Tennessee IP Law Blog

United States Patent & Trademark Office v. Booking.com B. V., 20 Cal. Daily Op. Serv. 6243 (U.S. June 30, 2020) https://www.portfolio.hu/en/business/20200520/hungary-slaps-record-fine-of-eur-7-million-on-bookingcom-432994 Topic: Trademark Registration, Generic Names, Compound Terms Read the Majority Opinion in Part I  Here. In an 8-1 decision, the Supreme Court held that a "generic.com" name is ineligible for trademark protection unless the "generic.com" name itself has meaning to consumers.  Justice Breyer argues that consumers can be easily confused and argues to adopt the Goodyear  standard argued by the USPTO. Goodyear  found that adding a company designation (ex. "Company," "Corp.," "Inc.") to a generic term does not yield a protectable compound term. Goodyear  found that adding a company designation merely indicates corporate form and does not distinguish one corporations' goods/services from another. Justice Breyer argues...

United States Patent & Trademark Office v. Booking.com B. V., 20 Cal. Daily Op. Serv. 6243 (U.S. June 30, 2020) Topic: Trademark Registration, Generic Names, Compound Terms Takeaways: A generic name is ineligible for federal trademark registration. If a compound name that is a generic composite is not perceived as generic to consumers, it is not generic in terms of a Trademark filing. Supreme Court finds against the PTO's request for a "nearly per-se" rule that when a generic term is combined with an internet-domain suffix (like ".com"), the resulting combination is generic. Held: A term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. Check back next week for Part II on the Concurring and Dissenting Opinions. Opinion Justice GINSBURG delivered the opinion of the Court. This case concerns eligibility for federal trademark registration. Respondent Booking.com, an enter...

Brantley v. Epic Games, Inc. , No. 8:19-CV-594-PWG, 2020 WL 2794016, at *12 (D. Md. May 29, 2020) This post is a Part II/II of a discussion of Brantley v. Epic Games . Part I discusses the Plaintiffs' Copyright claims , Part II addresses Plaintiffs Trademark claims. https://www.nbcwashington.com/news/local/terps-show-off-running-man-challenge-dance-on-ellen-show/79982/ Topic: Copyright Preemption of the Lanham Act, Trademark Infringement, Dilution, False Endorsement, Dastar Takeaways: Alleging confusion as to the "person or entity that originated the ideas or communications that ‘goods [or services]’ embody or contain" rather than confusion as to the "producer of the product sold" fails to establish a Lanham Act claim under Dastar . A trademark must identify a unique good or service, therefore a trademark cannot be in itself a good or service, (i.e. the Running Man Dance cannot be a trademark for performances of the Running Man Dance.) Unlike t...

LEO PELLEGRINO v. EPIC GAMES, INC., No. CV 19-1806, 2020 WL 1531867,(E.D. Pa. Mar. 31, 2020) Topic: Trademark Misappropriation, Use of Likeness Plaintiff Leo Pellegrino commenced this action against Defendant Epic Games, Inc. (“Epic”) asserting that Epic misappropriated his likeness and trademark, i.e., his “ Signature Move .” The Complaint asserts that Epic’s misappropriation violated Pellegrino’s right to publicity and infringed and diluted his trademark. Epic has filed a Motion to Dismiss the Complaint in its entirety pursuant to Federal Rule of Civil Procedure 12(b)(6). We held a hearing on the Motion on March 3, 2020. For the reasons that follow, we grant Epic’s Motion in part and deny it in part. The Complaint alleges that Leo Pellegrino “is a professional baritone saxophone player and member of the ‘brass house’ group ‘Too Many Zooz.’ ” (Compl. ¶ 2.) Using his unique anatomy—specifically his externally rotatable feet—Pellegrino was able to create the Signature Move, a ...

Vanderbilt Univ. v. Scholastic, Inc., 382 F. Supp. 3d 734, 743 (M.D. Tenn. 2019). By means of a License Agreement executed in 1997 (“License”), Vanderbilt University (“Vanderbilt”) and Defendant Scholastic, Inc. (“Scholastic”) joined forces to develop, market, and distribute an educational literacy program called Read 180 based on the cutting-edge work of Vanderbilt Professor Ted S. Hasselbring.  Pursuant to the License, Scholastic used certain copyrightable software and related instructional materials, along with other materials it both obtained and created, to develop the “Read 180” program. It was wildly successful. Scholastic distributed Read 180 and paid Vanderbilt royalties under the License until 2015, when Scholastic sold that part of its business and assigned the License to Defendant Houghton Mifflin Harcourt Publishing Company (“HMH”). However, Defendants' public exuberance about their success with Read 180 in connection with this sale led Vanderbilt to became...