In The News

"Should I Register My Trademark?"

The U.S. Supreme Court opens the door to the continued federal registration of REDSKINS as well as other marks thought to disparage others.

Paul Kruse Copyright Trademark AttorneyPaul Kruse Copyright Trademark AttorneyUp until recently, marks that disparaged others did not qualify for federal registration under § 2(a) of the Trademark Act. However, the Supreme Court in Matal v. Tam recently concluded that the prohibition against the registration of such marks amounts to viewpoint discrimination by the United States Patent and Trademark Office (USPTO) and, under the strict scrutiny review appropriate for government regulation of message or viewpoint, concluded that the disparagement proscription set forth in § 2(a) of the Trademark Act is unconstitutional. This conclusion was premised in part on the fact that the Trademark Act confers important legal rights and benefits on trademark owners who register their marks with the USPTO.

So, Should I Federally Register My Trademark? 

Yes, although federal registration of a trademark is not required. Rights to a trademark in the United States are granted on a first come, first served basis. One obtains trademark rights by being the first in a given market either to use the mark or to file and successfully obtain a registration. Once it obtains such rights, the trademark owner is entitled to stop newcomers from using similar marks in ways that are likely to cause confusion.

You can establish rights in a mark based on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides several advantages, the most important being that federally registered trademarks are national in scope, regardless of the actual geographic use made of the mark. This national scope contrasts greatly with the limited geographic range of common law trademarks. Additional advantages of federal registration include:

  • The right to use the ® symbol in connection with the mark, which may deter potential infringers;

  • Increased ease of discovery by those doing trademark searches, which helps to prevent the adoption of confusingly similar marks by third parties;

  • A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration, which makes it easier to prove an allegation of trademark infringement; and

  • The ability to recover profits, damages and costs for infringement, including the possibility of receiving treble damages in certain circumstances. 

  • Filing for federal registration provides numerous benefits to a trademark owner at a reasonable expense. As a result, applications for federal registration are almost always recommended for marks that qualify.

Learn more about Paul Kruse...

Learn more about Bone Law's Intellectual Property: Copyrights, Trademarks and Related Claims...

BoneLaw’s Stephen Zralek to speak on Recent United States Supreme Court Trademark and Copyright Cases

On May 19th BoneLaw attorney, Stephen Zralek, will participate in the Tennessee Bar Association’s 2017 Entertainment & Sports Forum. Zralek is among a distinguished group of speakers for an afternoon discussion of some of the most cutting edge legal issues in the music and entertainment industry today.

Stephen Zralek; Bone McAllester NortonStephen Zralek; Bone McAllester NortonZralek will take a fresh look at two active cases pending before the United States Supreme Court, Lee v. Tam, the trademark case involving the constitutionality of the disparagement clause under Section 2(a) of the Lanham Act, and Star Athletica, LLC v. Varsity Brands, Inc., the copyright infringement case involving whether certain designs on cheerleading uniforms are eligible for copyright protection, and discuss the far-reaching implications that the Court’s holding in both cases could have on the entertainment industry.

This panel will also briefly explore the constantly-shifting topic of copyright fair use and whether, and to what extent, Supreme Court review might provide much-needed guidance on this murky area of the law. This panel will highlight the recent Sixth and Ninth Circuit split involving sound recording sampling and discuss the likelihood of Supreme Court review and potential outcomes in light of the current state and composition of the Court.

To find out more on the event and to register to attend, please click this link.

Loren Mulraine will Address Intellectual Property Protection at Entrepreneurs and Innovators Conference

Bone McAllester Norton’s Loren E. Mulraine will speak on protecting intellectual property at this week’s Entrepreneurs and Innovators Conference, presented by the Alabama State Black Chamber of Commerce. The two-day event will feature subject matter experts, influential leaders and successful entrepreneurs sharing their experience and tricks of the trade, all designed to help spur economic growth in Alabama.

Loren serves in an Of Counsel role at Bone McAllester Norton, where he focuses his practice on entertainment law, intellectual property and business and corporate law. He is also a professor at Belmont University College of Law, where Intellectual Property Law is one of the courses he teaches.

The Entrepreneurs & Innovators Conference is June 25-26, 2016 at The Cahaba Grand in Birmingham, Ala. Click here for more information.

 

 

 

 

Bone McAllester Norton PLLC is a full-service law firm with 38 attorneys and offices in Nashville, Sumner and Williamson counties, Tennessee. Our attorneys focus on 18 distinct practice areas, providing the wide range of legal services ordinarily required by established and growing businesses and entrepreneurs. Among our practices, we represent clients in business and capital formation, mergers and acquisitions, securities matters, commercial lending and creditors’ rights, commercial real estate and development, governmental regulatory matters, commercial litigation and dispute resolution, intellectual property strategy and enforcement, entertainment and environmental matters. Our client base reflects the firm’s deep understanding and coverage of today’s leading industry and business segments. For more information, visit www.bonelaw.com.

Stephen Zralek Shares Top 10 Advice at Father Ryan’s Cum Laude Induction

Bone McAllester Norton attorney Stephen J. Zralek recently spoke to the 2015 Cum Laude Society induction at his alma mater, Father Ryan High School. He shared his “top 10”pieces of advice with the honor students, including working in a restaurant, broadening perspectives by moving away, being of service to others and finding a champion.

In his litigation practice, Stephen helps clients resolve business, entertainment and intellectual property (IP) disputes. He has been recognized by his peers in Best Lawyers for copyright law and in SuperLawyers for IP litigation.

Click here to watch his speech.

 

 

 

Bone McAllester Norton PLLC is a full-service law firm with 39 attorneys and offices in Nashville, Sumner and Williamson counties, Tennessee. Our attorneys focus on 18 distinct practice areas, providing the wide range of legal services ordinarily required by established and growing businesses and entrepreneurs. Among our practices, we represent clients in business and capital formation, mergers and acquisitions, securities matters, commercial lending and creditors’ rights, commercial real estate and development, governmental regulatory matters, commercial litigation and dispute resolution, intellectual property strategy and enforcement, entertainment and environmental matters. Our client base reflects the firm’s deep understanding and coverage of today’s leading industry and business segments. For more information, visit www.bonelaw.com.

Intellectual Property Spring Institute will Feature Paul Kruse

Bone McAllester Norton attorney Paul Kruse has been added to the list of faculty at the Tennessee Bar Association’s Intellectual Property Spring Institute 2015. This all-day session will feature experts with advanced experience in trademarks, fair use and licensing.

Paul is a trademark attorney with the firm who helps clients across industries protect their trademarks with high quality, creative and comprehensive services, including trademark clearance, registration and policing. He also handles copyright, right of publicity and domain name matters that touch on trademark law.

The Intellectual Property Spring Institute will take place Friday, April 17, at the Tennessee Bar Center. A total of six CLE credits are available.

For more information, click here.

 

 

 

 

 

Bone McAllester Norton PLLC is a full-service law firm with 39 attorneys and offices in Nashville, Sumner and Williamson counties, Tennessee. Our attorneys focus on 18 distinct practice areas, providing the wide range of legal services ordinarily required by established and growing businesses and entrepreneurs. Among our practices, we represent clients in business and capital formation, mergers and acquisitions, securities matters, commercial lending and creditors’ rights, commercial real estate and development, governmental regulatory matters, commercial litigation and dispute resolution, intellectual property strategy and enforcement, entertainment and environmental matters. Our client base reflects the firm’s deep understanding and coverage of today’s leading industry and business segments. For more information, visit www.bonelaw.com.

Stephen Zralek Selected for Leadership Nashville

Congratulations to Bone McAllester Norton attorney Stephen J. Zralek, who was chosen for Leadership Nashville’s 2014-15 program. Stephen will be among the 44-member class who will embark on a nine-month program designed to assist local community leaders in their roles as decision-makers. More than 215 people applied for the program.

Stephen focuses his Nashville law practice in intellectual property litigation, entertainment litigation and business litigation.

 

Bone McAllester Norton PLLC is a full-service law firm with 39 attorneys and offices in Nashville and Sumner County, Tennessee. Our attorneys focus on 17 distinct practice areas, providing the wide range of legal services ordinarily required by established and growing businesses and entrepreneurs. Among our practices, we represent clients in business and capital formation, mergers and acquisitions, securities matters, commercial lending and creditors’ rights, commercial real estate and development, governmental regulatory matters, commercial litigation and dispute resolution, intellectual property strategy and enforcement, entertainment and environmental matters. Our client base reflects the firm’s deep understanding and coverage of today’s leading industry and business segments. For more information, visit www.bonelaw.com.

Paul Kruse will Speak at the Tennessee Bar Association’s Intellectual Property Spring Institute 2014

Bone McAllester Norton attorney Paul W. Kruse will serve as a speaker at the upcoming Intellectual Property Spring Institute 2014, presented by the Tennessee Bar Association. This program will offer sophisticated topics and practical takeaways to IP lawyers related to software and bio-patents, recent developments in copyright law, trademark law, design patents and pre-filing investigations for IP litigation. The conference is scheduled for Friday, April 18 at the Tennessee Bar Center in Nashville.

Paul’s session, “Trademark Law: Reverse Confusion,” will take place at 9:30 a.m.

More information, including how to register, can be found here.

 

Bone McAllester Norton PLLC is a full-service law firm with 37 attorneys and offices in Nashville and Sumner County, Tennessee. Our attorneys focus on 17 distinct practice areas, providing the wide range of legal services ordinarily required by established and growing businesses and entrepreneurs. Among our practices, we represent clients in business and capital formation, mergers and acquisitions, securities matters, commercial lending and creditors’ rights, commercial real estate and development, governmental regulatory matters, commercial litigation and dispute resolution, intellectual property strategy and enforcement, entertainment and environmental matters. Our client base reflects the firm’s deep understanding and coverage of today’s leading industry and business segments. For more information, visit www.bonelaw.com.

Stephen Zralek will Present “Averting a Social Media Nightmare” to Ryan Connections on October 17

Bone McAllester Norton Stephen J. Zralek will discuss steps and precautions to take to keep yourself—and your business—out of legal trouble in the social media sphere when he speaks to Father Ryan High School’s Alumni Association at Ryan Connections on Thursday, Oct. 17. “Averting a Social Media Nightmare” will highlight recent examples of social media disasters in hope that others can learn from their lesson. Stephen will give some good rules for the road and will help audience members spot issues ranging from online defamation and malicious reviews, copyright infringement and creating shields against liability to endorsements, employment issues and protecting children’s privacy online.

Stephen was among the first attorneys to embrace social media within his own practice and to identify social media as comprising its own niche in the law. As a thought leader in Social Media Law and in Intellectual Property, Stephen is routinely called on by businesses and other attorneys for guidance in these constantly-shifting arenas.

Stephen was born and raised in Nashville. He is a 1990 graduate of Father Ryan.

 

Bone McAllester Norton PLLC is a full-service law firm with 36 attorneys and offices in Nashville and Sumner County, Tennessee. Our attorneys focus on 17 distinct practice areas, providing the wide range of legal services ordinarily required by established and growing businesses and entrepreneurs. Among our practices, we represent clients in business and capital formation, mergers and acquisitions, securities matters, commercial lending and creditors’ rights, commercial real estate and development, governmental regulatory matters, commercial litigation and dispute resolution, intellectual property strategy and enforcement, entertainment and environmental matters. Our client base reflects the firm’s deep understanding and coverage of today’s leading industry and business segments. For more information, visit www.bonelaw.com.

Lessons Businesses & Public Figures Can Learn from NCAA Football Players

Businesses who use celebrities to endorse their products should pay attention to two recent decisions, as should celebrities and other public figures.

In two recent cases, former college football players filed suit against Electronic Arts, Inc., better known as EA, the maker of video game "NCAA Football."  The two primary plaintiffs were Ryan Hart, who played quarterback for Rutgers in the early 2000s, and Samuel Keller, who was QB at Arizona State in the mid 2000s.

ncaa-football-13

Although EA never used the players' names, it honed in on real-life details of each player, including jersey number, jersey color, type of helmet and facemask, player height and weight, physical appearance, and throwing and interception stats.  The players sued on behalf of themselves and other players.  The heart of each suit was that EA had violated their right of publicity.

The right of publicity is a creature of state law and, although they have a lot in common, all 50 states treat the right of publicity differently.  Typically a plaintiff must show the a defendant used an individual's name, photograph or likeness to advertise goods or services without the plaintiff's prior consent.  The right typically covers any form of an individual's likeness or persona.  For example, Bette Midler sued when Ford used someone who sounded like her to promote a car in a song, and Vanna White sued Samsung for using a robot dressed in a wig, gown and jewelry to turn letters on a game resembling Wheel of Fortune.  The right also typically covers any medium, from photographs to films to video games.

In these two most recent cases, EA argued that it had a First Amendment right to use these college players' likenesses in its video games.  The Third Circuit and Ninth Circuit Courts of Appeals acknowledged that a First Amendment right of expression extends to video games but held that the players' right of publicity trumped EA's First Amendment right.  The courts both employed the "Transformative Use" balancing test and concluded that EA's video game failed to transform the players' likenesses.  The dissenting judges in both cases disagreed, finding that the video games were highly transformative, given that gamers have the ability to change the avatars' appearances and to never encounter Hart or Keller if they so choose.

Businesses who utilize the images and personas of public figures and celebrities should always obtain consent prior to using the image.  Celebrities often give consent to have their songs recorded and published (a right governed by copyright), but that consent often does not encompass the right of publicity.  Celebrities should always check to see to what extent they have consented to having their right of publicity used.  The right of publicity continues to be one of the most rapidly changing and evolving areas of intellectual property law.

Paul Kruse Article about Google AdWords Published in Intellectual Property Journal

Bone McAllester Norton attorney Paul W. Kruse researched and co-wrote an article that has been published in a leading intellectual property journal. “Is Profiting from the Online Use of Another’s Property Unjust? The Use of Brand Names as Paid Search Keywords” appears in IDEA: The IP Law Review, Vol. 52, p. 131, 2013. The article sets out to answer whether Google’s profiting from the use of others’ brand in its AdWords program is unjust. Paul's co-authors were Daniel Gervais, PhD, FedEx research professor of Law at Vanderbilt University Law School; Martin L. Holmes, attorney with Parker Poe Adams & Bernstein L.L.P.; Glenn Purdue, managing member of Kraft Analytics, L.L.C; and Caprice L. Roberts, professor of law at Savannah Law School.

Congratulations on this great accomplishment, Paul!

 

 

Bone McAllester Norton PLLC is a full-service law firm with 33 attorneys and offices in Nashville and Sumner County, Tennessee. Our attorneys focus on 16 distinct practice areas, providing the wide range of legal services ordinarily required by established and growing businesses and entrepreneurs. Among our practices, we represent clients in business and capital formation, mergers and acquisitions, securities matters, commercial lending and creditors’ rights, commercial real estate and development, governmental regulatory matters, commercial litigation and dispute resolution, intellectual property strategy and enforcement, entertainment and environmental matters. Our client base reflects the firm’s deep understanding and coverage of today’s leading industry and business segments. For more information, visit www.bonelaw.com.

Paul Kruse will Address Google AdWords and the Use of Other People’s Brands on Online Search Results at Vanderbilt Law School

Bone McAllester Norton’s Paul Kruse will participate in a panel discussion about the rapidly changing landscape of the online trademark field at Vanderbilt Law School on Thursday, February 14th. The discussion, will include strategies that businesses use (like Google AdWords) and the challenges and opportunities that such strategies present.

Thursday, February 14, 2013
Noon – 1 p.m.
Vanderbilt Law School
131 21st Avenue South, #2

Stephen Zralek Speaks on Copyright Fair Use at the Tennessee IP Law Association (TIPLA)

Stephen Zralek is presenting a seminar on Copyright Fair Use for the Tennessee Intellectual Property Law Association (TIPLA) on November 9, 2012.  TIPLA is an association of attorneys across Tennessee who focus on IP law.  Stephen’s practice focuses on business litigation, with an emphasis on helping clients avoid and resolve intellectual property disputes.

Stephen Zralek Speaks on Copyright Fair Use at the Tennessee IP Law Association (TIPLA)

Stephen Zralek is presenting a seminar on Copyright Fair Use for the Tennessee Intellectual Property Law Association (TIPLA) on November 9, 2012.  TIPLA is an association of attorneys across Tennessee who focus on IP law.  Stephen’s practice focuses on business litigation, with an emphasis on helping clients avoid and resolve intellectual property disputes.

Stephen Zralek Quoted in ManagingIP about GoogleBooks Class Action

Earlier in June 2012, Stephen Zralek was quoted in a story by ManagingIP about the GoogleBooks Class Action certification. Recently, Judge Denny Chin, sitting by designation for the Southern District of New York, issued a ruling allowing the case to proceed forward as a class action. ManagingIP asked Stephen how much of a blow this decision was to Google. Stephen explained:

“I think it’s fair to say that it’s always a major blow to a defendant when a class action is certified. Here the class includes all U.S. authors and heirs who have a copyright interest in a book that Google scanned into its Library Project. With the certification of a class, there’s a much greater chance that authors will participate in the litigation; otherwise, each author would have had to commence his or her own suit, and many times suit is never filed after evaluating the risks and benefits. A class, however, allows authors with smaller claims to reap the benefits of joining forces with those authors with bigger claims, more at stake, and funds to fight Google.”

He continued: “If Google is found liable, the damages will be aggregated and likely will appear to be significantly higher than if Google had been forced to defend separate lawsuits. The upside for Google is that it won’t have to defend cases all over the country and that it likely will spend less on legal fees, itself. But, if found liable, Google likely will have to pay a big sum to the class attorneys.”

To see a copy of the full article, click here.

Stephen Zralek to chair American Bar Association Committee

Stephen Zralek has been appointed to chair the American Bar Association’s Intellectual Property Law Copyright Litigation Committee.


The American Bar Association (ABA) includes nearly 400,000 members and is the leading national bar association for attorneys in the United States.

The IP Law Copyright Litigation Committee focuses on disputes involving copyrights, monitoring recent decisions across the nation, and providing advanced educational seminars for lawyers on cutting edge topics. Mr. Zralek recently served as Vice Chair of this committee. He helped to urge Congress to amend the the Copyright Act to clarify the requirements required to file a lawsuit for copyright infringement, since no uniform standard exists as interpreted by the various federal courts around the country.

Mr. Zralek is a member at Bone McAllester Norton. He helps clients from the creative, technology and entrepreneurial fields avoid and resolve intellectual property disputes, and is a highly-sought after speaker and author on intellectual property and social media legal issues. He is active in philanthropy in Nashville, and co-founded a networking event for entrepreneurs called WaterCooler. He tweets at @StephenZralek, and blogs at TheExpressive.

Stephen Zralek to chair American Bar Association Committee

Stephen Zralek has been appointed to chair the American Bar Association’s Intellectual Property Law Copyright Litigation Committee.

The American Bar Association (ABA) includes nearly 400,000 members and is the leading national bar association for attorneys in the United States.

The IP Law Copyright Litigation Committee focuses on disputes involving copyrights, monitoring recent decisions across the nation, and providing advanced educational seminars for lawyers on cutting edge topics. Mr. Zralek recently served as Vice Chair of this committee. He helped to urge Congress to amend the the Copyright Act to clarify the requirements required to file a lawsuit for copyright infringement, since no uniform standard exists as interpreted by the various federal courts around the country.

Mr. Zralek is a member at Bone McAllester Norton. He helps clients from the creative, technology and entrepreneurial fields avoid and resolve intellectual property disputes, and is a highly-sought after speaker and author on intellectual property and social media legal issues. He is active in philanthropy in Nashville, and co-founded a networking event for entrepreneurs called WaterCooler. He tweets at @StephenZralek, and blogs at TheExpressive.