News & Analysis as of

Summary Judgment Likelihood of Confusion Trademark Infringement

McDermott Will & Emery

When Analyzing Likelihood of Confusion, It’s Not Just Location, Location, Location

The US Court of Appeals for the Fourth Circuit vacated a district court’s decision finding no infringement that focused on only the geographic distance between the physical locations of the two users without considering the...more

Katten Muchin Rosenman LLP

The Nittany Lions Are the Champs … Trademark Champs - The Katten Kattwalk/Kattison Avenue | Issue 4

Many eyes were on the Nittany Lions this past year as sports pundits speculated The Pennsylvania State University (Penn State) would make it to the College Football National Championship. But those with an interest in...more

Farella Braun + Martel LLP

Court Discounts Confusion Evidence in Trademark Infringement Action: Is the Confusion Actual?

Actual confusion is considered the sine qua non of trademark infringement. The presence of actual confusion can carry the day in proving a likelihood of confusion entitling the claimant to summary judgment. But not all...more

McDermott Will & Emery

Disgorgement of Profits Appropriate Remedy for Breach of Contract, Trademark Infringement

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In a trademark infringement and breach of contract case involving real estate companies with a shared name, the US Court of Appeals for the Fourth Circuit affirmed summary judgment in favor of the trademark owner, including...more

Woods Rogers

What Barbenheimer Can Teach Us About Intellectual Property

Woods Rogers on

Barbenheimer is a new term for consecutively watching the movies “Barbie” and “Oppenheimer.”  In honor thereof, we present the Barbenheimer Legal Alert. Did you know Mattel sued, and lost, to stop the “Barbie Girl” song?...more

McDermott Will & Emery

Elevate the $: Geographic Isolation Helps Defeat Trademark Infringement Claim

McDermott Will & Emery on

In a case between similarly named banks, the US Court of Appeals for the Tenth Circuit confirmed expert disclosure requirements, conducted a de novo likelihood of confusion analysis and ultimately upheld a finding of no...more

McDermott Will & Emery

On the Road Again: Alternative Designs May Impact Trade Dress Functionality Analysis

McDermott Will & Emery on

The US Court of Appeals for the Sixth Circuit reversed and remanded a summary judgment ruling, finding that there were genuine disputes of material fact regarding whether the plaintiff’s alleged trade dress was functional and...more

McDermott Will & Emery

Delay in Enforcing Trademark Measured from When Infringement Became Actionable

McDermott Will & Emery on

Addressing laches and progressive encroachment, the US Court of Appeals for the Eighth Circuit reversed and remanded a district court’s grant of summary judgment based on laches because the district court failed to “conduct a...more

Fenwick & West LLP

Bacardi Rum Can’t Be Tamed: Ninth Circuit Rules in Favor of Bacardi in Trademark Summary Judgment Ruling

Fenwick & West LLP on

In an interesting twist, the Ninth Circuit granted summary judgment to a defendant in a trademark infringement case in Lodestar v. Bacardi on April 21, 2022. Given the Ninth Circuit’s common refrain that “summary judgment is...more

McDermott Will & Emery

Sticky Situation? Circumstantial Evidence Can Support Intent to Confuse in Trade Dress Claims

McDermott Will & Emery on

The US Court of Appeals for the 11th Circuit reversed a district court’s grant of summary judgment for the defendant on trade dress infringement and trade dress dilution claims, finding that evidence relating to the...more

McDermott Will & Emery

Eye Don’t: No Counterfeiting Without Likelihood of Confusion

McDermott Will & Emery on

Referring to the act of counterfeiting as “hard core” or “first degree” trademark infringement, the US Court of Appeals for the Ninth Circuit for the first time confirmed that the Lanham Act requires a likelihood of confusion...more

McDermott Will & Emery

Second User Vaping Company Has No Claim to “Affliction”

McDermott Will & Emery on

The US Court of Appeals for the 10th Circuit reversed a grant of summary judgment in favor of a company selling vaping accessories under the mark AFFLICTION, holding that the district court had erred in holding as a matter of...more

McDermott Will & Emery

Fifth Circuit Schools Plaintiff on Likelihood of Confusion

Addressing whether the name of a public school district’s summer reading program infringed upon an education services company’s trademarks related to a literacy incentive program, the US Court of Appeals for the Fifth Circuit...more

McDermott Will & Emery

Eagle Mark Soars to Injunction Against Identical “Hawk” Logo

McDermott Will & Emery on

Addressing whether the district court correctly found a likelihood of confusion as a matter of law between two “identical” logos arranged around a stylized bird, the US Court of Appeals for the Fifth Circuit affirmed the...more

Knobbe Martens

Beyoncé vs. Feyoncé: Am I Totally Diluted, or Should I Put a Ring on It?

Knobbe Martens on

In April 2016, Beyoncé Knowles-Carter (known mononymously as “Beyoncé”) filed a trademark suit in the Southern District of New York against Feyonce, Inc., an online business that sells clothing, apparel, and assorted goods...more

McDermott Will & Emery

“Backyard” Grill Summary Judgment Gets Burned

McDermott Will & Emery on

Reversing summary judgment in a trademark infringement dispute over the use of the term “Backyard” on grills, the US Court of Appeals for the Fourth Circuit found that the district court erred because there were genuine...more

Knobbe Martens

Beware! A Trademark Trial and Appeals Board Decision Can Stop You in Your Tracks

Knobbe Martens on

It has been a few years since the Supreme Court decision in the case B&B Hardware, Inc. v. Hargis Industries, Inc., and we are beginning to see the aftermath in the district courts. In B&B Hardware, the Supreme Court held...more

McDermott Will & Emery

Summary Judgment “Disfavored” for Resolving Fair Use Trademark Defense

Examining the issue of trademark fair use, the US Court of Appeals for the Ninth Circuit reversed a district court grant of summary judgment in favor of a promotional products company and remanded the case for reconsideration...more

McDermott Will & Emery

Hair Care Company Can’t Wash Away Absence of Infringement

In an opinion concerning likelihood of confusion of a weak mark, the US Court of Appeals for the Fourth Circuit affirmed partial summary judgment in favor of a defendant in a trademark infringement case concerning hair care...more

McDermott Will & Emery

Lanham Act Cannot Be Used to Create “Species of Mutant Copyright Law”

McDermott Will & Emery on

The US Court of Appeals for the Ninth Circuit upheld a district court decision granting summary judgment to a defendant that its use of digital files did not infringe plaintiff’s trademark or trade dress for its CD-Gs...more

McDermott Will & Emery

Sixth Circuit Drops the Beat: Social Media Relevant in Determining Likelihood of Confusion

The US Court of Appeals for the Sixth Circuit affirmed a grant of summary judgment, holding that the plaintiff provided insufficient evidence to find that relevant consumers were likely to confuse the sources of his and the...more

Nutter McClennen & Fish LLP

A Common Cue Creates No Confusion

Cue, Inc. sells high-end home audio equipment (e.g., table radios and speakers). In 2007, it applied to register the trademark CUE ACOUSTICS, and in late 2009 the USPTO allowed its application. Cue’s CUE ACOUSTICS mark was...more

McDermott Will & Emery

Circuit to District Court: Pucker Up for a Remand

Addressing the application of the Sleekcraft likelihood-of-confusion factors in the context of a summary judgment motion, the US Court of Appeals for the Ninth Circuit reversed the district court’s grant of summary judgment,...more

WilmerHale

Copyright and Trademark Case Review: Wine, Vodka and a Little Karaoke

WilmerHale on

Copyright Opinions - Eleventh Circuit Seeks Florida High Court's Guidance on Pre-1972 Sound Recordings: Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 15-13100 (11th Cir. June 29, 2016) - Anderson, J. In a suit...more

McDermott Will & Emery

Certification Mark May Be Infringed Despite Nominative Fair Use, Lack of Source Confusion

Addressing the use of a certification mark in connection with information systems training, the US Court of Appeals for the Second Circuit reversed and remanded a district court grant of summary judgment for the defendants on...more

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