Category: Intellectual Property

A Trademark Licensee’s Rights after its Licensor’s Bankruptcy May Vary Depending on the Venue of the Bankruptcy Case

In this tumultuous retail climate , a string of recent conflicting court decisions remind retailers that the potential impact of a licensor bankruptcy on a trademark licensee’s rights may vary dramatically depending on the location of the licensor’s bankruptcy proceedings.  In some jurisdictions a licensee may be entitled to...
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A World of Trademarks at INTA 2018 Annual Meeting in Seattle

During the week of May 20, 2018, members of the Goulston & Storrs  Intellectual Property Group  joined over 10,500 attendees from around the world for the 140th Annual Meeting of the  International Trademark Association (INTA) . Held in Seattle, Washington, the INTA 2018 Annual Meeting attracted an incredibly diverse...
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Supreme Court Removes Patent Litigation from the Heartland of Texas

For years, patent assertion entities have filed patent lawsuits against retailers in federal court in Texas.  The Supreme Court’s recent decision in TC Heartland LLC v. Kraft Foods Group Brands LLC may give retailers the ability to insist they defend such lawsuits on their home turf. Deep In the Heart...
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Supreme Court Says ‘Give Me a ©’ to the Fashion Industry

A recent U.S. Supreme Court copyright decision analyzing cheerleader uniforms may have a profound impact on retailers, and on the fashion industry in particular. On March 22, 2017, the Supreme Court held in Star Athletica, L.L.C. v. Varsity Brands, Inc. that original design elements that are separable from the...
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Copyright Compliance: (Re-)Register Your DMCA Agent in 2017 to Keep Your Website Docked in the Safe Harbor

The Digital Millennium Copyright Act (DMCA) “safe harbor” provisions shield certain online service providers from copyright infringement liability arising from content posted by users on their website. Provided that the service provider registers its DMCA agent and complies with the other statutory requirements , the service provider may encourage...
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The Implications of Trademark Infringement Decisions: Aw “Chucks”

There is a growing population of fashionistas and #sneakerheads skyrocketing the sales of fashion retailers and traditional sneaker companies, such as @Nike and @Converse. Forbes contends that sneakerheads represent approximately 5% of the $22 billion dollar sneaker market in the U.S., which works out to roughly $1.1 billion dollars....
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The Newly Enacted Defend Trade Secrets Act: What Retailers Should Know

On May 11, 2016, President Obama signed into law the Defend Trade Secrets Act of 2016 (the DTSA), creating the first Federal civil cause of action for misappropriation of trade secrets. The DTSA overlaps substantially with, and does not preempt, the trade secret acts already existing at the state...
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Retailers Take Notice: Will Customers .shop at Your .store?

Have you thought about establishing a new distinctive web address for your business? Do you worry that someone else may try to register your brand name within one of the new generic top level domains (gTLDs)? Whether consciously or not, many retailers have been sitting on the sidelines during...
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Retail Litigation Center: A National and Influential Force In Litigation

The Retail Litigation Center (RLC) is a trade organization attached to the Retail Industry Leaders Association (RILA) that describes itself as “the only organization dedicated to advocating the retail industry's perspective in those judicial proceedings that are most important to the retail community.”  Launched by RILA in 2010, the RLC is a...
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3D Printing: Potential Pitfalls For Retailers

What is 3D printing? 3D printing, a seemingly futuristic method of manufacturing objects, is steadily moving into the mainstream as three dimensional printers have relocated from labs to the shelves of retail stores. 3D printing , or additive manufacturing, is a method of production where small machines –robots –...
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Cyber Liability Insurance – Does Your Retail Business Need It?

The news is full these days of hackers stealing credit card and other customer information from United States retailers such as Home Depot, Target, and Neiman Marcus (and the federal government ) among others. These mega-breaches make great headlines, but what about smaller retailers? Are smaller retailers and restaurants...
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Are You Ready for the Attack? Online Brand and Reputation Protection

It starts with an inaccurate, possibly fake, online review. Then a post appears on a consumer complaint forum. Suddenly, there is a surge of false postings about your company on social media sites. Invariably, these anonymous postings appear prominently in search engine results, including Google. If you haven’t implemented...
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INTA 2015 Annual Meeting Recap

Last week, members of Goulston & Storrs joined over 9,900 attendees from around the world who converged on San Diego for the 2015 Annual Meeting of the International Trademark Association (INTA) .  This 137th meeting of INTA was its largest ever and assembled a remarkably diverse group of brand...
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[Insert Your Trademark Here].sucks – Is Your Brand at Risk?

In recent years, the Internet Corporation for Assigned Names and Numbers (ICANN), the non-profit entity responsible for maintaining the Domain Name System of the Internet, has begun to introduce hundreds of new top-level domains.  Top-level domains (TDLs) are the last part of a domain name, some of the most...
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Recent Guidance on Geographically Descriptive Trademarks May Help Brand Owners

Brand owners frequently adopt geographic terms to describe the origin or a characteristic of goods, such as NANTUCKET NECTARS for beverages from Nantucket and HYDE PARK for high end apparel.  They may also adopt such terms to describe the origin of services, such as CALIFORNIA PIZZA KITCHEN for restaurant...
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Who Is Alice and Why Is She Invalidating Patents?

On June 19, 2014, the Supreme Court issued its decision in Alice Corporation Pty. Ltd. v. CLS Bank International , clarifying what it means to be patentable subject matter. With one stroke of the pen, the Supreme Court effectively invalidated thousands of patents that claim a known business method...
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Take Cover: Protecting a Brand in the New Era of Generic Top-Level Domains

The rollout of new generic Top-Level Domains (gTLDs) is now well underway, and approximately 300 new gTLD strings have become available. A full, up to date list of gTLD strings can be found on ICANN’s web site . Some notable additions include: .shoes, .clothing, .organic, .global, .software, .market, .space,...
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Clowning Around and Reheating the Breakfast Wars

Taco Bell has joined the breakfast wars through the launch of its first breakfast menu . Taco Bell’s initial maneuver in this ongoing battle for breakfast customers takes direct aim at McDonald’s iconic breakfast menu . Taco Bell’s television commercials feature individuals named “Ronald McDonald” attesting to their “love”...
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Enhanced Brand Protection Under China's New Trademark Law

On May 1, 2014, China’s highly anticipated amendments to its trademark laws went into effect. After decades of international criticism over the lack of enforcement and protection measures, China’s newly amended trademark laws seek to deter trademark hijacking through stronger enforcement measures and provisions aimed at removing bad faith...
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From Strips to Chips: How Recent Data Breaches Threaten to Impact Your Point of Sale

The costs of recent data breaches have been staggering. In Target’s case, 40 million credit and debit card accounts were hacked, and the personal information of 70 million people was stolen. The cost to Target : $17 million in net expenses and a 46% decline in profits in the...
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Licensing Killed the Radio Star: When Retailers Need Music Licenses

Your business may play the radio to enhance the customer experience. Or it may hire a band to play live music. If you were to receive a legal notice demanding payment for a license to play recorded or live music in your establishment, would you be obligated to pay?...
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Capitalize on the U.S. Market, But Protect Your Brand

Are your brands and valuable intellectual property adequately protected? Retailers entering into or expanding operations in the U.S. access a consumer base which spends more than four trillion dollars on retail goods annually . There are lucrative opportunities for foreign retailers to introduce fresh and innovative brands to U.S....
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Doing Business with Children: Compliance with the Amended COPPA Rule

As of July 1, 2013, the Federal Trade Commission’s regulations implementing the Children’s Online Privacy and Protection Act (“COPPA”) were amended to address changes in the way children use and access the Internet, including through mobile devices and social networking. Originally enacted in 1998, COPPA applies to operators of...
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ICANN’s Trademark Clearinghouse Arrives March 26th

As we have previously discussed here , the range of available generic Top-Level Domain names (gTLDs) will soon expand dramatically to include hundreds of new alternatives such as .store, .hotel, and .restaurant. Most of these new gTLDs will be offered to the general public for registration of second-level domains....
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Social Media Policies: Protection for “Water Cooler” Discussions in the Digital Age

As discussed in an earlier blog post , conflict between retail employers and their employees over the use of social media platforms such as Facebook and Twitter is increasingly common. Although retail employers are well-advised to adopt social media policies to set clear expectations for their employees, these policies...
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ICANN Reveals Applications for New Generic Top-Level Domains (gTLDs)

On June 13, 2012 (also known as “Reveal Day”), the Internet Corporation for Assigned Names and Numbers (ICANN) released the long-awaited list of more than 1,900 proposed new generic Top-Level Domain Names (gTLDs) that have been applied for by various businesses, governments, and other parties. (We previously reported on...
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The Dangers of Social Media: Employment Disputes

Social media platforms such as Facebook and Twitter are proving to be an increasing source of conflict between employers and employees, with surprising and unpredictable outcomes. For example, a store manager who checks the Facebook account of a prospective hire may not realize that this activity can violate anti-discrimination...
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.[YOUR NAME HERE]: New Domain Name Roll-Outs Underway

 The launch of .XXX and other generic top level domains (gTLDs) will complicate the domain name strategies of retailers and other brand owners. Domain name registration services, such as GoDaddy.com , have been advertising the new .XXX domain to everyone, including those not affiliated with the adult entertainment industry....
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