Kilpatrick's Trademark, Copyright & Advertising Practice

Atlanta Trademark Partners Ted Davis and Charlie Henn contributed articles to the May–June 2024 (Vol. 114 No. 3) issue of International Trademark Association (INTA)'s "The Trademark Reporter." Check out both of their articles: Constitutional Avoidance and Standards of Proof in Trademark Infringement Litigation: A Comment on Post–Jack Daniel’s Applications of the Rogers Test for Liability (Ted Davis): https://lnkd.in/eeVT7c3Q   "With the U.S. Supreme Court’s 2023 decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC leaving open the question of whether the Rogers v. Grimaldi test should apply in cases involving an artistic or expressive work where a defendant’s allegedly infringing use of a plaintiff’s trademark is not as a designation of source for defendant’s own goods and services, the author of this article argues that the constitutional-avoidance doctrine allows courts to accommodate free speech considerations when determining whether defendant’s use explicitly misleads consumers as to the source or content of such artistic or expressive work." ——— Survey Methodologies to Overcome “Failure to Function” Refusals in the U.S. Patent and Trademark Office (Charlie Henn): https://lnkd.in/e5fdnSuZ   "Brand owners sometimes face United States Patent and Trademark Office “failure to function” refusals to register their trademarks. The author of this article offers brand owners practical advice on how to design surveys that can provide empirical evidence showing whether an applied-for term functions as a mark."

We are thrilled to announce that Jennifer Arkowitz is the firm’s new Intellectual Property (IP) Department Chair and Michael Turton is the IP Deputy Department Chair, effective July 1, 2024. Both Ms. Arkowitz and Mr. Turton will continue their vibrant practices while leading the IP Department. Wab Kadaba, who became Chair of Kilpatrick on July 1 of this year, previously served as IP Department Chair for 11 years. “Jen and Michael’s comprehensive knowledge of the IP landscape complement one another and will be invaluable in defining the next chapter for the IP Department,” said Wab Kadaba, Kilpatrick Chair. “I am confident in their strong leadership abilities and will continue to work closely with them to ensure a smooth transition.” Read the full press release here: https://lnkd.in/ez9fde8V

"In Vidal v. Elster, the Supreme Court addressed the constitutionality of Section 2(c) of the Lanham Act, which prohibits the registration as a trademark or service mark of any “name, portrait, or signature identifying a particular living individual except by his written consent." It did so in the context of the U.S. Patent and Trademark Office’s refusal to register a mark containing a satirical reference to former President Donald Trump, which a fractured Court held did not violate the applicant’s right to free speech. In reaching that conclusion, the Court did not invoke its usual test for evaluating the constitutionality of content-discriminatory (but not viewpoint-discriminatory) restrictions on speech, namely, that found in Central Hudson Gas & Electric Corp. v. Public Service Commission. Instead, it applied a historical analysis potentially signaling the end of Central Hudson inside and outside the trademark registration context. With respect to that context, the Court took pains to limit its holding to Section 2(c) and disclaimed any intent to articulate a framework for evaluating the constitutionality of other grounds for unregistrability. Nevertheless, its methodology arguably can support challenges to grounds lacking the lengthy historical pedigree attributed to Section 2(c) by the Court. Those include grounds added to the Act in the relatively recent past, as well as extrastatutory ones—such as an applied-for mark’s failure to function as a mark—recognized even more recently in the case law." Read the full Legal Alert from Ted Davis and Ryan Kurtiak: https://lnkd.in/eT7bJTUZ

"By removing any limitation on the temporal scope of damages recovery, the U.S. Supreme Court’s decision yesterday in Warner Chappell Music Inc. v. Nealy opened the door to copyright infringement claims dating further back in time. The Court held that a copyright owner is entitled to obtain monetary relief for any timely infringement claim, regardless of when the infringement occurred. Yet, the Court skirted the more fundamental question—when does the statute of limitations clock start ticking?" Read the full Legal Alert from James Trigg and Joseph Petersen: https://lnkd.in/eK-bNFg7

"New York Attorney General Letitia James has filed a lawsuit against JBS USA Food Company and JBS USA Food Company Holdings (“JBS”), subsidiaries of a Brazilian company, the world’s largest beef and poultry producers, for deceptive environmental marketing. Despite a pledge to achieve net zero greenhouse gas emissions by 2040, James asserts that JBS has no viable plan to reach net zero greenhouse emissions and is flipping the truth like a burger on a grill." Read the full Legal Alert from Barry Benjamin, Shreya Desai, and Bryan J. Wolin: https://lnkd.in/dYe3ERzT

We are proud to share that the 2024 World Trademark Review (WTR) 1000 once again awarded Kilpatrick with gold-level recognition for its U.S. national practice and for several U.S. states! The WTR recognized Kilpatrick with high rankings in California, Colorado, Georgia, North Carolina, New York, and Washington, D.C. The firm is also ranked in China and SARs | China: Foreign—the only gold-level U.S. national firm ranked in this geographic market. For the second consecutive year, Kilpatrick is also recommended with a select number of firms as an International Firm. A record number, 35, of Kilpatrick attorneys achieved individual rankings. Partners Bill Brewster, Ted Davis, and Lisa Pearson were a gain named among the leading attorneys nationally for enforcement & litigation, and Mr. Davis and Mr. Brewster were also listed among the top attorneys nationally for prosecution and strategy. Congratulations! Read the full press release here: https://lnkd.in/eN7eKPZG

The ANA Masters of Advertising Law Conference is among the highlights of the year in the world of advertising law. It is the rare legal conference that covers such a broad array of legal issues under one large “advertising law” umbrella, and it is overly stuffed with highly educational sessions. This year’s conference was no exception. While many sessions covered the obvious hot-button topic of the year—artificial intelligence—there were many other hot topics covered in both substantive and entertaining detail. Barry Benjamin, Laura Craver Miller, Evan Nadel, Jonathan Thomas, and Bryan J. Wolin put together this list of their Top 10 advertising legal issues covered at the conference: https://lnkd.in/gQSfA2c5

Christopher Bussert, a senior counsel with more than 30 years of experience in helping clients protect and defend their most important assets and brands, recently wrote the article “The Presumption of Irreparable Harm After the Trademark Modernization Act of 2020: Have All Issues Been Resolved?” for The Franchise Law Journal. Read Chris's 8 Key Takeaways from his article below and read the full article here: https://lnkd.in/d9pQcwFv

Evan Nadel, Jonathan Thomas, and Bryan J. Wolin were honored to host a roundtable discussion at the ANA’s 2023 Masters of Advertising Law Conference, titled “Defending Against ‘Do-Gooder’ Litigation.” As the title suggests, whether under the guise of environmental protection, animal rights, or consumer protection, more claims are getting filed ostensibly for the common good. While some are filed as class-actions, many are not. Their roundtable provided an overview on coming up with the right legal and PR strategies for handling these cases, which is key to a successful legal resolution. Learn more: https://lnkd.in/eqBy98ir

"On December 27, 2020, the Trademark Modernization Act of 2020 (TMA) became law after Congress and the President passed and signed it, respectively, as part of the year-end Consolidated Appropriations Act for 2021. An important component of that legislation was the codification in Section 34(a) of the Lanham Act of the long-standing common-law principle that a trademark owner seeking injunctive relief in actions for trademark infringement and unfair competition under Sections 32 and 43 of the Lanham Act is entitled to a rebuttable presumption of irreparable harm. The presumption arises upon the movant demonstrating liability at the proof stage, or a showing of a likelihood of liability in the context of motions for expedited relief seeking a temporary restraining order or a preliminary injunction." Read "The Presumption of Irreparable Harm After the Trademark Modernization Act of 2020: Have All Issues Been Resolved?" from Christopher Bussert in The Franchise Law Journal, Vol. 42, No. 4, Fall 2023: https://lnkd.in/d9pQcwFv