News & Analysis as of

Trademark Infringement International Trademark Protection Trademarks

Smart & Biggar

[Webinar] Developing a sound global trademark filing strategy: key considerations and best practices - November 21st, 12:00 pm -...

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Join us for an insightful webinar with our trademark experts, who will guide you through the complexities of global trademark filing. Over this 45-minute session, you will learn how to protect and expand your brand...more

Locke Lord LLP

The Madrid Protocol - August 2024

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The United States is a party to the Madrid Protocol, an international treaty simplifying and centralizing the process for registering trademarks on an international basis. This treaty allows owners of U.S. trademark...more

ArentFox Schiff

Making Waves: Navigating the Tide of Artistic Freedom and Trademark Protections in the Vans v. MSCHF Case

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On December 5, 2023, the Second Circuit Court of Appeals issued a precedent-setting decision in favor of the prominent skateboarding footwear and apparel brand, Vans. The decision centered on the satirical art collective...more

Katten Muchin Rosenman LLP

Inside, Outside, USA: Key Developments on the Boundaries of Injunctive Relief in Trademark Disputes - Katten Kattwalk | Issue 26

Does federal trademark law reach conduct outside of the United States? The Supreme Court addressed this question recently in Abitron Austria v. Hetronic International, Inc., which prompted us to revisit a related issue we...more

Tarter Krinsky & Drogin LLP

Search and File, Here and There!

There once was a company named Zotz, Which created toys for tots, It set up abroad, of course! But filing first is KnockOffSource, Can Zotz manufacture? Methink “notz!” First published in Inside magazine, NYSBA, Fall...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - August 2023

Thank you for reading the August 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we conclude our series that explores ways to lose trademark rights with an examination of naked licensing, discuss a...more

McAfee & Taft

SCOTUS rules Lanham Act does not have extraterritorial reach

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In the United States, trademarks are governed on the federal level by the Lanham Act (also known as the Trademark Act of 1946), which was enacted on July 5, 1946, and is codified at 15 U.S.C. § 1051 et seq. The Lanham Act...more

Fenwick & West LLP

A Domesticated Lanham Act: Supreme Court’s Abitron Ruling Opens New Debate on Foreign Reach of U.S. Trademark Law

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The Supreme Court’s June 29, 2023, decision in Abitron Austria GMBH v. Hetronic Int’l, Inc., No. 21-1043, ended decades of circuit splits on the standard for determining the extraterritorial reach of the Lanham Act (see our...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

McDermott Will & Emery

Supreme Court Limits the Lanham Act’s Extraterritorial Reach

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In a decision that may make it more difficult for brand owners to enforce their marks against infringers located outside of the United States, the Supreme Court of the United States vacated the judgment of the US Court of...more

Holland & Knight LLP

U.S. Supreme Court: U.S. Trademark Statute Bars Domestic Infringement Only

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The U.S. Supreme Court issued a decision on June 29, 2023, addressing the scope of federal trademark law on conduct occurring outside of the United States. The case, Abitron Austria GmbH v. Hetronic International, Inc.,...more

Fox Rothschild LLP

U.S. Supreme Court Concludes Federal Trademark Law Cannot Be Applied to Foreign Conduct

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There have been many newsworthy rulings coming out of the Supreme Court in the last two weeks, so it is understandable if you missed this one. On Thursday, June 29, 2023, the U.S. Supreme Court ruled the Tenth Circuit wrongly...more

Baker Donelson

The Supreme Court Draws the Line on the Foreign Reach of the Lanham Act

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On June 29, 2023, the U.S. Supreme Court clarified the geographic limits for U.S. trademark enforcement. Just as with enforcement of registered copyrights and issued patents, the Supreme Court ruled that a trademark owner may...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

White & Case LLP

Supreme Court Reins in Extraterritorial Application of the Lanham Act

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The Supreme Court ruled yesterday that the Lanham Act infringement and unfair competition provisions "are not extraterritorial and that they extend only to claims where the claimed infringing use in commerce is domestic." In...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Supreme Court Vacates and Remands 10th Circuit's Decision in "Abitron"

The US Supreme Court ruled today in the closely watched Abitron Austria GmbH v. Hetronic International, Inc. case, which considered whether a party could recover in US courts for trademark infringement that occurred outside...more

Miller Nash LLP

Supreme Court May Review Trademark Territoriality

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The United States Supreme Court has a new opportunity to look at whether a U.S. trademark owner can recover damages for infringing uses of the owner’s mark occurring outside the United States....more

Miller Nash LLP

Priority “UNTAMED”: Enforceable Priority in Madrid-Registered Mark Does Not Require Use of Mark Before Infringement Commences,...

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The general rule under U.S. trademark law is that the first to use a trademark in U.S. commerce has priority in the mark over other "would-be" users of the same, or confusingly similar, mark. This applies in both common law...more

Faegre Drinker Biddle & Reath LLP

The Impact on Brands when Trademarks are Used in Military Strategy

Western companies with trademark rights in Russia are feeling the ripple effects of the Ukrainian conflict.  In response to the economic sanctions and boycotts imposed by the U.S. and other Western countries, Russia has...more

Linda Liu & Partners

Build a great wall of trademark protection for your business on China’s e-commerce platforms

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With the increasing protection of IP rights on e-commerce platforms, trademark registrants’ rights are respected and protected. It is difficult to sell counterfeit products on e-commerce platforms. For example, according to...more

Burns & Levinson LLP

Top 4 Trademark Enforcement Tools

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A trademark’s value can be lost or weakened or a trademark owner fails to protect or police rights in the marketplace. Even improper and/or inconsistent use of a mark can hamper a trademark owner’s ability to enforce...more

Akerman LLP - Marks, Works & Secrets

Cert. Roundup

The American Bar Association (“ABA”) filed an amicus brief with the Supreme Court in support of the petitioner in Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233....more

Hogan Lovells

Shanghai court innovates with punitive damages for trademark infringement: IP owners can aim higher

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The Shanghai Pudong District Court has recently handed down a remarkable judgment, awarding punitive damages equal to 3 times the proven damages to a foreign sportswear company, and fully upheld the company's claim for RMB 3...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - July 2019: Happy 30th Madrid Protocol - My How You've Grown!

July 27, 2019 marked the 30th anniversary of the adoption of the Madrid Protocol – the centralized system for registering and managing trademarks worldwide. The Madrid system is administered by the International Bureau of the...more

Perkins Coie

China’s National Legislature Advances Changes to Trademark Law

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The Standing Committee of the National People’s Congress (NPC) announced amendments to the Trademark Law of the People’s Republic of China (PRC Trademark Law) on April 23, 2019. The amendments apply to six articles of the PRC...more

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