Trademarks
Weintraub Trademark attorneys quite literally protect the good names of our clients by registering trademarks, providing strategic counseling, protecting our clients’ trademarks from infringement, defending our clients’ trademarks when challenged, and handling complex litigation matters.
We understand that a client’s brand and the associated goodwill can often be their most valuable assets. Accordingly, our attorneys counsel clients on a variety of trademark issues from the creation of the brand, including trademark searches, clearance, and registration, through maintenance of the brand, including enforcement of trademark rights and maintenance of USPTO registrations. The Weintraub Trademark group manages trademark portfolios across the globe in numerous industries including finance, entertainment, hospitality, agriculture, technology, construction, healthcare, and many more.
In addition to assisting with creation, registration, and policing of our clients’ trademarks, our team includes skilled litigators with extensive experience in litigating trademark infringement, dilution, and related unfair competition claims. Our Trademark group also handles proceedings, such as oppositions and cancellation proceedings, before the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB).
Josh Escovedo in the Sacramento Business Journal: Court Sides With Friends With Benedicts In Restaurant Trademark Dispute
Sonya Sorich writes in the Sacramento Business Journal that a ruling by the El Dorado County Superior Court has settled a long-running trademark dispute between Sacramento-area restaurants in favor of Weintraub client Friends with Benedicts Mimosa House LLC.
Josh Escovedo Recognized as a Top Trademarks Author in JD Supra 2019 Readers’ Choice Awards
Weintraub is pleased to announce that Josh H. Escovedo has been named a Top Author, for the topic of trademarks, in the JD Supra 2019 Reader’s Choice Awards. Josh Escovedo practices in Weintraub’s Litigation and Intellectual Property sections.
Eric Caligiuri Joins Weintraub Tobin’s San Diego Office, Further Enhances IP Capabilities
SAN DIEGO (March 31, 2015) – Weintraub Tobin, one of California’s leading, full service law firms, is pleased to announce that intellectual property attorney Eric Caligiuri has joined the firm’s San Diego office as Of Counsel.
The Briefing: Dr. Seuss Sets Photon Torpedoes on Star Trek Mashup in 9th Circuit Appeal (Part Two, Trademark)
In this week’s episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss the Ninth Circuit Ruling on the trademark aspects of Dr. Seuss “mashups.” They also provide a recap of last week’s episode,
The Briefing – Bonus Olympic Episode: IOC Gets Gold in Trademark Enforcement
In this bonus episode of the Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss the stringent trademark enforcement protection for Olympic symbols, words, and phrases as well as recent lawsuits that have reinforced that protection.
The Briefing – Nike Threatens Fire & Brimstone Over Satanic Custom Shoe Makers
In this week’s episode of The Briefing by The IP Law Blog, attorneys Scott Hervey and Josh Escovedo discuss the trademark litigation between Nike and a custom shoe maker, MSCHF (pronounced “Mischief”).
The Briefing – What’s in a Name: Clearing Titles for Film and Television
In this week’s episode, Scott Hervey and Josh Escovedo discuss the complex process of clearing titles for Film and Television. They cover recent high-stakes litigation around entertainment titles, including Stouffer v.
Supreme Court Finds PTAB Judges Unconstitutional
5-4 Opinion Offers Judicial Workaround by Giving More Oversight to the USPTO Director In U.S. v. Arthrex, case number 19-1434; Smith & Nephew v. Arthrex, case number 19-1452; and Arthrex v.
Will Starbucks Become the Next Corporate Sponsor of a Professional Sports Facility?
I’m experiencing déjà vu. I wrote about a similar topic prior to Allegiant Air becoming the official sponsor of the Las Vegas stadium that the Raiders now call home. In fact,
Beer: You Know It When You Taste It, Or Maybe Not
Hard seltzer first hit the marketplace about five years ago and rapidly grew in popularity with sales exceeding $4.5 billion in 2020. Wanting to ride the wave of success, many companies have introduced hard seltzers into this now crowded space.
Kobe Bryant Estate Files for Numerous Trademarks Associated with Apparel and Footwear
If you pay much attention to sneakers, you might know that the agreement between Nike and the Bryant Estate for Nike’s line of Kobe sneakers recently expired. Although Kobe started his career with Adidas,
De Novo or Abuse of Discretion? Trademarks, The Unclean Hands Defense, and Summary Judgment Review
The Ninth Circuit recently considered an issue of first impression: What standard of review does an appellate court apply when reviewing a district court’s grant of summary judgment in a trademark infringement case on the equitable basis of the unclean hands doctrine.
SPIN Trademark Has Peloton Wrapped Around the Axel
While Shakespeare may have wondered “what is in a name?”, the executives at Peloton believe that the trademark SPIN is of great importance. Last month (February, 2021), Peloton filed petitions to cancel the trademarks SPIN and SPINNING for physical fitness instruction and for stationary exercise bicycles on the grounds that the marks are generic.
Supreme Court Update: SCOTUS Denies Review of Two Highly Watched IP Cases
The Supreme Court recently denied petitions for certiorari in two of the most highly watched intellectual property cases before the Court. Those cases were Jack Daniel’s Properties Inc. v. VIP Products LLC and The Moodsters Company v.
LeBron James and Carnival Corporation, Owner of the Carnival Cruise Line, End Dispute Concerning KING JAMES Trademark
In 2019, Carnival Corporation, the owner of the Carnival Cruise Line, attempted to register KING JAMES in connection with a wide variety of services, including retail store services, various retail goods,
Dogs, Whiskey, and Intellectual Property: Need I Say More?
Jack Daniel’s Properties, Inc. has petitioned the Supreme Court of the United States for certiorari following an unfavorable ruling from the Ninth Circuit in the matter of VIP Products LLC v.
The Second Circuit Vacates Tiffany & Co.’s $21 Million Judgment for Trademark Infringement and Counterfeiting Against Costco
Almost five years ago, I wrote an article published in the Daily Recorder about a ruling in the Tiffany & Co. v. Costco Wholesale Corporation case filed in the United States District Court for the Southern District of New York.
You Must Prove Actual Damages if You Want Punitive Damages in an Infringement Action
Imagine litigating an infringement case for two years, and after a nine day jury trial, obtaining a jury’s verdict that says you’ve established infringement and awards your client $5,000,000. Then you realize that the jury has awarded your client $0 in actual damages,
After Nearly 30 Years of Controversy, the Washington Redskins Will Retire the Redskins Team Name and Trademark
On Monday, July 13, 2020, the ownership group of the Washington Redskins (the “Team”) announced that it will abandon the Redskins team name after nearly 30 years of controversy. The decision,
PTO Fast Tracks COVID-19 Patent and Trademark Applications
The United States Patent and Trademark Office has established a new program for prioritized examination for patent applications for inventions related to COVID-19 and for trademark applications for marks used for certain medical products and services used in connection with COVID-19.
The Ninth Circuit Affirms Ruling that COMIC-CON isn’t Generic for Comic Conventions
The battle started almost six years ago. A Utah-based company known as Dan Farr Productions (“DFP”) decided to use San Diego Comic Convention’s (“SDCC”) registered trademark COMIC-CON in conjunction with its own comic and popular arts convention,
SCOTUS Considers Whether Adding a Top-Level Domain Makes a Generic Term a Protectable Trademark
On Monday, May 4, 2020, the Supreme Court of the United States heard oral argument in United States Patent and Trademark Office v. Booking.com, B.V. For the first time in the history of the Court,
Trademark Infringers Beware – Willfulness Not Required for Disgorgement
For some time there has been a split among the Federal circuits as to whether evidence of willfulness is required in order to award disgorgement of profits for trademark infringement under Section 1125(a) of the Lanham Act.
Patent, Trademark, and Copyright Deadlines Extended Due to COVID-19
On March 31, 2020, the U.S. Patent and Trademark Office announced that, pursuant to the Coronavirus Aid, Relief, and Economic Security Act, certain deadlines for patent and trademark applications would be extended.
Stay Away; No Trademark for Social Distancing and Other Informational Terms
Call me a pessimist, but it was surprising to me when I recently checked the USPTO trademark database that I did not find an application to register “Social Distancing” for some other novelty item.
No Trademark Protection In Book or Movie Titles?!?
Generally, the title to a single motion picture is not entitled to trademark protection. This is the same for the title to single books, songs and other singular creative works. Most non-trademark attorneys are surprised when I tell them this.
Copying by Competitors is Evidence of Nonobviousness of an Invention
The Patent and Trademark Office (PTO) may reject a patent application on several different grounds. One of those grounds is obviousness. Under 35 U.S.C. § 103, if an invention is obvious to a person of ordinary skill in the art,
OK, BOOMER: Fox Media Seeks Registration of the Viral Phrase From the USPTO
If you’re plugged into the digital world and its constantly emerging meme trends, you’ve probably encountered various “OK, Boomer” memes by now. If you’re unfamiliar with the trend, here is a brief synopsis.
Counterculturalist Banksy to Defend His Intellectual Property in a European Cancellation Proceeding
If you’re familiar with Banksy, you know he’s the epitome of counterculturalism. For those of you who aren’t familiar with Banksy, he is an anonymous England-based street artist, vandal, political activist,
Landlords – Watch out for Trademark-Infringing Tenants!
Landlords whose tenants sell counterfeit goods can be liable for trademark infringement if they have knowledge of the infringing acts or are willfully blind to the infringement. In Luxottica Group v.
The USPTO Denies Tom Brady’s Application to Register TOM TERRIFIC
The USPTO recently refused legendary quarterback Tom Brady’s application to register the mark TOM TERRIFIC. If you’re like me, you’re wondering why Tom Brady would want to register such a trademark.
Supreme Court Decision Will Have Huge Economic Impact on Trademark Infringement Damages
The Supreme Court has agreed to resolve a circuit split over when a court can order the payment of an infringer’s profits to a successful plaintiff as a measure of damages.
SCOTUS to Decide if Trademark Licensees Lose Their Rights When the Licensor Becomes Insolvent
The Supreme Court has granted review in the matter known as Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, where it will decide whether a licensee loses its right to use a licensed trademark if the licensor files bankruptcy and the bankruptcy trustee chooses to reject the licensor’s license agreement.
Consumers Have Standing to Challenge Trademark Registrations
The Trademark Trial and Appeals Board recently issued an interesting decision regarding standing to oppose the registration of trademark applications. United Trademark Holdings, Inc. filed for registration of the mark RAPUNZEL for use in conjunction with dolls and toy figures.
LegalZoom Allegedly Engages in the Unauthorized Practice of Trademark Law
According to a complaint filed in the United States District Court for the Northern District of California by California law firm LegalForce RAPC Worldwide, LegalZoom engages in the unauthorized practice of law when its non-attorneys instruct customers on how to register trademarks.
Stone Brewing Fires the Shot Heard Round the Brewing World
The fight between craft brewers and Big Beer (i.e. MillerCoors & Budweiser) has been ongoing for years. Ever since craft beer came to prominence in the late ‘90s, it has been stealing Big Beer’s share of the marketplace.
Ruling in Lawsuit Over Fox’s Use of “Empire” Extends Permitted Use of Third-Party Trademarks
Did you ever wonder why some movies use fictional names for companies or sports teams? TV and movie producers intentionally avoid using brand or company names in order to avoid any potential of an entanglement with a trademark owner.
Wine and Spirits Are not Always Confusingly Similar
Brand litigation can be extreme in the consumer products space and even more so for alcoholic beverages (legal cannabis brand owners take note and start stockpiling your war chest). It’s not uncommon for litigation to arise whenever an alcoholic beverage brand owner believes that another alcoholic beverage brand infringes.
Bridgestone Brands, LLC v. Firestone Public House, LLC: Battle of the Brands
Just over two months ago, Sacramento’s beloved Firestone Public House was sued by multinational conglomerate Bridgestone Brands, LLC for trademark infringement, trademark dilution, and unfair competition based upon Firestone’s use of the FIRESTONE mark.
The First Amendment Protects the Trademark Registrability of THE SLANTS and THE WASHINGTON REDSKINS Irrespective of Political Correctness.
In 2014, the Washington Redskins lost a battle before the Trademark Trial and Appeal Board (“TTAB”) where the petitioner, a group of Native American activists, sought cancellation of the “Washington Redskins” trademark,
Amazon Tips its Hand with New Trademark Application
As you likely know, Amazon is taking the world by storm. Whether it is through its convenient offering of household goods, and pretty much anything else you can imagine, to your door,
Offensive Trademarks Are Protected Free Speech Under the First Amendment
Simon Tam is the lead singer of the rock group call “The Slants’, which is composed of Asian-Americans. Tam applied for federal trademark registration of the band’s name. While the term “slants” is a derogatory term for persons of Asian descent,
Eagles Ltd. v. Hotel California Baja, LLC: Any Time of Year, You Can Find Infringement Here
Recently, Eagles Ltd. (the “Eagles”), the entity in control of legendary rock band The Eagles’ business affairs, filed a lawsuit against Hotel California Baja, LLC for trademark infringement. While I’m sure most of us are familiar with the Eagles’ song Hotel California,
Is Marilyn Monroe Too Generic to Be Registered as a Trademark?
I’ve written on numerous occasions in the past about celebrities who registered their own names as trademarks with the United States Patent and Trademark Office. Just the other week, I wrote about how UFC superstar Conor McGregor had filed an application to register his name as a trademark,
McGregor Files for Trademark for “Conor McGregor” and “The Notorious”
Whether you like him or not, Conor McGregor’s business savvy cannot be disputed. The UFC superstar, in just over year, has become a household name known to people who may not even watch the sport.
From Rogue One to Forces of Destiny: A Star Wars Intellectual Property Story
With last weekend’s release of Rogue One: A Star Wars Story, Star Wars is once again living and thriving. Rogue One opened with a most impressive $155 million opening in North America,
Branding Buds – Still Illegal Under Federal Law
If voters in California approve Proposition 64 which would legalize the possession and use of marijuana for recreational purposes, it is without question that the sunshine state will see a huge increase in the number of businesses within the cannabis industry.
Website Listing of Tequila Client Work Gets PR Firm a Trademark Shot
Can the owner of renowned tequila brand Patrón prevent a former marketing and PR firm from listing it as a client on its website and discussing the services it provided? Patrón believes it can and has sued its former marketing firm,
How BREXIT Will Affect Intellectual Property
As everyone knows, in June, the United Kingdom passed the BREXIT referendum (driven by British voters), voting to exit the European Union. What affect does BREXIT have on intellectual property rights in the United Kingdom and the European Union?
The Seattle Seahawks’ 12th Man Flies Again
If you regularly follow our publication, you may remember when I discussed the Seattle Seahawks and their use of the Texas A&M trademark “12TH MAN” over a year ago. If not,
Small Burger Chain Has a Beef With Chipotle
Chipotle’s entry into the burger business has a Boston based small burger chain up in arms. The Boston burger spot, which has been in operation since 2010 and goes by the name Tasty Burger,
Trademark Assignability Laid Bare
Crazy Horse was a legendary Native American chief of the Oglala Lakota tribe who lived during the second half of the 1800s. Unfortunately today, his name may be more familiar as a brand for various products,
Supreme Court Battle Set Over Prohibition of Disparaging Trademarks
Section 2(a) of the Lanham act bars the registration of “scandalous, immoral or disparaging trademarks.” The USPTO has used this applied this provision to refuse the registration of marks such as F**K PROJECT,
Kylie Minogue v. Kylie Jenner: A TTAB Clash of Celebrities
Kylie Jenner has finally decided to step out from behind her older sisters and get to work on her own independent ventures. In furtherance of this desire, Ms. Jenner filed numerous federal trademark applications in April and November 2015.
The Federal Circuit Breathes Life into the Redskins’ Appeal
If you’re a fan of intellectual property or the National Football League, you may have heard about last July’s ruling in the United States District Court for the Eastern District of Virginia.
The Beef Between In-N-Out Burger and Doordash
Everyone on the West Coast knows In-N-Out Burger. For some of us Californians, the burgers may even be considered a state treasure. Doordash, on the other hand, is much less recognizable.
Pacifico Defends its Trademark Rights on Canadian Soil
Another intellectual property dispute has arisen in the brewing industry. This time, however, the battle took place on Canadian soil. British Columbia based Pacific Western Brewing (“PWB”) sued renowned Mexican brewery Cerveceria del Pacifico (“CDP”),
Does Trump Own “Make America Great Again?”
As I frequently mention in my articles, trademark law is a much more prevalent part of the average person’s life than they realize. We are surrounded by the trademarks of numerous companies every time that we step outside,
Tiffany & Company v. Costco Wholesale: Tiffany is far from Generic
On September 9, 2015, the United States District Court for the Southern District of New York ruled that Costco was willfully infringing Tiffany & Co.’s trademarks by selling diamond engagement rings bearing the renowned jewelry retailer’s name.
Air Jordan Grounded in China
By: Intellectual Property Group Michael Jordan is considered by many to be the greatest basketball player of all time. Beyond his five MVP trophies and six NBA championship rings, however Jordan also was the one of the most widely marketed athletic personalities in history.
Keep Calm and Sip Some Sparkling Wine
By: Intellectual Property Group Many who enjoy champagne have noticed that their favorite cuvée has quietly changed its label. Many of the world’s bottles of bubbly now indicate that they contain “sparkling wine” when they used to be “champagne.” Those who enjoy Basmati rice or Camembert cheese also have noticed changes to the names of their favorite products.
Brewing Up Some IP
By: Josh Escovedo With so many new microbreweries popping up in Sacramento, the Bay Area, and the Greater San Diego area, I felt compelled to write the present piece for the benefit of the aspiring,
IP in the NFL: “I’m Just Here So I Won’t Get Fined,” or Are You?
By Josh Escovedo Just last week, on February 18, 2015, Seattle Seahawks superstar running back Marshawn Lynch (“Lynch”), also known as Beast Mode, filed for a federal trademark with the United States Patent and Trademark Office (“USPTO”) for his now famous quote—“I’M JUST HERE SO I WON’T GET FINED.” For those of you who are not big NFL fans,
Protecting Trademarks and the Likelihood of Confusion Factor
By James Kachmar A few years ago, I wrote a column addressing a case in which Pom Wonderful LLC sued Coca Cola Company in connection with the marketing of one of its pomegranate-blueberry juice products.
Davis: Electronic Arts Gets a New Set of Downs and Still Can’t Score
By Josh Escovedo Just over a month ago I wrote about the Davis v. Electronic Arts matter that was pending before the Ninth Circuit Court of Appeal. Specifically, I opined that the matter was ripe for Supreme Court review in light of the circuit split that is developing with respect to the misappropriation of likeness in video games.
Clearing Marks In the Beverage Space Has Become Increasingly Complex
By Scott Hervey In this author’s opinion, I believe that most consumers see wine, beer and mineral water as unrelated products and would not believe that beer, wine or mineral water that share similar trademark elements (e.g.,
Gallo Whines Its Way Into the Tequila Business
By Josh H. Escovedo In the not so distant past, E & J Gallo Winery (“Gallo”) decided that it was not satisfied with only being a player in the wine business.
The Duke and Duke Duke It Out In Trademark Rowe
By Scott Hervey Clearly there is no love lost between John Wayne Enterprises, LLC (“JWE”), the entity owned by John Wayne’s heirs which controls the intellectual property related to John Wayne,