On Monday, July 27, we will consider the principal arguments in the pending 9^th Circuit en banc rehearing of the Kat Von D copyright case. In addition, we’ll discuss a TTAB case that exposes a losing maintenance strategy for foreign owners of U.S. registrations based on Section 44(e) or Section 66.

The plaintiff’s Petition for Rehearing En Banc in Sedlak v. Von Drachenberg urges the 9^th Circuit to discard its longstanding two-step (extrinsic/intrinsic) substantial similarity test for copyright infringement and replace it with a single-step objective test based on protectable expression. Sedlak argues that this single-step test would address many problems caused by the current test: uncertainty as to the roles of judge and jury, standard jury instructions that provide no helpful guidance in applying the present test, and pre-trial and appeal inequities for plaintiffs that result from the intrinsic test being exclusively the province of a jury. The Court granted rehearing, and oral arguments will be heard the week of September 28. We’ll consider possible outcomes based on some of the many amicus briefs submitted by photographer, author, and motion picture trade associations and by copyright professors and scholars.

In re TextNow Inc., Serial No. 98231457 (June 23, 2026) [precedential], the Trademark Trial and Appeal Board shot down the strategy of relying on the Section 8 grace period for a 44(e) U.S. registration to support the registration of an identical new application filed during the grace period. The registrant/applicant’s TOUCH MOBILE mark had apparently never been used in U.S. commerce, and it failed to file its Section 8 declaration while the new application was pending. The TTAB held that the prior, expired registration did not serve to overcome a citation to a third-party registration for MOBILE TOUCH for overlapping services, despite previous co-existence of the two marks on the Principal Register.

Chris Kopitzke, of counsel at SoCal IP, will lead the discussion.