Eleanor B. Atkins

Tenth Circuit Contributes Clarity to Contributory Liability in Copyright Infringement
By Eleanor B. Atkins on Nov 9, 2023
Posted In Copyrights
Addressing the elements of contributory copyright infringement, the US Court of Appeals for the Tenth Circuit found that a plaintiff had plausibly alleged contributory copyright infringement when he alleged that the defendants had “caused, materially contributed to, or authorized the direct infringement” of his copyrights. Greer v. Moon, et al., Case No. 21-4128 (10th Cir....
Continue Reading
It’s a Taking: Copyright Deposit Requirement Violates Fifth Amendment
By Eleanor B. Atkins on Sep 7, 2023
Posted In Copyrights
Addressing the issue for the first time, the US Court of Appeals for the District of Columbia found that the Copyright Act of 1976’s requirement to deposit two copies of a work with the Library of Congress within three months of the work’s publication was unconstitutional under the Fifth Amendment’s Takings Clause. Valancourt Books, LLC...
Continue Reading
Change in Law Leading to Case Dismissal Doesn’t Preclude Attorneys’ Fees
By Eleanor B. Atkins on Aug 24, 2023
Posted In Copyrights
Addressing the symmetrical fee-shifting provision of the Copyright Act and whether a prevailing defendant was entitled to fees even when the plaintiff moved to dismiss the case in response to a change in law, the US Court of Appeals for the Seventh Circuit reversed the district court’s denial of attorneys’ fees and remanded the case...
Continue Reading
Hairy Situation: Trademark Act Doesn’t Provide Consumer Standing
By Eleanor B. Atkins on Jun 1, 2023
Posted In Trademarks
The US Patent & Trademark Office Trademark Trial & Appeal Board found that a consumer did not have standing to oppose an application for registration because the consumer failed to establish a commercial interest and injury that would be proximately caused by the registration of the mark. Rebecca Curtin v. United Trademark Holdings, Inc. (TTAB...
Continue Reading
Took a DNA Test, Turns Out “100% THAT BITCH” Is 100% Registrable
By Eleanor B. Atkins on Feb 16, 2023
Posted In Trademarks
Addressing a refusal to register for failure to function as a trademark, the Trademark Trial & Appeal Board (Board) reversed, finding that the evidence of consumer perception of “100% THAT BITCH” did not demonstrate that the proposed mark is such a widespread and common expression that it failed to function as a source identifier. In...
Continue Reading
2023 IP Outlook: What to Watch in Patent, Trademark and Copyright Law
By Sarah Bro, Douglas Carsten, Syed K. Fareed, Mandy H. Kim, Charles Larsen, Christina (Tina) L. Martini, Jennifer M. Mikulina, Amol Parikh, Eleanor B. Atkins, Cecilia Choy, Ph.D., Anisa Noorassa, Alexander Piala, PhD, Joshua Revilla, Christian Tatum and Diana Pisani on Feb 7, 2023
Posted In Copyrights, EU Update, Life Sciences, Patents, Technology, Trademarks
Coming out of 2022, developments around the globe are shaping the intellectual property (IP) landscape in the new year. We are seeing cases at the intersection of IP law and NFTs, the opening of the Unified Patent Court in Europe, and decisions from the Supreme Court of the United States and the Court of Appeals...
Continue Reading
Deleting Goods from Registration Subject to Cancellation During Audit May Result in Adverse Judgment
By Eleanor B. Atkins on Jan 26, 2023
Posted In Trademarks
The Trademark Trial & Appeal Board (Board) addressed, for the first time, whether the deletion of goods and services as a result of a post-registration audit during a cancellation proceeding triggers Trademark Rule 2.134 and found that it does. The Board required the respondent to show cause as to why its deletion of certain goods...
Continue Reading
Supreme Court to Consider First Amendment Protection for Parody Dog Toy
By Eleanor B. Atkins on Nov 29, 2022
Posted In Cert Alert, Trademarks
The Supreme Court of the United States has agreed to consider the scope of protection afforded by the First Amendment to commercial parody products that feature the unauthorized use of another party’s trademark(s). Jack Daniel’s Properties, Inc. v. VIP Products LLC, Case No. 22-148 (Supr. Ct. Nov. 21, 2022) (certiorari granted). The questions presented are...
Continue Reading
PTO Lowers the Bar for Genericness Refusals
By Eleanor B. Atkins on Jul 14, 2022
Posted In Trademarks
The US Patent & Trademark Office (PTO) recently issued Examination Guide 1-22, Clarification of Examination Evidentiary Standard for Marks Refused as Generic (Guide 1-22), which amends the PTO’s stance on the appropriate evidentiary burden for examining attorneys refusing registration based on genericness. Previously, the Trademark Manual of Examining Procedure (TMEP) required an examining attorney to...
Continue Reading
Delay in Enforcing Trademark Measured from When Infringement Became Actionable
By Eleanor B. Atkins on May 26, 2022
Posted In Trademarks
Addressing laches and progressive encroachment, the US Court of Appeals for the Eighth Circuit reversed and remanded a district court’s grant of summary judgment based on laches because the district court failed to “conduct a meaningful analysis” as to when the trademark infringement first became actionable. A.I.G. Agency, Inc. v American International Group, Inc., Case...
Continue Reading