The Briefing by the IP Law Blog: Sushi Restaurants Battle for Control over Hand Roll Trademark
The US Court of Appeals for the Ninth Circuit affirmed a district court’s grant of a preliminary injunction (PI) in a trademark action under the Lanham Act, stating that the district court’s ruling was not clearly erroneous...more
The US Court of Appeals for the Eighth Circuit affirmed a district court ruling that a plaintiff was not entitled to a jury trial regarding its trade dress infringement claim and that the plaintiff failed to prove that its...more
You are likely familiar with the children’s game, Connect 4, in which players drop red and black checker pieces into an upright rack trying to get four of their pieces in a row to win. Some of you may have even seen enlarged...more
Welcome to the final chapter of our Burger War Trilogy. In our earlier installments, Part I and Part II, we discussed the secondary meaning surveys proffered by both parties in this trade dress dispute. We now turn to...more
Last week we introduced our readers to the imbroglio featuring the burger behemoth In-N-Out, who accused upstart Doll N’ Burgers of infringing In-N-Out’s registered and unregistered trade dress. Typical of these sorts of...more
We’ve discussed a number of cases lately where flimsy consumer surveys were tossed out as unreliable under Daubert. This latest installment presents a slightly different twist....more
Sushi Nozawa, LLC, owner of the popular sushi destination Sugarfish, is challenging the HRB Experience LLC over use of the term “Hand Roll Bar.” IP Attorneys Scott Hervey and Josh Escovedo discuss the lawsuit, including...more
Lanard Toys Limited v. Dolgencorp LLC, Ja-Ru, Inc., and Toys “R” US - Before Lourie, Mayer, and Wallach. Appeal from the District Court for the Middle District of Florida. Summary: A useful article is not copyrightable...more
Last Friday, the U.S. Supreme Court granted the USPTO’s writ of certiorari to review traveling website company Booking.com’s trademark application for “booking.com”. The TMCA previously covered developments in this case here....more
The US Court of Appeals for the First Circuit found that it had jurisdiction despite an arguably improper notice of appeal, and that the trademark owner waived its right to submit new evidence and failed to prove that the...more
One of the biggest trademark cases in 2018 addressed the issue of secondary meaning in product design—specifically, Converse’s rights in its signature Chuck Taylor® All Star® shoe. In Converse v. ITC, the Federal Circuit...more
Addressing the issue of collateral estoppel, the US Court of Appeals for the Eighth Circuit upheld a ruling dismissing a trademark owner’s second infringement lawsuit against the same defendant after a finding that the...more
From big name brawls, to new legislation, to the year of inter partes review, 2018 was a hallmark year for intellectual property law. With so many interesting and informative updates, 2018 has set the bar high for 2019. Let’s...more
The US Court of Appeals for the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision that the SCHLAFLY mark had acquired secondary meaning and met the requirements for registration. Bruce S. Schlafly...more
Addressing issues relating to validity of registered and common law trademarks, the US Court of Appeals for the Eighth Circuit upheld a jury verdict finding infringement of two registered marks and reversed a verdict finding...more
Addressing core issues of trademark law, including evidentiary presumptions afforded to registered trademarks and considerations in determining whether trademarks have acquired secondary meaning, the US Court of Appeals for...more
On October 30, 2018, the Federal Circuit weighed in on Converse’s Chuck Taylor trade dress infringement lawsuit. As reported in If the IP Fits, Wear It: IP Protection For Footwear – a U.S. Perspective, Converse filed over 30...more
Federal Circuit Summary - Before Newman, Mayer, and Stoll. Appeal from the Trademark Trial and Appeal Board. Summary: Words that are primarily a surname can be registered as trademarks if they have acquired secondary...more
On October 30, 2018, a divided Federal Circuit issued a decision in Converse, Inc. v. ITC, whereby it created a new test for secondary meaning and placed limits on trade dress infringement. The Federal Circuit found...more
As explained in a recent Jones Day Commentary, the Federal Circuit clarified the tests for determining secondary meaning and trade dress infringement. Converse v. ITC, No. 16-2497 (Fed. Cir. Oct. 30, 2018). First, the Federal...more
• The Federal Circuit issued a rare precedential decision in an appeal from a trademark- and trade dress-based ITC investigation. • In its decision, the Federal Circuit reiterated that the act of trademark registration does...more
In a recent decision that illustrates the relevance of timing in evaluating the question of secondary meaning, the Court of Appeals of the Federal Circuit breathed new life into Converse’s “Chuck Taylor” sneaker design...more
Federal Circuit Summary - Before Judges Dyk, O’Malley, and Hughes. Appeal from the United States International Trade Commission. Summary: Registered trade dress carries a presumption of secondary meaning only...more
Moldex-Metric, Inc. filed a trademark infringement lawsuit against McKeon Products. Moldex-Metric asserted that McKeon infringed its unregistered trade dress consisting of a bright green color for foam ear plugs by using a...more
Over the last year, there have been some significant trademark and copyright cases in the fashion industry. Below are summaries of recent cases all brand owners should know and understand. These cases touch on important...more