Date: June 9, 2023Attorney: Joel G. MacMull

A few weeks ago I attended the International Trademark Association’s (INTA) Annual General meeting in Singapore. There were a number of key takeaways from the meeting, and I highlight below the top 3 issues that, in my estimation, warrant attention for all U.S. trademark and copyright owners.

1. Unconventional uses of trademarks are enjoying a bit of a renaissance. Parody (or parodic uses) as well the use of trademarks as non-fungible tokens (NFTs) in the metaverse are all the rage this year. More generally, in the area of copyrights too, rights holders appear to be enjoying unprecedented success in high-profile litigations that, historically, would have been sure losers just a few years ago.

The Supreme Court’s recent copyright ruling against the Andy Warhol Foundation for the Visual Arts, Inc., wherein it ruled that the famous artist’s riff on another photographer’s work was not “transformative,” and was therefore infringing, appears to be ushering in a new plaintiff-friendly era in the area of U.S. trademark and copyright law. A recent victory by Hermès, wherein an artist was found to have infringed the luxury brand’s famous BIRKIN trademark by offering MetaBirkin NFTs is another example. Finally, just this week the Supreme Court ruled that a dog toy manufacturer’s sale of a product that mocked Jack Daniel’s “Old No. 7 Brand Tennessee Sour Mash Whiskey” well-known trademark with a chew toy bearing the mark “The Old No. 2 On Your Tennessee Carpet,” a reference to dog excrement, was not immune from infringement merely because it was a parody.

Whether you own the rights to intellectual property, or want to incorporate the properties of others into your works, products or services, it’s a good idea to check in with a seasoned intellectual property lawyer before launching your next project. (Lucky for you, I know a guy! 😊)

2. Extraterritoriality of the Lanham Act — an area of trademark law that is near and dear to me because of a case that I worked on a few years ago, wherein the Court of Appeals for the Fourth Circuit took an unprecedented view of prior Supreme Court precedent (click here for more) — is now, finally, before the U.S. High Court. The facts of the Abtiron Austria GmbH v. Hetronic International, Inc. are little complicated but Hetronic, a U.S. company, won a jury verdict of $90 million against Abitron, a group of German and Austrian companies, for infringement that occurred almost exclusively in Europe. The salient issues on appeal, can be boiled down as follows: (1) Does the Lanham Act (the federal statute governing trademark law in the U.S.) extend to infringing conduct that occurs outside the U.S. ? And (2), where evidence exists that the damages arising from the infringement located in the U.S. are modest, is the plaintiff’s award limited to only the U.S.-related injury, or does the plaintiff get to recover the entirety of its award against a foreign entity merely because the infringement involves, however small, activities in the U.S.?

I actually listened to the Supreme Court oral argument while I was in Singapore and it was all over the place. From what I could tell, the Court took issue with both parties’ absolutist positions, appearing to favor the government’s position that the Lanham Act only applies to foreign uses of trademarks that are likely to cause consumer confusion in the United States. Whatever the Court decides, U.S. trademark owners who do business overseas using their marks are likely to welcome whatever clarity the Court provides.

3. “Oh, Mexico!” Such words couldn’t be any truer if they were sung by James Taylor himself. In a sleeper of a case that I was entirely unaware of until just a few weeks ago, the State of New Mexico’s intermediate appellate court last year upheld the lower court’s finding that the authorized use of a licensed logo on a coffeemaker manufactured by the licensee of the logo constituted “unfair or deceptive trade practice” under New Mexico’s Unfair Practices Act (UPA). Defendants argued that their use of the “Black & Decker” mark on the coffeemaker did not constitute an unfair or deceptive trade practice under the UPA because the Lanham Act, which, again, governs federal trademark law, permits the defendants use of the mark. Under the Lanham Act, registered trademarks may “be used legitimately by related companies.” 15 U.S.C. § 1055. “Related companies” include “any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.” 15 U.S.C. § 1127. Defendants thus asserted that, under the Lanham Act, a trademark owner (here, Black & Decker) may grant a license and be protected as long as the trademark owner exercises quality control of the goods sold under its trademark by the licensee. Defendants thus contended that, under the Lanham Act, the ultimate source or manufacturer of a product need not be identified by a brand name as long as the trademark owner exercises sufficient oversight over the nature and quality of the goods sold under its licensed mark. Defendants argued that their collective use of the Black & Decker trademark comported with the Lanham Act because Black & Decker and its licensee (Applica) entered into a trademark licensing agreement that permitted Applica to market the coffeemaker under the Black & Decker name and mandated that Black & Decker exercise control and oversight to ensure the coffeemaker met Black & Decker’s quality standard. In essence, Defendants argued that if the Lanham Act allows Applica to market the coffeemaker, the arrangement cannot constitute a violation of the UPA. The lower court disagreed, stating that the Lanham Act did not apply in the context of a UPA claim, concluding that Applica’s branding of the coffeemaker constituted an unfair or deceptive trade practice under the UPA.

On appeal, the court undertook a thorough review of the statutory language, concluding that the language of the relevant subsections of the New Mexico law indicates that the Legislature intended that representations as to a product’s source could be a basis for liability under the UPA, independent of that product’s quality.

The Supreme Court of New Mexico granted review earlier this year.

If you’re a licensee, or for that matter even a just mark owner selling a product or service in the State of New Mexico or into New Mexico, call me!