Pattishall IP Blog

March 31, 2017

2017 “Women of Influence” Awards

Filed under: Pattishall — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:21 am


Ashly Boesche
was recognized as a Chicago Nominee for the 2017 “Women of Influence” Awards, an inaugural award presented by the Coalition of Women’s Initiatives in Law and Best Lawyers. Ashly is among a select few identified by her colleagues as an exceptional practitioner of law. The 2017 Women of Influence feature appears in Best Lawyers’ Spring 2017 Business Edition. Click here for more info.

 

 

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

March 23, 2017

“Give Me A C . . .” (for Copyrightable)

Filed under: Copyright — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:06 pm

By Seth I. Appel

On March 22, the Supreme Court found that Varsity Brands’ cheerleader uniform designs –arrangements of colors, shapes, stripes and chevrons, shown below  – may be subject to copyright protection.  Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. __ (2017), https://www.supremecourt.gov/opinions/16pdf/15-866_0971.pdf.

Varsity Brands, the leading producer of cheerleader uniforms, brought suit for copyright infringement based on a competitor’s sale of similar uniforms.  In order to prevail, Varsity Brands had to prove that it owned valid copyrights in its designs.

Copyright protects “works of authorship” including “pictorial, graphic, and sculptural works.”  17 U.S.C. § 102(a)(5).  It typically does not protect useful articles.  However, the design of a useful article may be protected to the extent that “such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”  17 U.S.C. § 101.

In yesterday’s  decision, the Supreme Court clarified the “separability” analysis.  It held that a feature incorporated into the design of a useful article is eligible for copyright if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work on its own or when fixed in some other medium.  Under this test, Varsity Brands’ designs were sufficiently separable to permit copyright protection.

Courts previously have struggled with the “separability” analysis, leading to different tests throughout the country.  The Supreme Court yesterday rejected the notion of “physical” separability adopted by some courts and commentators.  The statutory text of the Copyright Act, the Court explained, indicates that “separability is a conceptual undertaking.”

The Copyright Act does not expressly protect fashion designs, but yesterday’s decision will make it easier for designers to protect and enforce their creative works.

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

March 17, 2017

Game Over for EMPORIUM ARCADE BAR service mark: “Merely Descriptive”

Filed under: TM Registration, Trademark (General), TTAB — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:31 am

 

 

 

 

By Jacquelyn R. Prom

On March 8, 2017, the Federal Circuit ruled[1] that the phrase ‘Emporium Arcade Bar’ is merely descriptive of arcade and bar services.

Emporium Arcade Bar is a popular Chicago bar offering a variety of old-school arcade games, pinball machines, draft beers, and cocktails. This crowd-pleasing spot opened its first location in 2012 in Wicker Park. In 2014, it opened a second location in Logan Square.

In 2014, Emporium also applied to register     as a service mark.[2] The Examining Attorney refused registration on the ground that the phrase is merely descriptive of Emporium’s arcade and bar services. Emporium tried to overcome the refusal by disclaiming the exclusive right to use ‘arcade bar’ apart from the mark as a whole. The Examining Attorney, however, required the additional disclaimer of ’emporium’ before the trademark could register. Emporium refused. It argued a disclaimer for ’emporium’ was unnecessary because the term does not immediately convey knowledge of its arcade and bar services. The Examining Attorney disagreed and issued a final refusal. Emporium appealed to the Trademark Trial and Appeal Board.

The TTAB affirmed the refusal,[3] finding ’emporium’ to be merely descriptive of arcade and bar services. Emporium again appealed, this time to the Federal Circuit.

The Federal Circuit affirmed the TTAB’s decision, ruling that the composite mark could not be registered without a disclaimer of all the wording due to each term’s descriptive nature. In reaching this conclusion, the court relied on dictionary definitions of emporium, arcade, and bar, as well as third-party trademark registrations that disclaimed ’emporium’ for restaurant, catering, and bar services.[4] The Federal Circuit also rejected Emporium’s argument that ‘Emporium Arcade Bar’ is a unitary mark. For these reasons, the court held ‘Emporium Arcade Bar’ was merely descriptive.

So for now it is game over for ‘Emporium Arcade Bar’ unless it is willing to disclaim all the wording in the composite mark, including emporium.

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[1] In re: Ddmb, Inc., Appellant, No. 2016-2037, 2017 WL 915102 (Fed. Cir. Mar. 8, 2017)

[2] Ser. No. 86/312,296

[3] In re Ddmb Inc., 86312296, 2016 WL 552609 (Jan. 29, 2016)

[4] E.g., Reg. No. 2216510 for the mark THE FLYING SAUCER DRAUGHT EMPORIUM, registered with a disclaimer of DRAUGHT EMPORIUM for “restaurant and bar services”; Reg. No. 3304948 for the mark MCDADE’S EMPORIUM, registered on the Supplemental Register with a disclaimer of EMPORIUM for “restaurant and bar services”; Reg. No. 2741163 for the mark THE FOOD EMPORIUM, registered under Section 2(f) with a claim of acquired distinctiveness and with a disclaimer of EMPORIUM for “retail grocery store and delicatessen services” and “catering and take-out delicatessen services”; and Reg. No. 2352358 for the mark GARDEN EMPORIUM, registered with a disclaimer of EMPORIUM for “catering services and restaurant services.”

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

March 8, 2017

Pattishall Prevails in 5th Circuit

Filed under: Litigation, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:02 pm

By Phillip Barengolts

Phil Barengolts and Jessica Ekhoff prevailed in the U.S. Court of Appeals for the Fifth Circuit for Insignia Marketing and Christine McAtee in Vetter v. McAtee, No. 15-20575 (5th Cir. March 1, 2017), http://www.ca5.uscourts.gov/opinions/pub/15/15-20575-CV0.pdf. The Court upheld Insignia Marketing’s trial victory and affirmed the denial of Vetter’s request for attorneys’ fees against our clients.  The Court held the Lanham Act’s “fee-shifting provision vests significant discretion in the district courts to grant or deny attorneys’ fees on a case-by-case basis.”  The case was held not “exceptional” under the standards announced in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014).

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

March 2, 2017

The Marshall Tucker Band is still “Searchin’ for a Rainbow”[1] – and a trademark infringement that works

Filed under: TM Registration, Trademark (General) — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:24 pm

Paul BorovayBy Paul A. Borovay

On March 1, 2017, a South Carolina federal judge dismissed The Marshall Tucker Band’s complaint against its publishing company alleging trademark infringement and dilution.[2]

The judge based her decision on the band’s failure to allege the publisher used the band’s trademarks in commerce.  The band relied entirely on the publisher’s trademark registrations, [3] as well as its statements to support its trademark applications that its marks were “now in use in . . . commerce.”

To establish trademark infringement under 15 U.S.C. § 1125(a) of the Lanham Act, a plaintiff must prove five elements, including that the defendant uses the mark “in commerce.”[4]  Section 15 U.S.C. § 1127 defines the term “use in commerce” to mean “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”

Stating that a mark is “now in use in . . . commerce” while prosecuting a trademark application is not the same thing as “using” a mark “in commerce.”  Judge Lewis cited Kusek v. Family Circle, Inc., 894 F. Supp. 522, 532 (D. Mass. 1995) for this notable proposition: “a federal registration [of a trademark] gives the owner of a mark legal rights and benefits, [but] its mere registration does not create the mark nor amount to ‘use’ of the mark [, and, therefore,] trademark registration per se cannot be considered as a use in commerce.”

While it has certainly been a “Long Hard Ride”[5] for The Marshall Tucker Band, the decision shows that a plaintiff cannot rely solely on defendants’ statements while prosecuting a trademark application to meet the Lanham Act’s “use in commerce” requirement.

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[1] “Searchin’ for a Rainbow” is the fourth studio album by The Marshall Tucker Band.
[2] Marshall Tucker Band Inc, The et al v. M T Industries Inc et al, No. 7:16-cv-00420 (D.S.C. March 1, 2017)
[3] See United States Trademark Reg. Nos. 4616427 and 4616428.
[4] 15 U.S.C. § 1125(a) requires the plaintiff to prove the following five elements: (1) that it possesses a mark; (2) that the defendant used the mark; (3) that the defendant’s use of the mark occurred in commerce; (4) that the defendant used the mark in connection with the sale, offering for sale, distribution, or advertising of goods or services; and (5) that the defendant used the mark in a manner likely to confuse consumers.
[5] “Long Hard Ride” is the fifth studio album by The Marshall Tucker Band.

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

August 15, 2016

2016 INTA/Pattishall Medal For Teaching Excellence: Annette Kur

Filed under: Pattishall, Trademark (General) — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:08 am

rws_high_resby Robert W. Sacoff, Partner

As a student at Northwestern University School of Law, I had the good fortune to take Beverly Pattishall’s course on “Trademarks, Trade Identity and Unfair Competition.” This year, I chaired the INTA Pattishall Medal Committee. Here’s a little background on Mr. Pattishall, the Medal and the 2016 recipient, Dr. Annette Kur.

Mr. Pattishall (1916-2002) was born in Atlanta, Georgia, educated at Northwestern and the University of Virginia, and rose to the rank of Lieutenant-Commander in the U.S. Navy, commanding combat ships in World War II. After the war he returned to Chicago and began his distinguished legal career, focusing on trademark and unfair competition cases, and also devoted his energies to teaching the subject in law school courses. He unveiled this fascinating and important field of law to me and many others, at a time when it was not widely taught in depth in law schools. An active trial lawyer, he brought his classes to life with case experiences and litigation tips from the trenches.

To honor his educational contributions, the Pattishall, McAuliffe firm created the Pattishall Medal for Teaching Excellence in 1997, in conjunction with INTA’s Brand Names Education Foundation. This quadrennial Medal is awarded to top educators in the field, who have been nominated by their peers and students based on their:

  • Professional and academic recognition
  • Peer and student evaluation
  • Innovation in methodology and commitment to education in the field of trademarks and trade identity

Past recipients of the Medal are:

  • 1997 Arthur J. Greenbaum
  • 2000 J. Thomas McCarthy
  • 2004 Roger Schecter
  • 2008 Graeme Dinwoodie
  • 2012 David Vaver

(more…)

April 12, 2016

Pattishall Prevails for Bayer in Landmark Unfair Competition Case

Filed under: Litigation, Pattishall — Tags: , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 1:47 pm

Phil Barengolts and Bradley Cohn prevailed in the U.S. Court of Appeals for the Fourth Circuit for Bayer Consumer Care AG and Bayer Healthcare LLC in Belmora LLC v. Bayer Consumer Care AG and Bayer Healthcare LLC, No. 15-1335 (4th Cir. March 23, 2016). The Court held that ownership of a U.S. trademark is not a prerequisite for asserting unfair competition and related claims under Section 43(a) of the Lanham Act, or to cancel a trademark registration for misrepresentation under Section 14(3). This is an important clarification of U.S. unfair competition law.

Bayer Consumer Care sells naproxen sodium pain reliever in Mexico under the trademark FLANAX, which is well known in that country. Bayer does not sell FLANAX in the United States, instead selling ALEVE. Bayer sued a U.S. company, Belmora LLC, for using the FLANAX mark in the U.S. to falsely suggest to U.S. consumers–in particular, Mexican-Americans–that Belmora’s FLANAX pain reliever was the same as Bayer’s Mexican FLANAX pain reliever. Bayer sued for unfair competition and false advertising, and petitioned to cancel Belmora’s trademark registration for FLANAX because of Belmora’s misrepresentation.

On March 23, the Fourth Circuit held Bayer was entitled to sue Belmora, reversing the trial court ruling that Bayer could not proceed with its claims because it does not own the FLANAX mark in the U.S. The Fourth Circuit found that “the plain language of § 43(a) does not require that a plaintiff possess or have used a trademark in U.S. commerce as an element of the cause of action.” Based on that finding, and relying on the Supreme Court’s 2014 landmark decision in Lexmark v. Static Control, the Fourth Circuit held Bayer’s claims fell within the Lanham Act’s zone of interest and that Bayer had alleged injuries that were proximately caused by Belmora’s actions.

Many courts previously assumed a party must own a U.S. trademark to bring Section 43(a) claims. However, the Fourth Circuit held that assumption is wrong. A defendant who passes off its products as the plaintiff’s is liable under Section 43(a), regardless of whether the plaintiff actually owns a U.S. trademark. For instance, as the Fourth Circuit explained, a plaintiff can sue a defendant who uses a generic (and hence unprotectable) word to falsely associate its products with the plaintiff’s. Or, as in the present case, a plaintiff can sue a defendant who uses the plaintiff’s non-U.S. trademark to create a false association in the United States.

The Fourth Circuit noted that in a situation where merely “a few isolated consumers . . . confuse a mark with one seen abroad,” the owner of the non-U.S. trademark will “face difficulty” in establishing a Section 43(a) claim. But “the story is different when a defendant, as alleged here, has — as a cornerstone of its business — intentionally passed off its goods in the United States as the same product commercially available in foreign markets in order to influence purchases by American consumers.” In such a situation, the owner of the non-U.S. trademark has viable Section 43(a) claims.

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March 1, 2016

Nominate Your Favorite Trademark Law Professor for INTA’s Pattishall Medal

Filed under: Trademark (General) — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:52 pm

rws_high_resby Robert W. Sacoff

The Pattishall Medal for Teaching Excellence was established in 2008 by the law firm of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, in cooperation with the International Trademark Association (INTA), in honor of Beverly W. Pattishall. The Medal is awarded every four years to recognize distinguished legal and business educators for outstanding instruction in the trademark, branding and trade identity field.

University, law school or graduate school professors are nominated by their peers or students, and the Pattishall Medal is presented to the individual who best exemplifies excellence and innovation in trademark, branding and trade identity education.  This year’s nominations are open until April 29, 2016.  Click here for details.

January 7, 2016

New Year’s Resolution — Review and Update Website Privacy Policy and Terms of Use

Filed under: Internet, Privacy — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:05 am

Jason Koransky F HRby Jason Koransky, Associate

With the changing of the calendar to 2016, now is a good time to look over your company’s often-neglected website privacy policy and terms of use. Here are 10 areas to focus on in reviewing and updating these important areas of your website.

  1. Disclosure of personal information to third parties. Under California law, California residents can request information about how your company or its subsidiaries provide personally identifiable information (“PII”) to third parties for these third parties’ marketing purposes. Your company’s website should include a notice to California residents that provides them a means to request this information. Further, on January 1, 2016, the Delaware Online Privacy and Protection Act went into effect. One of the provisions in this new law requires a website’s privacy policy to disclose the categories of third parties with which a website operator shares PII about the Delaware-resident users of a website. Accordingly, if your company’s website has any users in Delaware, your company must provide this information in its privacy policy.
  2. Disclose categories of PII collected. To comply with state laws such as those in California and Delaware, as well as to be proactive in communicating privacy issues with visitors to your company’s website, your website privacy policy should disclose all categories of PII that you collect from its users.
  3. Cookies? You should audit the use of cookies on your website, and make sure that your privacy policy properly discloses use of cookies. In addition, you should confirm that the opt-out procedures for cookies are up-to-date and functional.
  4. Limit content geared toward children. The federal Children’s Online Privacy Protection Act generally limits the collection of PII from children under 13. The new Delaware privacy law goes a step further. It prohibits the use, disclosure, or compiling of PII of a child under 18 years old if PII will be used in the marketing or advertising of 17 specific categories of goods and services, such as tobacco, tattoos, tanning facilities, or pornography. If your company’s website is not targeted toward children under 18, the website’s terms of use should expressly state this, and ask anyone under 18 not disclose PII.
  5. Tell users how to access PII. If your company’s website collects PII, the privacy policy should disclose how a user may access, review, and request changes to this PII.
  6. Use easy-to-read, straightforward language. With data security and privacy issues increasingly in the news and of concern to consumers, your website should be proactive in communicating its privacy policy. Making the policy user-friendly is a great place to start. Rather than being in hard-to-decipher legalese, the privacy policy and terms of use should use straightforward language that does not require a lawyer to understand.
  7. Make conspicuous links to the privacy policy and terms of use. The new Delaware privacy law requires that the link to your website privacy policy must be clear and conspicuous.
  8. Remove references to the E.U.–U.S. Safe Harbor Framework. In October 2015, the European Court of Justice declared that the Safe Harbor provision that allowed for the transfer of consumers’ personal information from the E.U. to the U.S. was invalid. Your website’s privacy policy, however, may still have references to this framework, such as stating your company’s compliance with it. Even though a new agreement may be negotiated, with the framework invalidated, references to it should be removed.
  9. Is your DMCA agent contact information correct? If your company’s website qualifies as an Internet Service Provider under the DMCA, it needs to have contact information for the DMCA agent to whom someone would submit a copyright infringement claim notification. You should confirm that this information is accurate.
  10. Are all e-mail, telephone numbers, and mailing addresses correct? Finally, your privacy policy and terms of use should provide website users a way to communicate with you about issues that may exist, either via e-mail, phone, or mail. Confirm that contact information is accurate, that your company actually monitors the e-mail addresses set forth on the site, and responds to inquiries that users may communicate to you.

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Jason Koransky is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois. Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, trade secret and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues. Jason’s practice focuses on trademark, trade dress, copyright, data security and privacy, and false advertising litigation domestic and international trademark prosecution and counseling, and privacy issues. He is co-author of the book Band Law for Bands, published by the Chicago-based Lawyers for the Creative Arts.

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December 22, 2015

Federal Circuit Holds: “Disparagement” Clause of Lanham Act Violates the First Amendment

Filed under: Constitution, TM Registration, Trademark (General), TTAB — Tags: , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:13 pm

Widmaier_Uli_1 F LRBy: Uli Widmaier

I.  The Court’s Holding:

Section 2(a) of the Lanham Act, 15 USC § 1052(a), provides that trademarks that “disparage . . . persons, living or dead, institutions, beliefs, or national symbols” shall not be federally registered (emphasis added).

On December 22, 2015, the Court of Appeals for the Federal Circuit, ruling en banc, held that this clause “is unconstitutional because it violates the First Amendment.” See In re Simon Shiao Tam, No. 2014-1203, slip op. at 62 (Dec. 22, 2015). Based on this holding, the Court vacated the Trademark Trial and Appeal Board’s determination that the mark THE SLANTS for “Entertainment in the nature of live performances by a musical band” is unregistrable as disparaging people of Asian descent.

II.   Practical Consequences:

The Federal Circuit is the statutorily designated Court of Appeals for all USPTO actions, see 15 USC § 1071(a). By holding that Section 2(a)’s disparagement clause is unconstitutional, In re Tam necessarily invalidates not only that clause, but also all USPTO precedents and rules that are based on in. Therefore, In re Tam has several immediate practical consequences:

  • Any disparagement grounds in currently pending Office Actions are no longer valid.
  • Any disparagement claims in currently pending opposition actions or petitions for cancellation must be withdrawn or dismissed.
  • No future trademark applications can be refused registration on disparagement grounds.
  • No future opposition or cancellation actions can validly be based on disparagement claims.

This describes the situation today. But it may not be the end of the matter. The issue may be bound for Supreme Court review, particularly given that a circuit split may emerge in short order. The famous REDSKINS case, in which the Board used the disparagement clause to cancel six trademark registrations of the NFL’s Washington Redskins, Pro-Football, Inc. v. Blackhorse, No. 1-14-CV-01043-GBL, 2015 WL 4096277 (E.D. Va. July 8, 2015), is currently on appeal before the Fourth Circuit. The case turns in substantial part on whether Section 2(a)’s disparagement clause violates the First Amendment. If the Fourth Circuit disagrees with the Federal Circuit’s holding and decides that there is no constitutional violation, then the Supreme Court is likely to step in and resolve the split between the Fourth and Federal Circuits on this important question of constitutional law.

If the Supreme Court were to agree with the Federal Circuit and hold that the disparagement clause is unconstitutional, then the practical implications listed above remain as they are at the moment. But if the Supreme Court were to hold that the disparagement clause is not unconstitutional, then the clause—and the USPTO regulations that depend on it—would be reinstated. What would that mean to any “disparaging” trademark registrations that were issued in the meantime? The answer is that such registrations would potentially be subject to cancellation on disparagement grounds.

III.   Takeaway:

For the time being, the practical takeaway from the Federal Circuit’s In re Tam decision is this. Trademark owners are now free to register disparaging marks, since the USPTO cannot refuse to register them on the ground of disparagement. And third parties cannot oppose applications or seek to cancel registrations on the ground of disparagement.

But any resulting registrations remain at some risk for cancellation, since the Supreme Court may well decide to review this issue. If so, the Supreme Court may overrule the Federal Circuit’s holding, whereupon the disparagement clause and the USPTO rules and precedents based on it would be reinstated.

Furthermore, a disparagement attack (should it be reinstated) cannot be averted via incontestability, since Section 14(3) of the Lanham Act, 15 U.S.C. § 1064(3), expressly permits incontestable registrations to be challenged on Section 2(a) grounds.

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Uli Widmaier is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals. The firm advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Uli’s practice focuses on domestic and international trademark, copyright, trade dress and Internet law and litigation.

 

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