Alexandra MacKay
Alex MacKay counsels clients in litigation and transactional matters involving intellectual property. She assists clients with the selection, adoption and registration of their trademarks as well as registration of copyrights. Alex represents clients in the enforcement of their intellectual property rights and has practiced before federal and state courts as well as the Trademark Trial and Appeal Board. She assists clients with a variety of transactional issues including those related to licensing of copyrights, trade secrets, trademarks and other intellectual property rights.
Buckeyes Get Black Eye in First Round Against Redbubble
Trademarkology blog, May 15, 2019
US PTO Proposed Rule for Foreign Trademark Applicants and Registrants
Trademarkology blog, April 12, 2019
Forfeiture and Collective Membership Marks
Trademarkology blog, March 20, 2019
Brand on the Run - Why Bands Need a Trademark Strategy
INTABulletin, August 1, 2018
I'm with the Banned (no longer)
co-presenter of CLE program on Matal v. Tam and its implications for Nashville Bar Association, August 11, 2017
Defining Use in Interstate Commerce in Trademark Applications
TTAB Rulings on Trademark infringement Cases: Preclusion Explored
Recent Copyright Developments
Considering Intellectual Property Assets for Collateral
Security Interests in Intellectual Property
Trademarks and Ethics
Search Engines and Trademark Law
Intellectual Property Law: Trademarks
Ethics and Trademarks: By the Seat of Your Pants
Legal Issues for Photographers
Copyright Basics
Recent Developments in Trademark Law
Diversity Committee, Member
Tennessee Justice Center, Board of Directors, (2008-present); Board Chair (2017-present)
Nashville Philharmonic Orchestra, Board of Directors (2015-present); Board Chair (2016-17)
Ten Thousand Villages of Nashville, Inc., Board of Directors, (2008-13)
St. Mary Villa, Board of Directors, (2009-12)
University of Michigan Law School
Vanderbilt University
Alex serves on the board of Tennessee Justice Center, which provides civil legal services for indigent persons, prioritizing cases that affect health care and income security of families. She also serves on the board of the Nashville Philharmonic Orchestra, a volunteer community orchestra of amateur and professional musicians that brings symphonic music free of charge to audiences around middle Tennessee. In years past, Alex has served on the board of directors for and volunteered for Ten Thousand Villages of Nashville, Inc., a non-profit organization that supports fair trade and empowers artisans in developing countries by selling their hand-crafted products. Alex was a member of the Tennessee Bar Association Leadership Law (TBALL) Class of 2009.
Spanish
Nashville Bar Foundation, Fellow (2015)
Best Lawyers in America®, Copyright Law, Litigation - Intellectual Property and Trademark Law (2012-19)
Best Lawyers in America®, Nashville Area Lawyer of the Year for Copyright Law (2015, 2017, 2019)
Best Lawyers in America®, Nashville Area Lawyer of the Year for Trademark Law (2018)
Mid-South Super Lawyers® (2012-18)
Mid-South Super Lawyers®, Rising Stars (2009-10)
Managing Intellectual Property, IP Stars (2013-19)
Terrific Trademarks?
Recently, you may have heard the news about Tom Brady, a somewhat well-known quarterback in the professional sport of American football. His company, TEB Capital Management, Inc., filed two trademark applications seeking registration of the mark TOM TERRIFIC, one for shirts and one for trading cards, posters, and photographs.
Trademarks in Bankruptcy
Last week, in Mission Products, Inc. v. Tempnology, LLC, ___ U.S. ___, Case No. 17-1657 (May 20, 2019), the U.S. Supreme Court resolved a circuit split by clarifying the consequences of a bankruptcy debtor’s rejection of a trademark license when the bankruptcy debtor is the trademark licensor.
Managing IP honors Stites & Harbison attorneys on "IP Stars" 2019 List
LOUISVILLE, Ky.—Managing Intellectual Property magazine has named seven Stites & Harbison, PLLC attorneys to the 2019 “IP Stars” list.
The Race to Privacy
Time: 4:30 p.m. - 6:00 p.m.
Stites & Harbison, 401 Commerce Street, Suite 800, Nashville, Tennessee 37219
IP attorneys Alex MacKay, Mari-Elise Paul and Sarah Spurlock will discuss the latest information on data privacy.
Buckeyes Get Black Eye in First Round Against Redbubble
Recently The Ohio State University (yes, that one) suffered a loss before the U.S. District Court for the Southern District of Ohio in a home game against visiting Redbubble, Inc. OSU had sued Redbubble for trademark infringement, unfair competition, and other claims due to Redbubble’s alleged use of certain trademark rights owned by OSU, but lost in cross motions for summary judgment.
US PTO Proposed Rule for Foreign Trademark Applicants and Registrants
The U.S. Patent and Trademark Office (the “PTO”) has proposed new rules that would require foreign trademark applicants and registrants to engage U.S. attorneys to prosecute applications, handle post-registration matters, and represent them before the Trademark Trial and Appeal Board.
Forfeiture and Collective Membership Marks
Most marks are either trademarks (used in connection with goods) or service marks (used in connection with services). But there are a few other kinds of marks.
Supreme Court Throws Copyright Owners Curveballs
It is weeks away from opening day, yet the United States Supreme Court had its own pre-season double header of sorts this past Monday. The United States Supreme Court issued unanimous decisions in two copyright cases on March 4, 2019.
Registrability and Use of Immoral and Scandalous Marks
The U.S. Supreme Court has granted the U.S. government’s petition for a writ of certiorari in a case challenging provision of the federal trademark statute. In In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017), the U.S. Court of Appeals for the Federal Circuit found the portion of the Lanham Act that proscribes registration of trademarks comprised of “immoral and scandalous matter” unconstitutional.
Benefits of Registration
At the beginning of this new year, it helps to remind ourselves why we engage in this work, why trademarks matter, and, more particularly, why registration matters. Trademarks symbolize the goodwill of a business; they are the emblems of the brand owner’s reputation. Registrations strengthen and protection those important symbols.
Expedited Cancellation Procedures at the TTAB
Ten Stites & Harbison Attorneys Honored by 2018 Mid-South Super Lawyers
Identity Issues: More on Rebranding and Brand Nicknames
Only three months ago we wrote about rebranding. Just two months ago we wrote about beloved brand nicknames. Then, last month, two companies announced plans to rebrand to abbreviations of their current marks. Coincidence? Probably, but we are going to take the opportunity to revisit those topics anyway.
Friendly Foes–Trademark Cease and Desist Letters Are Filled with Humor These Days
A familiar adage teaches that one catches more flies with honey than with vinegar. Without in any way implying that infringers are flies, we can apply this lesson to the trademark context. It seems that trademark attorneys enforcing their clients' rights have really taken this wisdom to heart in recent years. With increasing frequency, trademark cease and desist letters filled with humor and whimsy fill the news.
Best Lawyers in America honors 72 Stites & Harbison attorneys for 2019
Best Lawyers names eight Stites & Harbison attorneys as "Lawyer of the Year" for 2019
Beloved Brand Nicknames
One sign of a prominent, strong, and/or beloved brand is a nickname. Consumers sometimes show their affection for their favorite brands by abbreviating them, elongating them, or creating variations of them.
Sticky Rebranding and Fluid Marks
I have fond memories of drowning my pancakes in all the flavored syrups on the table rack at IHOP. But, on June 4, the International House of Pancakes announced that though it had been IHOP for 60 years, it would be "flippin" its name to "IHOb" in a week.
Childhood Trademarks
Maybe it's just because I am about to go on vacation with seven children under the age of 11 (and their parents), but it seems a lot of trademarks from my childhood have been making appearances in the news recently.
Managing IP Honors Stites & Harbison Attorneys on 'IP Stars' 2018 list
Design Patents and Trade Dress
There are several different kinds of intellectual property protection (e.g., trademarks, patents, and copyrights). The borders between the types of protection are not always clear, and it may be that some subject matter is eligible for protection in more than one category.
Is a Design Mark Worth a Thousand Words?
Specimen Pilot Program
The United States Patent and Trademark Office (the "PTO") has launched a new pilot program designed to ensure that specimens of use submitted to the PTO reflect actual use of the mark in commerce.
Olympic Marks
Good Intentions
First Amendment Protects Trademark Owners from Government Censorship
Issue Preclusion and Likelihood of Confusion
Prescriptions for Pharmaceutical Marks
Eleven Stites & Harbison attorneys honored by 2017 Mid-South Super Lawyers
Phantasmarkgoria
Promoter of Pugilist Products Fails to Prove Priority
Best Lawyers in America honors 79 Stites & Harbison attorneys for 2018
Best Lawyers names 11 Stites & Harbison attorneys as "Lawyer of the Year" for 2018
University Licensing Programs
Benefits of Registration
Managing IP honors Stites & Harbison attorneys on "IP Stars" 2017 list
Cheaper, Faster, … Better?
Family Feud
Techniques for Building Goodwill for Products Marketed to New Parents
Rebuilding Goodwill
Keeping Your Cool in the World of Trademarks and Bankruptcy
Using Trademarks for Good!
Use It (in Commerce) or Lose It!
Nine Stites & Harbison attorneys honored by 2016 Mid-South Super Lawyers
This is the Spinal Tap Lawsuit
Pirates of the Pacific… Northwest
Best Lawyers in America honors 74 Stites & Harbison attorneys for 2017
Best Lawyers names 16 Stites & Harbison attorneys as "Lawyer of the Year" for 2017
Audits: They’re Not Just for the IRS Any More
Managing IP honors Stites & Harbison attorneys on "IP Stars" 2016 list
ZIP, ZILCH, NADA
Monday Night Football
Unfair Competition is Such a Headache
Presidential Marks
Trademark Resolutions
TTAB Rulings on Trademark Infringement Cases: Preclusion Explored in 2015 - LIVE Webcast
Ten Stites & Harbison Attorneys Honored by 2015 Mid-South Super Lawyers
Indictment of Trademark Scam Operator
For a Limited Time Only….
[Expletive Deleted].
Harris Faulkner is Not a Hamster
Watch Out!
Best Lawyers honors 72 Stites & Harbison attorneys for 2016
Timing is Everything
Using your mark for Good(Will)?
Flagging Interest in Tennessee’s New Logo?
Will Good Things Come to Those Who Wait?
Let the Record Show...
Managing IP honors Stites & Harbison attorneys on "IP Stars" 2015 list
Death, Taxes, and Goodwill
The Impact of the TTAB Decision You Just Received May be Greater than you Thought
The Saga Continues
That's All Folks!
Some Pig
Art Imitates Life. Life Imitates….Trademarks?
Tacking or Not? You be the Judge … or Rather, the Jury!
When is Enough Enough?
Best Lawyers names 16 Stites & Harbison attorneys as "Lawyer of the Year" for 2015
Best Lawyers honors 89 Stites & Harbison attorneys for 2015
Stites & Harbison attorney named Top 50 Nashville & Top 100 Tennessee by Mid-South Super Lawyers
Eighty-nine Stites & Harbison attorneys honored by Best Lawyers in America for 2014
Managing IP names 10 Stites & Harbison attorneys to "IP Stars" list
Stites & Harbison attorney named among Top 50 & Top 100 Attorneys by Mid-South Super Lawyers
Seventy-five Stites & Harbison attorneys honored in Best Lawyers in America
Stites & Harbison attorneys named among Top 100 Attorneys by Mid-South Super Lawyers
Mid-South Super Lawyers Honors 10 Nashville Stites & Harbison Attorneys and Four Rising Stars