News & Analysis as of

Trademark Infringement Appeals Intellectual Property Protection

A&O Shearman

Crowd control caution: how a crowded market may affect your trade mark protection

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The Court of Appeal has confirmed that the existence of a “crowded market” and any coexistence terms entered into by parties may be relevant factors in assessing likelihood of confusion. While the Lifestyle Equities v Royal...more

Erise IP

What’s Trending in Trademarks, October 2024: T.I., Tiny Win $71.5M Verdict for OMG Girlz, Second Circuit Holds Against 1-800...

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Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about: Third...more

McDermott Will & Emery

Clear Vision: Keyword Search Term Purchase Doesn’t Blur Trademark Lines

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Addressing the issue of trademark infringement based on the purchase of search advertising keywords, the US Court of Appeals for the Second Circuit joined the consensus view and upheld a district court decision finding that...more

McDermott Will & Emery

Don’t Tread on Illinois’ Absolute Litigation Privilege

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Addressing when Illinois law’s “absolute litigation privilege” bars certain counterclaims, the US Court of Appeals for the Federal Circuit affirmed a district court’s summary judgment finding that the plaintiff lacked a valid...more

McDermott Will & Emery

Dolly Pardon: American Girl Can Sue Foreign Counterfeiter for Internet Sales

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The US Court of Appeals for the Second Circuit clarified its standards for establishing personal jurisdiction over foreign defendants that conduct business over the internet. American Girl, LLC v. Zembrka, DBA...more

McDermott Will & Emery

Well-Pleaded Factual Allegations Must Be Taken as True When Considering Motion to Dismiss

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The US Court of Appeals for the Fifth Circuit, in dismissing a trademark infringement matter under Rule 12(b)(6) for failure to state a claim, ruled that a district court “erroneously assumed the veracity” of the defendants’...more

McDermott Will & Emery

Smart Choice: Survey Design Didn’t Render Survey Unreliable

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Underscoring its faith in a jury’s competency to use its “common sense and experience” in evaluating evidence, the US Court of Appeals for the Ninth Circuit affirmed a district court’s judgment in favor of the defendants in a...more

BCLP

Castelbajac Saga: Can the Misleading Use of a Patronymic Trademark by Its Assignee Be Sanctioned by Its Revocation for Deceptive...

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A new development in the Castelbajac case, which pits the designer with the eponymous name against the company PMJC, concerning the application for revocation of the trademarks assigned to the latter by the designer. In a...more

Erise IP

What’s Trending in Trademarks, March 2024: Chanel Reseller Found Liable for Trademark Infringement, False Advertising; Federal...

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Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about: Chanel...more

Smart & Biggar

BYOOVIZ is confusing with BEOVU: Federal Court finds violation of Novartis’ trademark rights

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In a decision dated January 24, 2024, Justice Pallotta allowed Novartis’ application, finding that Biogen and Samsung’s use of the trademark BYOOVIZ in association with an ophthalmologic drug violates Novartis’ rights in its...more

Seyfarth Shaw LLP

Is That Really Appealing? – 2023 Affirmance Rates of the TTAB

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The one and only TTABlogger, to whom we are very much indebted, recently reviewed and analyzed the decisions concerning Section 2(d) and Section 2(e)(1) refusals that the Trademark Trial and Appeal Board issued in 2023. ...more

Linda Liu & Partners

Even if a product is manufactured by using the technology purchased from right holder, the use of the right holder’s trademark on...

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Company H claimed that the “S” branded engines used in the motorboats it produced came from a lawful source and were used in a proper procedure, and that it had the right to make derivative use of the purchased engines, and...more

McDermott Will & Emery

Parody of Iconic Sneaker Isn’t Entitled to Heightened First Amendment Protection

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The US Court of Appeals for the Second Circuit upheld a temporary restraining order and preliminary injunction enjoining use of a trademark and trade dress associated with an iconic sneaker design over a First Amendment...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit’s Determination on Whether Fraudulent Conduct in Obtaining Incontestable Status Warrants the Mark’s Cancellation

In Great Concepts, LLC, v. Chutter, Inc., the Federal Circuit decided on whether the Trademark Trial and Appeal Board can cancel a trademark based on the inclusion of false statements in a declaration to obtain an...more

Ladas & Parry LLP

New York Court Sides with PepsiCo on Remand in Ongoing Rise Brewing Dispute

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In Riseandshine Corporation v PepsiCo Inc (SDNY-1-21-cv-06324), plaintiff Riseandshine Corporation, doing business as Rise Brewing, brought three federal and two state claims relating to trademark infringement and unfair...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

McDermott Will & Emery

Remedies as Big as Your Bamba

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Following the district court’s finding of trademark infringement on summary judgment, the US Court of Appeals for the Sixth Circuit affirmed the district court’s subsequent award of profits, costs and attorneys’ fees in favor...more

McDermott Will & Emery

Don’t Ruin Today’s CNS with Yesterday’s Problems

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The US Court of Appeals for the Fifth Circuit reversed a district court’s trademark invalidity finding based on lack of subject matter jurisdiction because a covenant not to sue (CNS) issued by the trademark owner precluded...more

Seyfarth Shaw LLP

Courts and Brand Owners Struggling With SCOTUS Decision Limiting Ability to Police Against Foreign Trademark Infringement

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The U.S. Supreme Court’s end-of-term decision in Abitron v. Hetronic seems to have created more questions than answers about U.S. brand owners’ ability to leverage the federal Lanham Act in global trademark disputes. In the...more

McDermott Will & Emery

Burst That Bubble: Specific Knowledge Necessary to Prove Contributory Trademark Infringement

The US Court of Appeals for the Ninth Circuit addressed contributory trademark infringement for the first time, finding that specific knowledge is required for liability to attach. Y.Y.G.M. SA, DBA Brandy Melville v....more

Woods Rogers

What Barbenheimer Can Teach Us About Intellectual Property

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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

Buckingham, Doolittle & Burroughs, LLC

U.S. Businesses Need Foreign Trademark Registrations in the Wake of Abitron

U.S. businesses selling abroad cannot enforce domestic trademarks against foreign entities selling infringing goods into the United States through strawmen, according to a recent ruling by the U.S. Supreme Court in...more

Sullivan & Worcester

Supreme Court Rules U.S. Trademark Law Does Not Apply to Foreign Conduct

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On June 29, 2023, in Abitron Austria GmbH v. Hetronic International, Inc., the U.S. Supreme Court ruled that the Lanham Act does not have an extraterritorial scope and applies only in cases where the alleged infringing “use...more

Skadden, Arps, Slate, Meagher & Flom LLP

Supreme Court Holds Lanham Act Attaches Only to Liability for Domestic Uses in Commerce

On June 29, 2023, the U.S. Supreme Court ruled unanimously in favor of the petitioner in Abitron Austria GmbH v. Hetronic International Inc. However, the justices were divided 5-4 as to the precise reasoning and what facts...more

Jenner & Block

Supreme Court Hears Oral Argument over Extraterritorial Reach of U.S. Trademark Law

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On March 21, the United States Supreme Court heard oral arguments in Abitron Austria GmbH v. Hetronic International, Inc. over whether the infringement provisions of the United States Trademark Act impose liability for...more

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