adidas brings prelim against Puma in D Oregon

puma evopower left viewpuma evopower outer view

puma evopower front viewpuma vigor black




Topic Outline For My Trademark Talk Tomorrow at the Federal Bar Council

Here is the topic outline for my “trademarks in review” talk tomorrow night for the IP Committee of the Federal Bar Council. Watch this space for links to reference materials.

I. Failure to function as a mark (I BELIEVE THAT WE WILL WIN)

II. Use in Interstate Commerce (ADD A ZERO)

III. Irreparable Harm/Delay (AT&T THANK YOU)

IV. Nominative Fair Use (CISSP)

V. Scandalous! (SLANTS)

VI. Intermediate Liability (various)


VIII. Damages (OCTANE)

IX. Extraterritoriality/Reputation Without Use (BELMORA)


Judge Richard J. Daronco

Judge Richard J. Daronco was our trial advocacy professor in law school (he had been elevated to the District Court the year before and was continuing to teach as an adjunct). We were lucky. Once, one of us was flailing about trying to argue something, and he couldn’t control himself.  He jumped from behind the lectern. “Let me show you how to do it!” He was a pretty reserved guy but now, a switch was flown, and he became the real thing.  He’s jabbing the air, he’s raising his voice, he’s banging the desk.  And pulling it off.  Someone persuading you with their voice and their command.

After some more crescendos and some more majestic arm movements, he realized that we were staring at him in slack-jawed amazement. He came out of it, and he sheepishly said “I’m like the retired Dalmation barking when he hears the fire alarm.” He went back to his lectern.

On May 22, 1988, the father of a pro se litigant whom Judge Daronco had ruled against the previous day, broke into the Judge’s house and shot him to death. Judge Daronco is one of the four federal judges killed in office.

There are news reports that Judge Robart, the Federal Judge who handled the Travel Ban case in the District of Washington, has received death threats.  One ‘pundit’ blithely dismissed this: ‘Judges always receive death threats.’  In fact, Judge Robart, before this case, joked that by becoming a judge, he took a pay cut so that he could receive death threats.

It’s true – judges routinely receive death threats.  There are many disturbed people out there.  There is no reason to add to the number.   The President can use the bully pulpit to vigorously criticize decisions with which he disagrees.  Or maybe ask your attorney general to review the decision and have him lambast it.  Or take the time to write an EO that won’t be stayed 3-0.

But for the president to suggest to the public that they imagine a causal link between a judicial decision and a terror attack – the word ‘irresponsible’ doesn’t seem to cover it. ‘Criminal’ might.

The Westchester County Courthouse was re-named after Judge Daronco.  It’s three blocks from our offices in White Plains.  I can see it from my office.






Text of TTAB Opposition to GRUYERE Certification Mark


Various producers of GRUYERE cheese are opposing an application for GRUYERE as a certification mark by Switzerland’s Interprofession du Gruyère and France’s Syndicat Interprofessionnel du Gruyère.

The term “certification mark” means any word, name, symbol, or device, or any combination thereof–

(1) used by a person other than its owner, or

(2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this [Act],

to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.

15 U.S.C. §§1054, 1127.

Embedded below is one of many oppositions filed last week.


SDNY: TheScore v ScoreStream


TheScore provides online sports daata and news, while SocreSTream pro “allows you to quickly score games and share sport scores with friends and family.”


Read the Complaint in CREW v Trump (Emoluments)

Times coverage here.

Fox News coverage here.


Text of Updated Antitrust Guidelines for the Licensing of IP

FTC press release on updated Antitrust IP licensing guidelines.

National Law Review comments on updated guidelines for the Licensing of IP.


Transcript of Oral Argument in In Re Tam


In Which I Help Light The World’s Largest Menorah ™

lyo menorah

The Lubavitcher Youth Organization is a social services organization associated with Chabad, a Jewish Hasidic movement. Since 1977, it has organized the lighting of the World’s Largest Menorah ™ in Manhattan at 59th and Fifth. The menorah is 20 cubits tall. A cubit, as we all know, is a biblical unit of measure based on the length from the tip of the middle finger to the elbow. I’m not sure what the going rate is for cubits these days but this menorah is approximately 33.5 feet tall. Dignitaries such as mayors and senators tend to assist the lighting of the menorah on the first night of Chanukah.

A different organization, also associated with the Chabad movement, began organizing lighting ceremonies of a similarly tall menorah in the New York borough of Brooklyn. A rivalry ensued, along with news coverage using the unfortunate but inevitable ‘size matters‘ pun.

This year, the two organizations appeared before a Chabad rabbinical tribunal to resolve the dispute as to who could use the phrase ‘World’s Largest Menorah’ Such a tribunal may consider secular civil law and that’s where I come in. I drafted papers on behalf of LYO, discussing its U.S. common law trademark claim (the phrase and logo is used throughout the year in connection with LYO activities).

LYO prevailed, and as a token of its appreciation, it asked that I helped light the menorah. So, on New Year’s Eve, the last night of Chanukah, I got into the Con Edison cherry picker.

crop harness

The Con Ed guys fitted me out with a safety harness like this one.

view down fifth

The view of Fifth Avenue 33.5 feet up from the top of the menorah was nice, marred only by that dark tower on 56th Street.

crowd shot rev

. . . and one shouldn’t look down at the crowd.

butane cropped

I was handed a lit gas torch. (note to self at the time: does our insurance cover?)

shamash cropped 2

And the shamash (the one used to light the other candles) was lit!

A belated Happy Holidays to you all!

Typical local coverage of the dispute here and here.


$102, which includes $2 for Credit Cards vs. $102, with a $2 Discount for Cash – SCOTUS Oral Argument Transcript

cash credit

From blog post by Jane Yakowitz frames the issue in Expressions Hair Design v. Schneiderman (heard yesterday by SCOTUS) as follows:

Imagine an electronics store in New York needs to recoup $100 on the sale of a television. If the store owner labels the television with a sticker price of “$100 plus $2 for credit card sales” or “$102, which includes $2 for credit card sales,” the owner risks jail time. But if the label reads “$102, with a $2 discount for cash sales,” the store owner is in the clear.

Ultimately, that is what this case is about: the criminalization of truthful commercial speech. New York has enacted a law that prohibits sellers from announcing a surcharge for credit-card sales. This surcharge ban does not mean, however, that sellers must charge identical prices for credit-card sales and cash sales. Instead, New York enforces its surcharge ban by instructing sellers to inflate their normal sticker prices and then announce “discounts” from these prices for cash sales. Sellers must then tread carefully in explaining this situation to inquiring customers in order to avoid referring to a surcharge and thus committing a crime. See id. The most sellers can disclose is a half-truth: that their sticker prices do not apply to those who pay with cash.

The oral argument transcript is below.

Prof Tushnet on the 2d Circuit decision here.

Bonus resource: “Priceless? The Competitive Costs of Credit Card Merchant Restraints” by Adam J. Levitin