Recent Publications - Michael C. Cannata


The Notorious RBG Spits Fire: BOOKING.COM Is Not Generic
July 1, 2020 | Intellectual Property
As is often the case, technology develops faster than the law. In that connection, courts are often called upon to apply legislation from yesteryear to technology which, at the time the legislation was passed, would have been categorized as science fiction. Such was the conundrum faced by the Supreme Court in having to apply the …
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Supreme Court Hears First-Ever Telephonic Oral Argument
May 4, 2020 | Intellectual Property
On May 4, 2020, the United States Supreme Court heard its first ever telephonic oral argument in its history. The case, styled United States Patent and Trademark Office v. Booking.com, B.V., addressed the issue of whether the addition of “.com” to an otherwise generic term can create a protectable trademark. Erica Ross, an Assistant to …
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Cannata and Misiti Published in CLM Magazine
May 4, 2020 | Insurance Coverage
Michael Cannata and Frank Misiti’s article, “Proposed COVID-19 Bills Targeting Insurers: Do They Pass Constitutional Muster?” was published in the May 2020 CLM Magazine. The CLM, a member of The Institutes, is dedicated to meeting the professional development needs of the claims and litigation management industries. Founded in 2007, the CLM membership benefits from our …
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Proposed COVID-19 Bills Targeting Insurers: Do They Pass Constitutional Muster?
April 15, 2020 | Insurance Coverage
“While emergency does not create power, emergency may furnish the occasion for the exercise of power.” ~ U.S. Supreme Court Chief Justice Charles E. Hughes (1934) COVID-19 has transformed the health and economy of our nation. Expectedly, the legislative response to this national emergency, at both the state and federal levels, has been swift and …
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Brands Respond to COVID-19
April 3, 2020 | Intellectual Property
Many years ago, Mr. Rogers bestowed upon his audience some sage advice given to him by his mother after he would see scary things in the news. His mother told him “look for the helpers. You will always find people who are helping.” In these challenging times, certain brands have done precisely that – helped. …
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Behold the Prior Art: A (Patentable) Solution to the COVID-19 Pandemic?
March 31, 2020 | Intellectual Property
In his (perhaps, what will one day be a) seminal report on the results of a clinical trial, Dr. Didier Raoult and colleagues reported that after six days of administering hydroxychloroquine combined with azithromycin, 100% of patients infected with COVID-19 were “virologicaly cured,” compared with 57.1% who were treated with hydroxychloroquine only. In the control …
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4th and Long: Tom Brady Fumbles Attempt to Trademark TOM TERRIFIC
September 18, 2019 | Intellectual Property
There are many men named Tom. But only one of those Toms is “terrific” – Tom Seaver. The 12-time All-Star, three-time Cy Young Award winner and first-ballot Hall of Famer’s iconic performance in Game four of the 1969 World Series forever changed the course of the New York Mets franchise and, undoubtedly, played a pivotal …
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Excess and Extended Coverages and Excess Coverage Issues
July 31, 2019 | Insurance Coverage
Michael Cannata and Frank Misiti authored a chapter entitled “Excess and Extended Coverages and Excess Coverage Issues” in the third edition of the Insurance Law Practice treatise by the New York State Bar Association. …
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U.S. Supreme Court Rules that “FUCT®” Is Fine
June 28, 2019 | Intellectual Property
Maybe you feel that the title to this bulletin is “immoral” or “scandalous,” or maybe you don’t.  Either way, in light of the U.S. Supreme Court’s recent decision in Iancu v. Brunetti, whether a word or term is “immoral” or “scandalous” is no longer relevant to whether that word or term can receive federal trademark …
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Mission Complete: Supreme Court Rules In Favor Of Trademark Licensees
May 20, 2019 | Intellectual Property
Trademark licensees no longer need to fear the possibility of losing the right to use their licensed marks if the licensor files for bankruptcy. On May 20, the United States Supreme Court issued its decision in Mission Product Holdings, Inc. v. Tempnology, LLC nka Old Cold LLC, 587 U.S. __ (2019), holding that a licensor’s …
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Litigation Trends in Packaging Claims
April 12, 2019 | Health Services | Intellectual Property
Michael Cannata and Frank Misiti authored an article published in Natural Products Insider, “Litigation Trends in Packaging Claims.” Click here to read the article. …
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And She’s Returning The Stairway … to Heaven
October 12, 2018 | Intellectual Property
While there may be a no-return policy on the stairway to heaven, no such policy exists with respect to returning a blockbuster jury verdict that dismissed a copyright infringement lawsuit against Led Zeppelin. To be sure, the U.S. Court of Appeals for the Ninth Circuit recently held that a new day will dawn by ordering …
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Gordon, Cannata and Misiti Published in NYIPLA
July 6, 2018 | Intellectual Property
Stu Gordon, Michael Cannata and Frank Misiti’s article, “Dealer’s Choice: First Circuit Allows Licensor to Reject Trademark License in Bankruptcy,” was published in The New York Intellectual Property Law Association’s spring newsletter. Click here to read the article. …
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Everybody Hurts Sometimes: But Is Insurance Available to Compensate That Pain?
May 11, 2018 | Insurance Coverage
From efforts to curtail cyber-bullying, to the creation of safe spaces, protecting individuals from mental injury is now mission critical. Every day, lawsuits are filed by individuals seeking damages for conduct that has resulted in mental injury. Not surprisingly, the targets of these lawsuits have turned to their insurers to defend and indemnify them against …
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Driving Miss Lohan? Not According to the New York Court of Appeals
April 19, 2018 | Intellectual Property
Lindsay Lohan was not pleased with the alleged use of her likeness by Rockstar Games as an avatar in its Grand Theft Auto V video game. In her lawsuit against the game company, Lohan claimed that: (1) an avatar named “Lacey Jonas” that appears in the video game so resembled her that the avatar qualified …
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Parental Advisory®? The Future of Trademark Registrations Post Tam
March 22, 2018 | Intellectual Property
Michael C. Cannata and Frank M. Misiti have published an article in USLAW Magazine entitled,” Parental Advisory®? The Future of Trademark Registrations Post Tam.” Click here to read the article. All rights reserved. Reprinted with permission from USLAW.org. …
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The Ties That Bind: Second Circuit Rejects Trade Dress for Plastic Bag Closures
December 18, 2017 | Intellectual Property
Businesses must give careful consideration to ensuring that their trade dress is not functional.  A determination of functionality is fatal to any claim that a product contains a protectable trade dress.  In Schutte Bagclosures, Inc. v. Kwik Lok Corp., 699 F. Appx. 93 (2d Cir. 2017), the Second Circuit recently underscored the importance of functionality …
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SCOTUS: Provision Barring Registration of Disparaging Trademarks Unconstitutional
June 19, 2017 | Intellectual Property
It has been a long road for Simon Tam and his bandmates in the rock group “The Slants.”  Back in November 2011, Tam filed a trademark application for THE SLANTS for use in connection with “entertainment in the nature of live performances by a musical band.”  In doing so, Tam hoped to reclaim the otherwise …
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The Eagles Refuse to Take It Easy on Alleged Infringer
May 17, 2017 | Intellectual Property
Like The Dude from The Big Lebowski, the “Hotel California,” located on the Baja Peninsula in Mexico, is likely no longer a fan of The Eagles.  Earlier this month, the iconic classic rock band filed suit against the hotel in the U.S. District Court for the Central District of California seeking to take it to …
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PacerMonitor quotes Cannata
April 14, 2017 | Intellectual Property
Michael Cannata was interviewed for an article entitled, “Patent Trolls’ East Texas Haven Threatened in Supreme Court,” which discusses the TC Heartland v. Kraft Foods case before the U.S. Supreme Court. The case raises the question of whether it is appropriate to resolve a patent infringement claim in Marshall, Texas, if a defendant does not maintain …
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Starbucks Hits the Bong Designer In the Wallet
December 5, 2016 | Intellectual Property
The U.S. District Court for the Central District of California recently granted Starbucks’ motion for a default judgment against James Landgraf, an individual responsible for the design and sale of glass bongs, clothing, and other novelties that infringed certain logos owned by Starbucks. Starbucks Corp. v. Glass, 2016 U.S. Dist. LEXIS 145694 (C.D. Cal. Oct. …
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Court Rejects Insured’s Attempt To “Shoe-Horn” Trademark Infringement Claims Under Advertising Injury Provisions
October 13, 2016 | Insurance Coverage | Intellectual Property
The U.S. District Court for the Central District of California recently rejected efforts by an insured to procure coverage for allegations of trademark infringement under its “Personal and Advertising Injury” insurance coverage.  Infinity Micro Computer, Inc., et al. v. Continental Casualty Company, et al., 2016 U.S. Dist. LEXIS 134957 (C.D. Cal. Sept. 29, 2016). In …
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Recent Decisions by the Trademark Trial and Appeal Board
August 17, 2016 | Insurance Coverage | Intellectual Property
Mark Fails To Satisfy Lawful Use Requirement The Trademark Trial and Appeal Board (“the Board”) affirmed the refusal to register HERBAL ACCESS on the grounds that the mark was not used in lawful commerce.  The Board started its analysis with the principle that to qualify for federal trademark protection, the mark must be lawfully used …
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Infringement of Adult Images Ex(xx)ed Out of Coverage
July 19, 2016 | Insurance Coverage | Intellectual Property
The U.S. District Court for the Western District of Texas recently rejected an attempt by two online content providers to secure coverage in connection with a copyright infringement action commenced against them by an adult entertainment company.[1] Perfect 10, Inc. (“Perfect 10”) filed an action against Giganews, Inc. (“Giganews”) and Livewire Services, Inc. (“Livewire”) for …
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Cannata and Misiti issue Bulletin entitled, “No Coverage For The Sale Of Counterfeit Goods”
June 6, 2016 | Insurance Coverage | Intellectual Property
Businesses that peddle counterfeit goods beware.  According to a recent decision by the Second Circuit, the advertising injury provisions of a standard general liability policy do not obligate an insurer to indemnify its insured for damages resulting from the insured’s sale of counterfeit goods.  Given that the MSRP for all goods seized by the Department …
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Recent Decisions by the Trademark Trial and Appeal Board
May 26, 2016 | Intellectual Property
Board Requires Disclosure Of Unredacted Documents The Board granted a motion by Intex Recreation Corp. and Intex Marketing Ltd. (“Intex”) to compel The Coleman Company, Inc. (“Coleman”) to produce unredacted versions of certain documents.  Coleman claimed that the redacted information was either irrelevant or confidential.  Intex argued in response that relevance is not an appropriate …
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Recent Decisions by the Trademark Trial and Appeal Board
March 1, 2016 | Intellectual Property
Board Rejects Request For Reconsideration By Order dated July 13, 2015, the Board denied a motion to dismiss filed by Knowluxe LLC (“Knowluxe”) seeking dismissal of a petition for cancellation on the grounds that the claims were implausible and that the rights asserted by Guess? IP Holder L.P. (“Guess”) conflicted with the: (1) doctrine of …
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Cannata Published in the NYIPLA Bulletin
February 9, 2016 | Insurance Coverage | Intellectual Property
Michael Cannata’s column was published in the New York Intellectual Property Law’s December 2015/January 2016 issue of “The Report.”  Michael’s column is entitled, “Notable Trademark Trial and Appeal Board Decisions.” Complete summaries of the decisions can be found here.   …
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Recent Decisions by the Trademark Trial and Appeal Board
January 8, 2016 | Intellectual Property
Board Dismisses Section 2(a) Challenge to MARATHON MONDAY Application The Board dismissed an opposition filed by the Boston Athletic Association (“BAA”) to an application filed by Velocity, LLC (“Velocity”) seeking registration of MARATHON MONDAY in connection with “clothing, namely, tops, bottoms, headwear, sweatshirts, sweat pants, jackets, pullovers, caps, hats, socks.” BAA alleged that the mark …
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Recent Decisions by the Trademark Trial and Appeal Board
October 23, 2015 | Insurance Coverage | Intellectual Property
Michael C. Cannata has issued an Intellectual Property Law Bulletin. We hope you find the Bulletin useful and interesting. We invite your suggestions. The Bulletin is not legal advice. Recent Decisions by the Trademark Trial and Appeal Board …
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Product Configuration Trade Dress: A Case Study
April 9, 2015
One of the underlying policy considerations of the Lanham Act is to protect consumers against false or misleading representations concerning affiliation or origin.  In that connection, Section 43(a) of the Lanham Act outlines certain protections that facilitate this important policy consideration.  One such protection extends to a product’s trade dress which can include, among other …
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I Like the Nightlife Baby!
September 30, 2014 | Intellectual Property
In its recent decision, Cutino v. Nightlife Media, Inc., 2014 U.S. App. Lexis 15179 (Fed. Cir. Aug. 7, 2014) (“Nightlife Media”), the Federal Circuit underscored its preference for adjudicating, on the merits, trademark opposition proceedings.  The court directed the Trademark Trial and Appeal Board (“TTAB”) to consider whether one of three federal trademark registrations, owned …
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Trademark Trial and Appeal Board Cancels Six Trademark Registrations Owned by the Washington Redskins*
June 24, 2014 | Intellectual Property
On June 18, 2014, the United States Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB”) issued a blockbuster 2 to 1 decision cancelling six federal trademark registrations owned by the Washington Redskins.  All six registrations feature some variation of the term “REDSKINS” used in connection with professional football services.  The decision was issued …
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You Should Trademark That!
January 1, 2014 | Intellectual Property
Not so fast. With the emergence of online companies advertising discounted trademark registration services, one could easily be misled into believing that securing a trademark registration has been relegated to nothing more than a ministerial act; that with the insouciant wave of the hand, a trademark registration will instantaneously appear at your door step. Nothing …
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You Should Trademark That!
December 31, 2013 | Corporate | Insurance Coverage | Intellectual Property
Not so fast.  With the emergence of online companies advertising discounted trademark registration services, one could easily be misled into believing that securing a trademark registration has been relegated to nothing more than a ministerial act; that with the insouciant wave of the hand, a trademark registration will instantaneously appear at your door step.   Nothing …
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Optics Maker Burnt In Magnifying Glass IP Row Against Rival
March 25, 2013 | Intellectual Property | Insurance Coverage
Please click the link below to view Optics Maker Burnt In Magnifying Glass IP Row Against Rival. Adobe Reader is required to view the bulletin. If Adobe Reader is not installed on your PC, click here to download and install. Optics Maker Burnt In Magnifying Glass IP Row Against Rival Reprinted with permission from Law360.  …
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