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.
Trademarkology blog, April 9, 2020
Trademarkology blog, March 17, 2020Mac
Trademarkology blog, February 13, 2020
Federal Circuit Court of Appeals Leaves Open the Question of Whether ITC Determinations of Trademark Issues Have Preclusive Effect
Trademarkology blog, September 20, 2019
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
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
Recent Developments in Trademark Law
Diversity Committee, Member
Tennessee Justice Center, Board of Directors, (2008-present); Board Chair (2017-19)
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)
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.
Nashville Bar Foundation, Fellow (2015)
Best Lawyers in America®, Copyright Law, Litigation - Intellectual Property and Trademark Law (2012-20)
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® (2012-19)
Mid-South Super Lawyers®, Rising Stars (2009-10)
Managing Intellectual Property, IP Stars (2013-19)
The last Trademarkology post identified ways in which the United States Patent and Trademark Office (the “PTO”) is working to relieve brand owners from some of the burdens imposed by the current Coronavirus pandemic. Since then, the PTO has issued further means of granting relief.
Stites & Harbison has assembled a Coronavirus Response Team which consists of a cross-disciplinary task force of attorneys and critical staff members to ensure our firm remains “On the Job” for you. Updated 04/07/20
Ahoy, Mateys! Earlier this week, in Allen v. Cooper, Case No. 18-877, 589 U.S. ___ (Mar. 23, 2020), the United States Supreme Court held that the Copyright Remedy Clarification Act of 1990, a federal statute stripping states of their sovereign immunity from copyright infringement suits, lacked a valid constitutional basis. Thus, states cannot be sued for copyright infringement.
As (hopefully) most of the country practices social distancing and extra conscientious hygiene techniques, somewhat less than most of the country may be curious about what this Coronavirus could possibly have to do with trademarks.
On February 15, 2020, the PTO’s new examination guide will go into effect in accordance with new rule changes. In this post, we highlight two of the changes described in the guide that may have more of an impact on brand owners, namely, those pertaining to new email address and specimen requirements.
We have previously blogged about the intersection between patents and trademarks. In that post, we noted that if certain features are protected by a utility patent, that is strong evidence those features are functional and therefore ineligible for trade dress protection. But the content of patents can affect whether trademark protection is available in other ways as well.
Earlier this week, in Peter v. Nantkwest, Inc., Case No. 18-801 the Supreme Court of the United States unanimously held that the United States Patent and Trademark Office (the “PTO”) cannot recover the salaries of its legal personnel as expenses under Section 145 of the Patent Act.
NASHVILLE, Tenn.—The 2019 edition of Mid-South Super Lawyers recently honored nine Stites & Harbison, PLLC attorneys.
On August 14, 2019, the U.S. Court of Appeals for the Federal Circuit issued a revised opinion in Swagway, LLC v. ITC, Case No. 18-1672 (Fed. Cir. Aug. 14, 2019) that left open the possibility that decisions by the International Trade Commission (the “ITC”) could have preclusive effect in federal district court cases involving trademarks.
LOUISVILLE, Ky.—The Best Lawyers in America© 2020 has recognized 75 Stites & Harbison, PLLC attorneys as selected by their peers in 49 areas of practice. Forty-three of those attorneys selected have been honored for 10 consecutive years or more.
Seventy-five years ago this year, one of the most familiar public service images was created: Smokey Bear.
In its ongoing quest to preserve the integrity of the register, the United States Patent and Trademark Office (the “PTO”) has published new guidelines for the examination of specimens of use.
On June 24, 2019, the United States Supreme Court struck down the Lanham Act’s ban on the registration of immoral or scandalous trademarks as a violation of the First Amendment.
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.
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.
LOUISVILLE, Ky.—Managing Intellectual Property magazine has named seven Stites & Harbison, PLLC attorneys to the 2019 “IP Stars” list.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.