This program offers 1.5 participatory MCLE credits.

The TTAB is where the rubber hits the road in terms of trademark registrability. Speakers shall peruse a formidable pile of failure-to-function cases that have made the trademark practitioner’s journey more problematical. The TTAB’s latest surname decision raised the bar to registration, and its decisions on Section 2(e)(5) functionality continue to trip up would-be registrants of product configurations. Speakers will address SCOTUS’ Lexmark decision on “standing,” and the TTAB’s consideration as to whether a plaintiff is “entitled to bring a cause of action.”

Turning to the contours of trademark enforceability, the speakers will discuss SCOTUS’ decision in the genericness case involving the mark BOOKING.COM and the Tiffany v. Costco lawsuit involving Costco’s use of the term “Tiffany Setting,” and will consider how functionality limits the protection of product configuration, including protection of Gorilla Glue blister packs, the POCKY-brand chocolate cookie sticks, and a rainbow of adhesives in a dental adhesive gun.

The speakers will review appellate cases targeting the RedBubble online marketplace and the issues of intermediate liability, parody, and free speech, as they relate to the BAD SPANIELS dog toy case, and the recent Nike “Satan Shoes” dispute.

Speakers: Martin Schwimmer and John L. Welch

Moderator: Carole Barrett

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Martin Schwimmer is a partner in the Trademark and Copyright Practice Group at Leason Ellis. He litigates in U.S. federal district and appellate courts, and in the TTAB. Mr. Schwimmer manages global trademark portfolios, has instructed matters in most trademark jurisdictions in the world, and has been at the forefront of forces that have transformed trademark law, including domain names, blogging, search engines, ecommerce, social media, and blockchain. Mr. Schwimmer is the publisher of The Trademark Blog, the world’s oldest blog devoted to trademark and copyright law, and a Twitter microblog (@trademarkblog). He has authored numerous articles, as well as amicus briefs for INTA, the NYIPLA and the IPO. He holds an AB from Harvard College and a J.D. from Fordham University School of Law.

John L. Welch is Counsel to Wolf, Greenfield & Sacks, PC, in Boston, MA, where he specializes in trademark, copyright, and patent counseling and litigation matters. Mr. Welch serves as an expert commentator and contributor to Allen’s Trademark Digest, and is a member of the Editorial Board of, and a contributor to, The Trademark Reporter. He is the publisher of the TTABlog, which focuses on the procedure and jurisprudence of the TTAB. Mr. Welch is a frequent speaker at intellectual property conferences and seminars, and he presents the yearly review of TTAB decisions at the annual meeting of the International Trademark Association (INTA). He holds an engineering degree from the University of Illinois and a J.D. from Harvard Law School.