Trademark

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In April, we discussed oral arguments at the Supreme Court for Abitron Austria GmbH et al. v. Hetronic International, Inc., a case in which the Supreme Court considered the extraterritorial reach of the Lanham Act (“Act”) for the first time since 1952. Last month, the Court ruled that the Lanham Act only reaches claims of infringement where the infringing use in commerce is domestic.

On June 8, 2023, the U.S. Supreme Court issued its decision in Jack Daniel’s Properties, Inc. v. VIP Products, LLC and provided some clarity as to the applicability of the “Rogers test,” a doctrine that grapples with the interplay of trademark law and the First Amendment. The case involved a trademark dispute between Jack Daniel’s Properties, the maker of the famous whiskey, and VIP, a dog toy company that makes and sells a product called “Bad Spaniels.” The Bad Spaniels squeaky toy is in the shape of a whiskey bottle and has a black label with white font similar to Jack Daniel’s; in place of “Old No. 7 Brand Tennessee Sour Mash Whiskey,” the toy reads, “The Old No. 2 On Your Tennessee Carpet.” After VIP initially filed suit against Jack Daniel’s seeking declaratory judgment that the product did not infringe on Jack Daniel’s trademarks, Jack Daniel’s brought counterclaims under the Lanham Act for trademark infringement and trademark dilution.

Last month, the Supreme Court heard oral argument on Abitron Austria GmbH et al. v. Hetronic International, Inc. and considered, for the first time since 1952, the extraterritorial reach of the Lanham Act. This case presents the opportunity for the Court to establish a uniform test for the Lanham Act’s extraterritorial reach when seeking remedies in U.S. courts and to provide clarity for U.S. companies looking to protect their marks and reputation around the world.

Kim Kardashian has been hit with a lawsuit by New York-based Beauty Concepts LLC over Kardashian’s recently launched skincare line, “SKKN by Kim.”  Beauty Concepts filed a complaint in the Eastern District of New York against Kardashian, her business entity Kimsaprincess Inc., and beauty company Coty Inc. on Tuesday, alleging that SKKN by Kim uses branding “highly confusingly similar” to Beauty Concepts’ own skincare line, “SKKN+”.  The complaint further alleges that Beauty Concepts has priority of use over the letters “skkn” due to the company’s consistent use of the mark “SKKN+” since at least August 2018.

Salvation. The name of two intricate Belgian-style ales, created by us, Vinnie Cilurzo of Russian River Brewing and Adam Avery of Avery Brewing. After becoming friends a few years ago, we realized we both had a Salvation in our lineups. Was it going to be a problem? Should one of us relinquish the name rights? “Hell, no!” we said. In fact, it was quickly decided that we should blend the brews to catch the best qualities of each and create an even more complex and rich libation. In April 2004, in a top secret meeting at Russian River Brewing, we came up with the perfect blend of the two Salvations.

That, according to Avery Brewing Co., is how Collaboration Not Litigation Ale came into existence.

But the beer industry is not always so adept at avoiding the courtroom when it comes to trademark disputes.  Particularly with the explosion of the craft brewing industry in recent years, and the ever-increasingly creative names to come out of that market, legal disputes over beer trademarks are a dime a dozen.  The latest of these lawsuits to reach trial resulted in significantly more than a dime’s worth of recovery for craft brewer Stone Brewing.

The great pizza wars of 2021 are not what you might expect. While the courts will never be able to resolve the question of who (or where) makes the best pie, a pair of decisions from the last few weeks did resolve contentious trademark disputes in two of the great pizza destinations of the world, between Patsy’s Pizzeria and Patsy’s Italian Restaurant in New York, and between shareholders of Rosati’s in Illinois.

Earlier this month, the Second Circuit overturned a decision by the Federal Trade Commission (the “FTC”) holding 1-800-Contacts violated antitrust law by entering into trademark settlement and related agreements that restricted bidding on auctions held by companies that operate search engines. 1-800 Contacts v. Federal Trade Commission. Although the Second Circuit recognized that trademark settlement agreements are “not immune from antitrust scrutiny,” it disagreed with the FTC’s analysis of the alleged restraints set forth in the agreements.

The U.S. Patent and Trademark Office has issued guidance on how it will treat applications to register “generic.com” terms in the wake of the Supreme Court’s June 30, 2020 decision in United States Patent and Trademark Office v. Booking.com.

We previously wrote about the Supreme Court’s Booking.com decision, which affirmed the Fourth Circuit’s decision that the mark BOOKING.COM was registrable and not generic. The Supreme Court’s decision tracked the arguments in an amicus brief we submitted on behalf of consumer perception specialists and academics from leading U.S. universities.