Executive Summary

Trademark jurisprudence in 2019 may be best summarized in two words: questions and answers. Decisions handed down at the district court level have teed up key questions that are poised to be answered by the United States Supreme Court in the 2020 term—such as the protectability of certain “.com” trademarks, as well as the standard for obtaining particular damages in trademark infringement disputes. For brand owners and trademark practitioners, 2019 will also go down as a year that provided answers to many important questions. For example, on numerous occasions in 2019, the Trademark Trial and Appeal Board answered questions as to whether certain designs or designations have the capability to function as a source-identifying trademark. The United States Patent and Trademark Office (USPTO) answered questions relating to the cannabis industry and how the 2018 Farm Bill would be applied in the review of US trademark applications listing goods or services for CBD products. And, the Supreme Court answered an important question for trademark licensees regarding their rights when a trademark licensor goes bankrupt. This report provides a summary of 2019’s most important questions and answers when it comes to trademark law, and serves as a useful guide for navigating trademark prosecution and enforcement efforts into the year ahead.

Trademarks

  1. Treatment of Generic & Descriptive Marks
  2. Potential Damages Available In Trademark Infringement Cases
  3. Cannabis, CBD, and Trademarks
  4. Trademark Licenses in Bankruptcy

2020 Outlook

As we await further answers to our most pressing trademark questions in 2020, we anticipate that this year will bring unique opportunities to apply traditional tenets of trademark law to modern-day disputes and business considerations. So long as marketing efforts continue to incorporate influencers, short-form and interactive content, artificial intelligence, blockchain technologies, and other initiatives to elevate brand profiles, trademark practitioners and the courts will need to be creative in applying traditional interpretations of relevant trademark laws and policies to trademark protection strategies and infringement disputes. In 2020, the USPTO also will be forced to continue to address the ever-crowded brand space by furthering its crack-down on fraudulent trademark applications, clearing dead weight from the USPTO register, and maintaining its strict registrability and failure-to-function assessments to make room for new and growing brands. Finally, in 2020 and beyond, we expect that trademark considerations will continue to color other legal matters and disputes, including corporate transactions, data ownership and privacy, and bankruptcy and restructuring, thus showing the immense commercial value and power of brands.

Read full report.

Print:
EmailTweetLikeLinkedIn
Photo of Nicole M. Jantzi Nicole M. Jantzi

Nicole M. Jantzi is the leader of McDermott’s Global Intellectual Property Practice. A highly skilled litigator and registered patent attorney, Nicole offers clients comprehensive advice and service for their IP disputes. Nicole brings to bear focused insights based on her wide-ranging experience in…

Nicole M. Jantzi is the leader of McDermott’s Global Intellectual Property Practice. A highly skilled litigator and registered patent attorney, Nicole offers clients comprehensive advice and service for their IP disputes. Nicole brings to bear focused insights based on her wide-ranging experience in every significant patent jurisdiction, including the District of Delaware, the Northern and Southern Districts of California, the Southern District of New York, the Eastern District of Texas, the International Trade Commission, the Court of Federal Claims, and the Patent Trial and Appeal Board (PTAB). With a degree in electrical engineering, Nicole frequently serves as lead counsel on matters relating to electronics and consumer products, computers, semiconductors, telematics, software, internet-based technology and telecommunications. Read Nicole Jantzi’s full bio.

Photo of Sarah Bro Sarah Bro

Sarah Bro is the office managing partner for the Firm’s Orange County office. She focuses her practice on trademark prosecution, enforcement and brand portfolio management, as well as licensing, due diligence, copyright, right of publicity and domain name matters. Read Sarah Bro’s full bio. 

Photo of Eleanor B. Atkins Eleanor B. Atkins

Eleanor (Ellie) B. Atkins focuses her practice on trademark, copyright, sweepstakes and promotions, and false advertising matters. Ellie is experienced in client counsel, strategy and legal research, including portfolio management and the selection, clearance, prosecution, registration and enforcement of trademarks. Additionally, she has…

Eleanor (Ellie) B. Atkins focuses her practice on trademark, copyright, sweepstakes and promotions, and false advertising matters. Ellie is experienced in client counsel, strategy and legal research, including portfolio management and the selection, clearance, prosecution, registration and enforcement of trademarks. Additionally, she has assisted with district court litigation as well as actions before the Trademark Trial and Appeal Board, including drafting complaints, discovery requests and briefs in support of various motions. Read Ellie Atkins’ full bio.

Photo of Rebecca Harker Duttry Rebecca Harker Duttry

Rebecca Harker Duttry focuses her practice on intellectual property, with an emphasis on patent infringement litigation. She has litigated a broad range of technologies in the biotechnological, pharmaceutical and electrical arts, including cardiac rhythm management devices, therapeutic antibodies, food supplements/vitamins, smartphones and video…

Rebecca Harker Duttry focuses her practice on intellectual property, with an emphasis on patent infringement litigation. She has litigated a broad range of technologies in the biotechnological, pharmaceutical and electrical arts, including cardiac rhythm management devices, therapeutic antibodies, food supplements/vitamins, smartphones and video game consoles. Rebecca has also prepared and prosecuted US patent applications in the pharmaceutical arts. In addition, she maintains an active pro bono practice as an advocate for veterans. Read Harker Duttry’s full bio.