Advertising Law Trends To Watch In 2021
Fredrikson & Byron attorneys John Pickerill and Courtney Thompson covered a lot of content in their Advertising Law Trends to Watch in 2021 presentation on April 1, 2021.
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Advertising, Marketing & Trademark
We believe it’s important to have backgrounds that provide a strategic advantage to our clients. That’s why our group is comprised of former ad executives, musicians, in-house counsel and litigators who are trained to understand your market, your language, your deadlines, your competition and your need for business-focused legal advice.
What We Do
Experience
News & Articles
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Our Team
What We Do
With our unique backgrounds and dedicated experience in the business world, our Advertising, Marketing & Trademark (AMT) Group has the comfort level and confidence to provide smart, fast, creative and practical solutions to your branding challenges. We’re uniquely situated to hit the ground running, whether we’re managing an international trademark portfolio or finding creative ways to minimize advertising risk.
We’re not patent or corporate attorneys moonlighting on advertising, trademark and copyright projects. We’re creative thinkers with creative backgrounds who provide clients with a true ally in protecting, enhancing and trouble-shooting your brand assets to provide you with a competitive edge in the marketplace.
Trademark & Copyright
We clear, register, maintain, and protect clients’ trademarks (including trademarks, service marks, and trade dress) and copyrights, and we help them develop and implement creative intellectual property protection and enforcement strategies for maximizing brand value around the globe.
The services we offer clients include:
- Worldwide trademark registrability and availability searches
- Trademark validity and infringement opinions
- Preparing, filing, and prosecuting trademark applications before the United States Patent and Trademark Office (USPTO) and internationally through a broad network of foreign associates
- Trademark and brand counseling, including portfolio management and watch services
- Conducting trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB)
- Trademark enforcement and litigation, including infringement, counterfeiting, cybersquatting, and grey-market goods
- Copyright validity and infringement opinions
- Preparing, filing, and prosecuting copyright applications before the United States Copyright Office (USCO) and internationally
- Copyright enforcement and litigation, including infringement of traditional copyrighted media such as books, artwork, photography, motion pictures, musical compositions, musical recordings, and architectural works, as well as new information technologies, software, proprietary digital media, online and social media content, and big data
- Trademark and copyright settlement agreements and trademark co-existence agreements
- Trademark and copyright license agreements
- Music and synchronization license agreements
- Trademark and copyright assignment agreements
- Domain name acquisition and disputes
- Due diligence for intellectual property transactions
Advertising & Promotion
We advise and represent advertisers, advertising, direct marketing, and sales promotion agencies, designers, illustrators, photographers, and other creative service businesses of all sizes throughout the country. Many advertising legal principles operate in a gray area, where subjectivity and nuance are crucial. We provide practical assessments and risk mitigation strategies.
The services we offer clients include:
- Advertising copy compliance
- Native advertising issues
- Federal Trade Commission (FTC) issues
- National Advertising Division (NAD) issues
- Children’s Advertising Review Unit (CARU) issues
- Distilled Spirits Council of the United States (DISCUS) issues
- Television network clearance
- Social media issues
- Claim substantiation issues
- False advertising disputes and litigation
- Competitive advertising disputes and litigation
- Sweepstakes compliance and official rules
- Customer loyalty programs, rewards, and coupons
- Telephone Consumer Protection Act (TCPA) and CAN-SPAM compliance
- Commercial co-venture (CCV) registration
- Agency and client agreements
- Talent, celebrity, and influencer contracts
- Privacy and publicity rights issues
- SAG/AFTRA and other union issues
- Disclaimers and disclosures advice
- Releases and waivers
- Confidentiality and non-disclosure agreements
- Hold-harmless and indemnification agreements
- Product labeling and warranties
Experience
REPRESENTATIVE EXPERIENCE
- Provide ongoing trademark and copyright advice, prosecution, maintenance and enforcement to the estate of a world-famous musician.
- Provide trademark clearance advice to a Fortune 200 manufacturer and marketer of branded consumer foods.
- Provide international portfolio management services to a global mineral exploration company.
- Provide trademark, domain name, advertising, and sweepstakes advice to one of the world’s largest hair salons.
- Provide copyright clearance advice and infringement analysis to national retail clothing store.
- Assist a major home shopping company launch and run a new television network and license related content.
- Assist a large toy manufacturer negotiate and license iconic comic book characters and pop culture assets.
- Negotiate programmatic and single site media buy agreements for a renowned beverage company.
- Provide strategies and options related to a false advertising dispute to international packaged and refrigerated foods company.
- Negotiate master services agreements with agencies for a multinational financial services corporation.
- Provide advice regarding advertising and packaging rules and regulations relevant to prescription drugs to an agency client.
- Manage Trademark Trial and Appeal Board (TTAB) and commercial co-venture (CCV) matters for a beverage brewing system manufacturer.
- Provide advice on sales, licensing, and monetization opportunities to the owner of a unique art collection and copyright assets.
- Negotiate publishing agreements for a prevalent children’s book author and illustrator.
- Provide advice on copyright and intellectual property matters to television production company with successful series on TNT Network and History Channel.
News & Articles
The Consolidated Appropriations Act Provides Significant Changes to Trademark and Copyright Laws
March 17, 2021
Beyond coronavirus-related provisions, the Consolidated Appropriations Act, which was signed into law on December 27, 2020, contains significant changes to trademark and copyright laws.
Advertising Law Trends To Watch In 2021
March 5, 2021
On April 1, Fredrikson attorneys John Pickerill and Courtney Thompson reflected on the developments in media and advertising law expected in 2021 from Federal Trade Commission (FTC) enforcement and privacy laws to safe harbor protection and force majeure claims.
Fredrikson & Byron Trademark Attorneys Recognized in 2021 World Trademark Review 1000
February 17, 2021
Shareholders Lora Friedemann, Cynthia A. Moyer, John C. Pickerill and Ann Dunn Wessberg have been named to the top band in the 2021 edition of the World Trademark Review 1000: The World’s Leading Trademark Professionals for Minnesota.
Entertainment Attorney Jacob Abdo to Serve as GRAMMY® Awards ELI Writing Competition Judge
December 17, 2020
Fredrikson & Byron attorney Jacob M. Abdo will serve as an attorney grader for the January 2021 GRAMMY® Awards Entertainment Law Initiative writing contest.
USPTO to Change Trademark Fees: What You Need to Know
November 30, 2020
Effective January 2, 2021, the USPTO is changing some of its trademark fees. This article highlights the most notable changes for electronic filings.
Shipping Delays Can Cost Your Business More Than Just A Bad Review
July 7, 2020
By Courtney A. H. Thompson and Jacob M. Abdo
Delays caused by workforce shortages, supply chain disruptions and bad business practices may give rise to unanticipated (and costly) liability.
You Have a Trademark Registration, Now What?
June 29, 2020
Once you have started using your trademark or received a trademark registration, you should put a watch or monitoring service into place.
Advertising, Marketing & Trademark COVID-19 Update
June 22, 2020
By Courtney A. H. Thompson and Jacob M. Abdo
The United States Patent and Trademark Office is accepting petitions to prioritize review of certain COVID-19 related trademarks.
USPTO Further Extends Certain Patent Filing Deadlines; Trademark Deadline Extension Expires May 31, 2020
May 29, 2020
By John S. Parzych, Courtney A. H. Thompson and Jacob M. Abdo
The USPTO has extended the time to file certain patent-related documents and pay certain fees. Additionally, trademark-related deadlines extended under the CARES Act will expire on May 31, 2020.
USPTO Further Extends Certain Filing Deadlines
May 4, 2020
By John S. Parzych, Courtney A. H. Thompson and Jacob M. Abdo
The U.S. Patent and Trademark Office (USPTO) has again extended the time to file certain patent and trademark-related documents and to pay certain fees.
COVID-19 Claims Can Get Your Brand into Hot Water with the FTC
April 27, 2020
By Courtney A. H. Thompson and Jacob M. Abdo
Under U.S. law, a brand cannot advertise that its products prevent, treat or cure human disease unless the brand possesses competent and reliable scientific evidence substantiating that the claim is true.
Copyright & Coronavirus: What You Need to Know
April 15, 2020
By Courtney A. H. Thompson and Jacob M. Abdo
Copyright law plays an important role in the sharing of creative content. Whether you are an employer, an educator or a creative professional, legal guidance can help you avoid unintentionally violating copyright law.
Don’t Let Your Brand’s Goodwill Fall Victim to COVID-19 Scams
April 6, 2020
Pandemic profiteers and trademark pirates are taking advantage of these difficult times by selling counterfeit goods to an unsuspecting public.
USPTO Extends Filing Deadline
April 6, 2020
The CARES Act calls for the USPTO to toll, waive, adjust or modify deadlines for certain patent and trademark-related filings during the COVID-19 outbreak.
Fredrikson & Byron Trademark Attorneys Recognized in 2020 World Trademark Review 1000
February 19, 2020
Shareholders Lora Friedemann, Cynthia A. Moyer, John C. Pickerill and Ann Dunn Wessberg have been named to the 2020 edition of the WTR 1000: The World’s Leading Trademark Professionals for Minnesota.
The FTC Issues a New Disclosure Guide for Influencers
December 2, 2019
The FTC released “Disclosures 101 for Social Media Influencers” to offer guidance on how influencers should disclose a relationship with a brand.
Important Change at the Trademark Office – U.S. Attorney Required
August 5, 2019
Beginning August 3, 2019, all foreign-domiciled trademark applicants, registrants and parties will be required to have a U.S. attorney appear on their behalf in the U.S. Trademark Office.
U.S. Attorney Required? USPTO Proposes New Rule that Would Require Foreign Trademark Applicants to be Represented by a U.S. Attorney
March 15, 2019
The USPTO recently issued a Notice of Proposed Rulemaking, proposing to amend the Rules of Practice in Trademark Cases to require all applicants, registrants and parties to be represented by a U.S. attorney.
Fredrikson & Byron Trademark Attorneys Recognized in 2019 World Trademark Review 1000
February 4, 2019
Fredrikson & Byron shareholders Lora Friedemann, Cynthia A. Moyer, John C. Pickerill and Ann Dunn Wessberg have been named to the 2019 World Trademark Review 1000 (WTR 1000) for Minnesota.
Knock it Off: E-Commerce Platforms Continue to Battle Counterfeiters
December 14, 2018
In the face of the nagging problem of fake products posing as genuine goods in online marketplaces, major e-commerce platforms are continuing to refine their strategies to address counterfeiting.
How Will Your Canadian Trademark Portfolio Change in 2019?
November 19, 2018
By Cynthia A. Moyer and Patricia A. Larson
Major amendments to the Canadian Trademarks Act were passed in 2014.
Top 10 List of Basic Do’s and Don’ts for IP
May 1, 2018
By Eric J. Snustad & David C. West
No matter how much IP experience a person has, it can be valuable to have short, easy-to-consume reminders of the basic things a company should consider.
Fredrikson & Byron Trademark Attorneys Recognized in 2018 World Trademark Review 1000
March 20, 2018
Fredrikson & Byron shareholders Lora Friedemann and John Pickerill have been named to the 2018 World Trademark Review 1000, which recognizes attorneys and firms that are deemed outstanding in the trademark practice.
Penny’s Notes on the Rising Influence of Influencers
March 8, 2018
Recently, industry professionals sat down together at Fredrikson & Byron to talk about social media influencers.
#CanWeSayThat? AdLaw Answers from Industry Pros
January 25, 2018
Fredrikson & Byron presented a program featuring lessons-learned with advertising lawyers and renowned industry professionals.
Hurry, Now is the Time to Re-Register your DMCA Agent
October 25, 2017
Under the Digital Millennium Copyright Act (DMCA), service providers can obtain safe harbor protection from copyright infringement liability by, among other things, designating an agent to receive notifications of claimed infringement with the U.S. Copyright Office.
The FTC Speaks, Instagram Listens: A New Disclosure Tool for Social Media Influencers
June 19, 2017
Instagram will soon launch a new tool to help its internet celebrities, or “influencers,” disclose when they are being paid by sponsors.
Fredrikson & Byron Trademark Attorneys Recognized in 2017 World Trademark Review 1000
May 30, 2017
Fredrikson & Byron attorneys Lora Friedemann and John C. Pickerill were recognized in the 2016 edition of the World Trademark Review 1000 (WTR 1000).
Copyright (and Fashion) Advice from the US Supreme Court
March 27, 2017
On March 22, 2017, the Supreme Court handed down its decision in the Star Athletica v. Varsity Brands case. The dispute turned on the issue of whether the patterns of cheerleading uniforms, including chevrons and stripes, are protected under copyright law.
USPTO to Begin Random Audits of Declarations of Use
February 3, 2017
Does your trademark registration identify multiple goods or services in a single class? If so, you could be subject to a random audit to make sure you are using your mark with all the goods and services claimed.
Operation Surge Protector: A U.S. Government Mission Against Dangerous Counterfeit Electronics
December 22, 2016
With support from the Department of Justice (DOJ), the U.S. Immigration and Customs Enforcement (ICE) and U.S. Customs and Border Protection (CBP) launched a new program to stop the illegal importation and distribution of dangerous counterfeit consumer electronics at the border.
Lead Generation: An Old Practice Under New Scrutiny by the FTC
September 27, 2016
The Federal Trade Commission (FTC) Bureau of Consumer Protection released a highly-anticipated report on lead generation on September 15, 2016. The paper summarizes staff perspectives on the topics covered at the FTC’s workshop on lead generation entitled “Follow the Lead” on October 30, 2015. Specifically, the report details the mechanics of online lead generation as well as the benefits and concerns associated with lead generation for both businesses and consumers.
Six Fredrikson & Byron Attorneys Recognized in Intellectual Asset Management’s 2016 Patent 1000 Guide
June 1, 2016
Debuting in the 2016 edition of the IAM Patent 1000: The World’s Leading Patent Professionals were Lora Friedemann and Ann M. Ladd. Also ranked again were Thomas R. Hipkins, Kurt J. Niederluecke, Charles D. Segelbaum and David C. West. The IAM Patent 1000 identifies the top patent professionals in key jurisdictions around the world.
Class Action Targets BarBri Test-Prep Business for ADA/Accessibility Violations
April 27, 2016
Three blind law school graduates just filed a federal class action lawsuit in Texas, alleging that BarBri, Inc., the leading bar exam test prep company, violated Title III of the Americans with Disabilities Act by “maintaining barriers to the accessibility of its services for blind students who use talking screen reading software and failing to make reasonable accommodations or provide auxiliary aids or services.” See, Stanley V. BarBri, Inc.
Narrow Window Opens to Make Any Fixes to EU Community Trademark Registrations
April 18, 2016
Important changes in the regulations governing European Union Community Trademarks (formerly CTMs, now called EUTMs) may affect the scope of your trademark protection for CTM applications filed before June 22, 2012.
FTC Sues Volkswagen Over ‘Clean Diesel’ Advertising
April 1, 2016
In October 2015, the Federal Trade Commission (FTC) said that it was investigating the advertising practices of Volkswagen Group of America, Inc. (Volkswagen) after it was uncovered that Volkswagen fitted its “clean diesel” automobiles with illegal emission defeat devices meant to mask emissions during government tests.
Dear Debtor, Pay Up or Lose Your Domain Name
March 24, 2016
On March 23, 2016, the state’s high court clarified that domain names are property subject to garnishment under Minnesota law. Sprinkler Warehouse, Inc. v. Systematic Rain, Inc., d/b/a GPLAWN.com, No. A14-1121 (Minn. March 23, 2016).
LifeLock to Pay $100 Million to Settle FTC Charges of Deceptive Advertising
March 2, 2016
LifeLock will pay $100 million to the Federal Trade Commission (FTC) to settle the FTC’s contempt charges that the company violated a 2010 federal court order that requires the company to protect consumers’ personal information and stop its deceptive advertising. This settlement is the largest award the FTC has obtained in an enforcement action.
100 Bottles of Beer on the Wall (All with the Same Name) – What’s Wrong with Co-Existence Agreements?
March 1, 2016
Are co-existence agreements no longer a surefire strategy for getting a trademark registration in the face of a likelihood of confusion refusal? That could be the takeaway from the Trademark Trial and Appeal Board’s (TTAB) recent decision in which it held that a co-existence agreement was insufficient to overcome a refusal based on likelihood of confusion. In re Bay State Brewing Co., Inc., Serial No. 85826258 (Feb. 25, 2016).
Picking a Good Trademark – Be Intelligent, But Not Necessarily “Smart”
February 10, 2016
In a precedential decision issued by the Trademark Trial and Appeal Board (TTAB), the TTAB affirmed the examining attorney’s refusal to register SMART SERIES because the mark was merely descriptive. In re Cannon Safe, Inc., Serial No. 85651960 (TTAB Sept. 24, 2015). This raises two questions: how is SMART SERIES descriptive? And, what is wrong with being descriptive?
What’s In a Title? Maybe a Trademark
February 2, 2016
A recent decision by the Trademark Trial and Appeal Board serves as a good reminder that the title of a single work cannot be a trademark. Independent Media Corporation (PVT) Ltd. v. BOL Enterprise (PVT) Ltd., decided January 14, 2016.
Risky Business: Behaviors That Can Put Trademark Applications and/or Registrations At Risk
January 22, 2016
In Hollywood Casino LLC v. Chateau Celeste, Inc., Opposition No. 91203686 (December 14, 2015), Applicant Chateau Celeste filed a trademark application to register the mark Hollywood Hotel. A problem arose, however, when Applicant’s President and CEO testified in a deposition that the Applicant was only a licensee – not the owner – of the mark. The Opposer, Hollywood Casino, seized on this testimony and moved for summary judgment, saying the Applicant could not apply to register a mark it did not actually own.
