Circuit Likelihood of Confusion Under 2(d) Priority Tacking Trademark TTAB

Bertini v. Apple: N-F-T(acking)?

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.

Categories
First Amendment Parody Trademark Infringement

Jack Daniel’s v. VIP Products: Dog Toys, Parody & First Amendment

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.

Categories
News Trademark

Kelly IP Named to Shortlist of Managing IP’s 2023 Americas Awards

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.

Categories
Announcements

Kelly IP Again Ranked Top-Tier “Gold” National Trademark Firm by WTR 1000, With All Seven Partners Ranked

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.

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Announcements

Clint Taylor Named Kelly IP’s Newest Partner

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.