LEGAL THOUGHTS

This blog contains our personal opinions on topics that interest us.

Happy Labor Day

We hope you enjoyed your summer. Labor Day is most commonly associated with the end of the summer. However, let's not forget that this holiday was created to honor the labor movement and the social and economic achievement of American workers. Photo by Aral Tasher on Unsplash. #holiday

Justice delayed

Gigi Hadid delayed the inevitable. Earlier this year, she was sued for posting a copyrighted image on herself to her Instagram account (Xclusive-Lee, Inc. v. Jelena Noura “Gigi” Hadid, 1:19-cv-00520 (E.D.N.Y.)) (a copy of the Complaint is hosted on Mega.nz). Unfortunately for the plaintiff, the U.S. Supreme Court decided Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC (139 S.Ct. 881 (2019)) soon after the plaintiff filed the complaint (see Google Scholar link). In Fourth Estate, the Supreme Court ruled that a copyright holder must have a copyright registration certificate before they can file a lawsuit. Because the plaintiff did not have a copyright registration certificate when

Can you trademark THE?

In the believe it or not category. The Ohio State University recently filed a trademark application for the word THE as a trademark for use on "Clothing, namely, t-shirts, baseball caps and hats" (see TSDR link for application serial number 88571984). Yes. You got that correct. They filed for a trademark application for the most common word in the English language (see Wikipedia link). I suspect the USPTO is not likely to register this trademark because it is a standard character mark. If they had filed a design mark (logo) for the word THE, it would have increased the likelihood the USPTO would register the mark. Photo by Martin Kalfatovic licensed under CC BY-NC-SA 2.0 #trademark

A nugget about registering a trademark in Mexico

At the USPTO, when you apply for a trademark registration, the USPTO first examines the trademark application for formalities and substantive issues (such as likelihood of confusion). Only if the applicant overcomes any USPTO objections, will the application be published and a third-party can oppose the application. The procedure in Mexico is different. It is a parallel system. The application shortly after it is filed will be published and a third-party can oppose. Simultaneously, the Mexican Industrial Property Office (IMPI) will be reviewing the application for formalities and substantive issues -- and the IMPI has 6 months from filing date to issue a Office Action. Photo by Tim Mossh

Business as Usual for Trademark Licensees

On May 20th, the U.S. Supreme Court ruled that a trademark licensor in bankruptcy can reject a trademark license as an executory contract under 11 U.S.C. § 365(a) (Mission Product Holdings, Inc. v. Tempnology, LLC, (139 U.S. 1652, rev’g 879 F.3d 389 (1st Cir. 2018)). However, the rejection does not give the licensor the right to terminate the licensee's rights to use the licensed trademark. The bankruptcy statue provides that a rejection "constitutes a breach" (11 USC § 365(g)). The Court found that this breach was not the equivalent of a recission. Rather, this breach creates a claim for damages and, importantly, does not rescind the rights the contract previously granted -- meaning that

End of an era

Toys R Us filed for bankruptcy protection in 2017 (see link). In 2018, it went bankrupt. In the US, that meant that 800 stores closed (see link). In Europe, however, the Toys R Us stores in Germany, Austria and Switzerland were sold to Smyth's Toy Superstores (see link). Now, those Toys R Us stores are being rebranded under the Smyth's brand. #trademark

Websites with a Facebook "like" button are joint controllers

The Court of Justice of the European Union (CJEU) issued an opinion concerning websites that use a social media plugin, such as the Facebook "like" button, that automatically collects and reports personal data from website visitors to the plugin company (summary and opinion are stored on Mega.nz). The CJEU found that under the old Data Protection Directive (DPD) the website would be a joint controller with the plugin company for certain operations. Although the DPD has been superseded by the GDPR, the thrust of the opinion applies under the GDPR. The website is a joint controller only for the operations for which it effectively co-decides on the means and purposes of the processing of t

The Little Mermaid

Given the blog post's title, I assume you were expecting to find some Walt Disney Company branded products (see link). Were you confused? Because I found this toy in a souvenir stand in Croatia. #trademark

Swiss National Day

August 1st is Switzerland's National Day. This holiday celebrates the formation of the Swiss Confederation in 1291 between the thee cantons (Schwyz, Uri and Unterwalden). This event is considered to be the birth of Switzerland. See link. Interestingly, even though this event has been celebrated since around 1900, it has only been an official national holiday since 1994. #holiday #switzerland

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