Eleanor B. Atkins
Subscribe to Eleanor B. Atkins's PostsEleanor (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.
There’s No Sugarcoating It: Pocky’s Cookie Design Trade Dress Is Functional
By Eleanor B. Atkins on Feb 4, 2021
Posted In Trademarks
Addressing for the second time whether the design of a chocolate-dipped, stick-shaped cookie was eligible for trade dress protection, the US Court of Appeals for the Third Circuit held again that the product configuration was functional and therefore not subject to trade dress protection, affirming summary judgment for defendant Lotte International America Corp. Ezaki Glico...
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2020 IP Law Year in Review: Trademarks
By Sarah Bro and Eleanor B. Atkins on Jan 21, 2021
Posted In Trademarks
Executive Summary 2020 was a year like no other, so you’d be forgiven if the year’s biggest headlines in trademark law didn’t quite catch your attention. In 2020, the US Supreme Court shaped trademark jurisprudence through a trio of notable decisions. A pandemic and shelter-in-place orders pushed more consumers to virtual marketplaces, forcing brand owners,...
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What’s Cookin’? No Likelihood of Confusion Between Two KITCHEN Marks
By Eleanor B. Atkins on Jan 21, 2021
Posted In Trademarks
Addressing the assessment and application of the DuPont likelihood of confusion factors, the US Court of Appeals for the Federal Circuit upheld the Trademark Trial and Appeal Board’s finding of no likelihood of confusion between W WEIGEL’S KITCHEN NOW OPEN & Design and QT KITCHENS & Design for food and beverages sold in the parties’...
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PTO Exam Guide: Post Booking.com, Generic.com Terms Still Face Uphill Battle for Registration
By Eleanor B. Atkins on Nov 12, 2020
Posted In Trademarks
Addressing the Supreme Court of the United States’ ruling in USPTO v. Booking.com B.V., the US Patent and Trademark Office (PTO) recently issued guidance on the examining procedures for “generic.com terms.” (Examination Guide No. 3-20, Generic.com Terms after USPTO v. Booking.com, October 2020.) Booking.com had been engaged in a prolonged battle to secure registration for...
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Cookie Trade Dress Infringement Case Crumbles in Face of Functionality Challenge
By Eleanor B. Atkins on Oct 29, 2020
Posted In Trademarks
The US Court of Appeals for the Third Circuit found that trade dress protection did not extend to the design of a chocolate-dipped, stick-shaped cookie, because the product configuration was useful. Ezaki Glico Kabushiki Kaisha v. Lotte Int’l America Corp., Case No. 19-3010 (3d Cir. Oct. 8, 2020) (Bibas, J.). Ezaki Glico is a Japanese...
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No Remix: Copyright Act Preempts Right of Publicity Claim
By Eleanor B. Atkins on Sep 9, 2020
Posted In Copyrights
The US Court of Appeals for the Second Circuit found that the federal Copyright Act preempts a state right of publicity claim when the latter is merely “a thinly disguised effort to exert control over an unauthorized [use of a copyrighted] work.” Jackson v. Roberts, Case No. 19-480 (2d Cir. Aug. 19, 2020) (Leval, J.)....
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For Your Information, Eighth Circuit Upholds Copyright Protection for Database Compilation
By Eleanor B. Atkins on May 14, 2020
Posted In Copyrights
The US Court of Appeals for the Eighth Circuit addressed the copyright protection afforded to an information database and whether comments made to a reporter while litigation was ongoing violated the disparagement clause in a separation agreement. Ultimately, the Court affirmed a judgment against the defendant for copyright infringement and against its founder for breach...
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Ricky Martin’s “Vida” Lives On, but Plaintiff Will Get Another Shot at It
By Eleanor B. Atkins on Apr 30, 2020
Posted In Copyrights
Addressing whether a copyright infringement claim should be dismissed with prejudice where the plaintiff failed to register his copyright prior to filing the lawsuit, the US Court of Appeals for the First Circuit held that dismissal is too harsh, remanding the case for consideration of whether the claim should be dismissed without prejudice or if...
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Hair of the Dog? Squeaker Toy Is Expressive Work
By Eleanor B. Atkins on Apr 15, 2020
Posted In Trademarks
Addressing whether a dog toy meant to humorously evoke a bottle of whiskey was entitled to First Amendment protection, the US Court of Appeals for the Ninth Circuit held that the toy was a protectable expressive work. The Ninth Circuit vacated and remanded the district court’s finding of trademark infringement, reversed the judgment on dilution,...
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US Copyright Office, USPTO Act to Assist Those Affected by COVID-19
By Eleanor B. Atkins on Apr 9, 2020
Posted In Copyrights, Patents
On March 27, 2020, the President signed into law the Coronavirus Aid, Relief, and Economic Security (CARES) Act, which authorized the US Copyright Office (USCO) and the United States Patent and Trademark Office (USPTO) to temporarily waive or modify certain statutory deadlines. Prior to the CARES Act, the USPTO and USCO had sought to provide...
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