July 2023

Supreme Court Overturns Case Over Lanham Act Reach

Takeaway: The U.S. Supreme Court ruled that federal trademark law, the Lanham Act, does not apply to foreign conduct.

The U.S. Supreme Court ruled that federal trademark law, the Lanham Act, does not apply to foreign conduct. The deciding case involved an Oklahoma-based company, Hetronic International, which had initially won a $96 million trademark damages award against its former European partners, Hetronic Germany and affiliates.

The award was based on the belief that the Lanham Act extended to sales of Hetronic Germany’s products in Europe. However, the Supreme Court, led by Justice Samuel Alito, concluded that the Act’s provisions only apply to claims where the infringing use of the trademark occurs domestically within the U.S.
Justice Sonia Sotomayor disagreed, stating that the Act should apply to foreign activities causing confusion in the U.S.

The Court ultimately vacated the previous decision and clarified that the Lanham Act’s protection does not extend to actions outside the United States.


Twitter Rebranding as “X” May Face Trademark Challenges

Takeaway: Elon Musk’s decision to rebrand Twitter as “X” has triggered legal challenges due to the existing trademarks held by Microsoft and Meta for the letter “X,” raising doubts about the protection of the new logo and its potential impact on the platform’s future.

Twitter CEO Elon Musk has made a controversial move by rebranding the well-known social media platform to “X,” a decision that is likely to invite legal challenges. The letter “X” has already been trademarked by tech giant Microsoft since 2003, specifically related to its Xbox brand. Additionally, Meta (formerly Facebook) holds a federal trademark for a blue-and-white letter “X,” which is directly linked to “social networking services.” This leaves Twitter vulnerable to potential trademark battles with these established companies.

Experts are skeptical about the protection Twitter’s new logo might receive in court, as an “X” is a common and widely-used symbol. There are almost 900 active trademark registrations covering the letter “X,” increasing the likelihood of lawsuits against Twitter.

Additionally, this move has led to confusion among users and advertisers, and it appears that Musk is willing to sacrifice over a decade of brand recognition for an uninspired name. It remains to be seen whether the rebranding will have a positive or detrimental impact on Twitter’s fate in an already competitive social media landscape.

USPTO Formalized Diversion Pilot Program

Takeaway: The USPTO has formalized its Diversion Pilot Program, offering an alternative to formal discipline for patent and trademark practitioners with minor misconduct due to health or practice management issues.

The United States Patent and Trademark Office (USPTO) has issued a Final Rule formalizing its Diversion Pilot Program, which offers an alternative to formal discipline for patent and trademark practitioners facing minor misconduct accusations due to physical or mental health issues or law practice management problems. The rule also includes changes related to foreign attorneys’ recognition, alternative business structures, fees, and other provisions for representation before the USPTO. The program aims to provide practitioners with an opportunity to address the underlying issues causing the alleged misconduct and avoid formal discipline through diversion agreements with the Office of Enrollment and Discipline (OED). The formalization of the program aligns USPTO disciplinary practice with state attorney disciplinary practices.


Proposed Class Action Alleges OpenAI Violated Copyrights and Privacy

Takeaway: A recent proposed class action lawsuit has been filed against OpenAI for violating copyrights and privacy concerns.

A proposed class action lawsuit has been filed against OpenAI, accusing the company of violating copyrights and privacy rights of internet users to develop ChatGPT and other AI products. The suit alleges that OpenAI, once a nonprofit research organization, secretly collected vast amounts of personal data from users, leading to privacy risks and potential harm. The plaintiffs seek a freeze on OpenAI’s products and demand the establishment of an independent body to approve their use, among other measures. The lawsuit reflects growing concerns about AI’s impact on privacy and the need for tighter regulation in the industry.

This lawsuit comes at a time when regulators and policymakers worldwide are grappling with the need for tighter regulation of artificial intelligence, with consumer groups calling for stricter controls on generative AI.


Trader Joe’s Sues its Own Union Over Possible Trademark Infringement

Takeaway: Trader Joe’s has filed a lawsuit against Trader Joe’s United, an independent union of Trader Joe’s employees, alleging trademark infringement for using a logo similar to the grocery chain’s trademark.

Trader Joe’s has sued its independent union, Trader Joe’s United, claiming that the union’s logo infringes on the company’s trademark. The grocery chain alleges that the union’s logo has similarities with Trader Joe’s trademark, including font, typeface, and design. The union operates a commercial website selling products that use Trader Joe’s trademarks without permission, potentially causing confusion among consumers.

Trader Joe’s seeks to stop the union from using their trademark or any confusing variations and is also pursuing damages, including the union’s profits from trademark infringement. The union’s representative argues that Trader Joe’s is using trademark laws to undermine their organizing efforts.

The union views the lawsuit as an act of union-busting and an attempt to silence their worker-led union. The case is seen as a labor issue, similar to previous cases involving other unions and trademark disputes.


Tesla Files Patent Suit Against Australian Energy Company

Takeaway: Tesla has filed a patent lawsuit against an Australian energy storage company, despite Tesla’s famous pledge not to sue over its patents.

Tesla has filed a patent lawsuit against Australian energy storage company CAP-XX, accusing it of infringing on two patents related to electrodes used in batteries and supercapacitors. In 2019, CAP-XX had previously sued a Tesla subsidiary, Maxwell, for patent infringement of supercapacitors. According to Tesla, supercapacitor electrodes are the “primary source of the device’s power capabilities.”

Despite Tesla’s famous pledge not to sue over its patents, the pledge does not apply to companies that sue Tesla first. The trial for CAP-XX’s suit against Tesla’s subsidiary has been postponed, and CAP-XX intends to vigorously defend itself against Tesla’s lawsuit.