“Empire Records” (1995), A conversation between Ethan Embry (“Mark”) and Rory Cochrane (“Lucas”):

Mark: Oh! I’ve decided I’m going to start a band.

Lucas:  Really?  [Leaning in], the first thing you need, is a name.  Then you’ll know what kind of band you’ve got.

Mark: Yeah. I know.  I know.  I was kinda thinking about, umm, “Marc”.  What do you think of that?

Lucas:  Is that with a “C” or with a “K”?

Mark: Well, my name is with [checking his nametag], a “K”, so I was thinking maybe my band could be with a “C”.  So that way, its kinda like that psychedelic, you know, trip thing.

So Mark, in an effort to know what type of band he has, goes to the Trademark Electronic Search System and conducts a search of *Ma{“r”1:2}{“ckqxh”1:2}*[bi,ti] in International Classes 009 (downloadable music sound recordings) and 041 (Live performances by a musical group).  He believes the results to be promising and decides to move forward with his trademark application.
Continue Reading Bona Fide Intent to Use as Applied to “Empire Records” (1995)

Congratulations to my colleague Angelique McCall.  She recently published two articles on Amazon’s Neutral Patent Evaluation in The Tipsheet, the newsletter of the Intellectual Property Section of the Texas State Bar.  You can also find the articles on IP Watchdog
Continue Reading Navigating Amazon’s Neutral Patent Evaluation in Real Life

In the first Spiderman movie of the superhero era in which we still find ourselves, J. Jonah Jameson believed he thought of a catchy title for the bad guy.  To his assistant, he then said the following declarative: “Call the patent office, copyright the name “Green Goblin.” I want a quarter every time someone says it!”

This line demonstrates a mistake made by many, and it isn’t simply that the Library of Congress rather than the United States Patent and Trademark Office registers copyrights.  Instead, it illuminates a general misconception that through intellectual property protection, a common phrase can become the exclusive right of one individual or entity.  We see this belief personified in trademarks, when an individual or entity seeks to register a common—and arguably public—phrase.  Were such a registration to issue, the holder would have a legal presumption of ownership of the phrase and the exclusive right to use the phrase throughout the United States and any U.S. territory on or in connection with the goods/services listed in its trademark registration certificate.

A search of the USPTO’s Trademark Electronic Search System (TESS) reveals that the mark “BLACK LIVES MATTER” has been applied for thirty times.  The Office received its first of these applications in January 2015, and its most recent less than ten days ago.  Similarly, the mark “I CAN’T BREATHE” was first applied for in December 2014.  See U.S. Trademark Application No. 86479784.  Since May 29, 2020, the same phrase or slight alterations thereof have been applied for more than ten additional times, while applicants have applied to register the term “ALL LIVES MATTER” or iterations thereof eighteen times.

Unfortunately for the owners of these applications, all of whom have paid a filing fee of at least $225 USD—and in many instances more—most of the applications are unlikely to register.  Here is why . . .


Continue Reading Save Your Money: You Can’t Register that Social Movement Phrase

While fans of the country music band Lady Antebellum have long abbreviated the band’s name for convenience, the band announced on June 11, 2020 that it would be officially changing its name to “Lady A.”  Merriam Webster defines “antebellum” as “existing before a war, especially existing before the American Civil War.”  And while the band’s motivations for the name change seem pure, the name change itself created ripples in the trademark and entertainment world that should have been anticipated and could have been avoided.

Continue Reading Ladies A– Lessons Learned from “A” Name Change

In June 2020, the San Antonio Court of Appeals issued its opinion in Title Source, Inc. v. HouseCanary, Inc., No. 04-19-00044-CV, 2020 WL 2858866 (Tex. App.–San Antonio June 3, 2020, no pet. h.), reversing and remanding for new trial a $740 million judgment in favor of HouseCanary on its Texas Uniform Trade Secrets Act (TUTSA) and fraud claims against Title Source.
Continue Reading Crafting The Jury Charge in Trade Secrets Cases — Lessons from Title Source v. HouseCanary

The Eastern District of Virginia has issued multiple opinions addressing the Texas Uniform Trade Secret (TUTSA) in Steves & Sons, Inc. v. JELD-WEN, Inc., No. 3:16CV545, 2018 WL 6272893 (E.D. Va. Nov. 30, 2018). Its latest opinion addressed whether plaintiff was entitled to both reasonable royalty damages and a permanent injunction following trial. Defendant argued that allowing both would constitute an impermissible double recovery. Surprisingly, the Court agreed.

Continue Reading Eastern District of Virginia Holds that Plaintiff’s Reasonable Royalty Testimony Precludes a Permanent Injunction

TexasBarCLE‘s 32nd Annual Advanced Intellectual Property Law seminar is February 27-March 1, 2019.  There are three great days of CLE:

I will be presenting on the 2018 Trade Secrets Update on day 2. 
Continue Reading Brackett & Ellis to Present the 2018 Trade Secrets Update at TexasBarCLE’s 32nd Annual Advanced Intellectual Property Law Course

In Thoroughbred Ventures, LLC v. Disman, No. 4:18-CV-00318, 2018 WL 3752852 (E.D. Tex. Aug. 8, 2018), plaintiff Thoroughbred Ventures sued its former manager Disman, alleging that Disman breached his employment agreement, which provided that all client contact and background information belonged to Thoroughbred and constituted “Confidential Information” and a trade secret of Thoroughbred.
Continue Reading Employer Not Entitled to an Injunction Prohibiting Former Employee from Using Customer Information Committed to Memory

Eagle Oil & Gas Co. v. Shale Exploration, LLC, 549 S.W.3d 256 (Tex. App.—Houston [1st Dist.] 2018, pet., pet. dismissed) involves the familiar situation where a plaintiff sues for both breach of a confidentiality agreement and for misappropriation of trade secrets. Defendant asserted that plaintiff was limited to a breach of contract claim because the misappropriation claim was barred by the economic loss rule, which bars a recovery in tort for economic losses caused by a breach of contract if the losses are due to the failure to fulfill a contractual obligation.
Continue Reading The Economic Loss Rule Does Not Prohibit a Plaintiff from Asserting Both Breach of Contract and Common Law Misappropriation of Trade Secrets Claims

If you make your living from selling or performing your original works of authorship, it is good practice to register that work of authorship with the United States Copyright Office.  Registration creates a public record of your ownership, and if done within 3 months of publication or prior to infringement, it gives the author the right to seek statutory damages and attorneys’ fees from an infringer in a lawsuit.  Most importantly, though, registration is prerequisite to bringing a copyright infringement lawsuit in federal court.

Many authors, however, don’t bother to register their works until after an infringement occurs. 
Continue Reading Do You Have to Register Your Copyright Before Filing Suit? The US Supreme Court Will Soon Decide.