SCOTUS Resolves Circuit Split: Trademark License Rejection in Bankruptcy Does Not Terminate Licensee’s Usage Rights

By Emily R. Parker* and David G. Barker The U.S. Supreme Court recently held in Mission Product Holdings v. Tempnology that a trademark licensor cannot revoke the right of a licensee to use a trademark by terminating a license agreement in bankruptcy. Mission licensed a trademark from Tempnology, which terminated the license after filing bankruptcy in 2015. The First Circuit held that Tempnology permissibly rejected the agreement in bankruptcy and terminated Mission’s right to use the mark. Mission appealed because the First Circuit’s decision conflicted with the Seventh Circuit decision in Sunbeam Products v. Chicago American Manufacturing, which held that a   Read More »

Posted in IP and Technology Litigation, Trademark Litigation | Tagged , , , ,

Share this Article:

Supreme Court Hears Oral Argument on “Immoral or Scandalous” Trademark Prohibition

By: Anne M. Bolamperti and David G. Barker Earlier this week, the Supreme Court of the United States heard oral argument in Iancu v. Brunetti (see previous discussion here) regarding the constitutionality of the portion of Lanham Act, Section 2(a) (15 U.S.C. § 1052(a)) that prohibits the United States Patent and Trademark Office’s registration of trademarks comprising “immoral . . . or scandalous matter.”  Previously, in June 2017, the Court unanimously affirmed in Matal v. Tam that the same statute’s bar on disparaging marks was unconstitutional under the First Amendment. The PTO refused to register Erik Brunetti’s trademark application for   Read More »

Posted in IP and Technology Litigation, Trademark Litigation | Tagged

Share this Article:

Ninth Circuit Refuses to Vacate Lower Court’s Ruling After Settlement During Appeal

By Rachael Peters Pugel and David G. Barker On Tuesday, the Ninth Circuit declined to vacate a district court’s ruling at the request of the parties after they reached a settlement of their trademark dispute. In Reserve Media, Inc. v. Efficient Frontiers, Inc., Efficient Frontiers alleged that Reserve Media, a restaurant technology startup, infringed its trademarks.  After the parties failed to resolve their dispute, Reserve Media filed a complaint seeking a declaratory judgment of noninfringement.  Efficient Frontiers responded with a counterclaim for trademark infringement and unfair competition. The Central District of California granted Reserve Media’s motions for summary judgment, holding   Read More »

Posted in IP and Technology Litigation, Trademark Litigation | Tagged ,

Share this Article:

Webcast Title Using Trademarks of Another Deemed Nominative Fair Use

By Robert A. Clarke and David G. Barker The Ninth Circuit Court of Appeals recently held that the title of a webcast, which included two trademarks belonging to another party, constituted nominative fair use, which protected the defendants from trademark infringement claims. The plaintiff in Applied Underwriters v. Lichtenegger offers workers’ compensation insurance to employers through its EquityComp program.  Applied Underwriters owns federally registered trademarks for “Applied Underwriters” and “EquityComp.”  Defendants published a webcast critiquing EquityComp’s services, entitled “Applied Underwriters’ EquityComp® Program: Like it, Leave it, or Let it be?”  Applied Underwriters sued defendants for trademark infringement for including the   Read More »

Posted in IP and Technology Litigation, Trademark Litigation | Tagged , ,

Share this Article:

How Scandalous! SCOTUS Again Takes up Whether the Lanham Act Violates the First Amendment

By Shalayne Pillar and David G. Barker On Friday, the Supreme Court of the United States agreed to hear a case that will decide whether the federal ban on trademark protection for “scandalous” material is unconstitutional.  In re Brunetti follows the U.S. Patent and Trademark Office’s (“USPTO’s”) denial of trademark registration for the word “Fuct,” which held that the mark “comprises immoral . . . or scandalous matter” and thus could not be registered under Section 2(a) of the Lanham Act.  On appeal, the Federal Circuit sided with the applicant (discussed here), holding the statute violated the Free Speech provision   Read More »

Posted in IP and Technology Litigation, Trademark Litigation | Tagged , , ,

Share this Article: