News & Analysis as of

Trademark Infringement Trademark Ownership

DarrowEverett LLP

Super Hero No More: How Marvel and DC Lost Their Trademark on a Genre

DarrowEverett LLP on

I distinctly remember purchasing the Superman/Spiderman team-up when it came out in 1981. It was an oversized comic book, with heavier than usual pages and a vibrant color scheme, and that made it perfect for laying it out on...more

Pillsbury - Propel

Trademark Fundamentals: Likelihood of Confusion

Pillsbury - Propel on

A core concept in trademark law that every startup founder should understand is “likelihood of confusion.” This legal standard plays a pivotal role in both trademark registration and enforcement. It’s essential for protecting...more

Seyfarth Shaw LLP

Bully for You: Cannabis Company Fails to Adequately Plead “Trademark Bullying” Defense Says the TTAB

Seyfarth Shaw LLP on

In a recent precedential decision, the Trademark Trial and Appeal Board (the “Board”) found that Door Dash, Inc. (“Door Dash”) was merely doing what all trademark owners must do—protect their valuable rights. Door Dash, Inc....more

International Lawyers Network

Case Law Update: The Australian Federal Court’s Approach to Non-English Word Trade Marks

In her recent decision in Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCA 138 (Caporaso v Mercato), the Honourable Justice Charlesworth of the Federal Court of Australia has demonstrated how Australian courts...more

Erise IP

What’s Trending in Trademarks, June 2024: Toms Shoes Says Unauthorized Seller is Hurting Its Brand, Supreme Court Passes on...

Erise IP on

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: Toms...more

Sheppard Mullin Richter & Hampton LLP

How to Recover Attorneys’ Fees in a Schedule A Trademark Case in the Northern District of Illinois

In recent years, a substantial number of “Schedule A” trademark infringement cases have been filed in the Northern District of Illinois. In such a case, the trademark owner may file a trademark infringement complaint against...more

Seyfarth Shaw LLP

The Legal Dance Off Over the “MJ” Trademark

Seyfarth Shaw LLP on

Before we start the show, the casts of characters may drive you Off the Wall, so here’s a little primer to help you: Triumph International, Inc. (“Triumph”) is a merchandise licensing company for the estate of Michael...more

Erise IP

What’s Trending in Trademarks, April 2024: Chile/Chili Crunch, Jelly Roll, and Seltzer Sales

Erise IP on

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: David...more

Sheppard Mullin Richter & Hampton LLP

The USPTO and USCO Delivered a Report to Congress on IP Issues with NFTs – Maintains Existing IP Regime

The United States Patent and Trademark Office (“USPTO”) and the United States Copyright Office (“USCO”) delivered a report to Congress entitled Non-Fungible Tokens and Intellectual Property on March 12, 2024 (“Report”). While...more

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

First Sale Doctrine – Not a Get out of Jail Free Card

It is well established that under the First Sale Doctrine luxury resellers have the right to resell genuine, pre-owned goods, and advertise them as such. But does the doctrine give merchants carte blanche in advertising...more

Smart & Biggar

Trademark owners, beware: protecting your brand in the era of trademark scams

Smart & Biggar on

An important component of brand ownership is exercising vigilance against fraudulent practices, such as counterfeiting and trademark pirating. Trademark owners must now also be alert to fraudulent communications from...more

Smart & Biggar

Five New Year resolutions for trademark owners in 2024

Smart & Biggar on

Trying some healthy habits in 2024? Your trademarks want you to do the same! A trademark has value when it is distinct and enforceable. Even registered marks can lose value if proper “trademark hygiene” is not followed...more

Ladas & Parry LLP

False Declaration of Incontestability Not Enough to Cancel US Trademark Registration

Ladas & Parry LLP on

Great Concepts has owned Registration No. 2929764 for DANTANNA’S, in association with “steak and seafood restaurant[s]”, since March 2005. In 2006 Chutter Inc’s predecessor-in-interest, Dan Tana, petitioned to cancel the mark...more

Troutman Pepper

High Stakes: Eight Tips (and One Bonus) for Cannabis Professionals on the Budding World of Trademarks

Troutman Pepper on

Apologies for the cannabis puns in the title, but they are required by law. Okay, you are correct. That is not true. But it is true that trademark protection is important for individuals in the cannabis industry. Earlier this...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

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

MarkIt to Market® - August 2023: How to Lose a Mark in 3 Ways – Part 3: Naked Licensing

Trademarks help brand owners build and communicate their brand’s reputation and value with the relevant public. Once that valuable goodwill is linked between a mark and the owner’s products and services, trademark owners can...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

McDermott Will & Emery

Supreme Court Limits the Lanham Act’s Extraterritorial Reach

McDermott Will & Emery on

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

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

MarkIt to Market® - June 2023

Thank you for reading the June 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we begin a three-part series that closely examines ways to lose trademark rights; share an article that examines the...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

Jones Day

SCOTUS Holds Whiskey-Themed Dog Toy Not Entitled to First Amendment Protection

Jones Day on

In a closely watched trademark infringement case, the Supreme Court of the United States held that when an alleged infringer uses a trademark as a source identifier for the infringer's own products, the First Amendment does...more

Coblentz Patch Duffy & Bass

Supreme Court’s Bad Spaniels Decision Limits Parody Defense to Trademark Infringement

On June 8, 2023, the Supreme Court issued a unanimous decision in Jack Daniel’s Properties, Inc. v. VIP Products, limiting the scope of a parody defense to a trademark infringement claim...more

Seyfarth Shaw LLP

SCOTUS Finds Dog Poop Jokes Reek of Infringement

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The U.S. Supreme Court has unanimously rejected the Ninth Circuit’s opinion that a poop-themed dog toy should be protected as parody under the First Amendment. SCOTUS ruled today in Jack Daniel’s Properties Inc. v. VIP...more

Warner Norcross + Judd

Identifying the Source of Goods and Services Is No Laughing Matter

On June 8, 2023, the United States Supreme Court clarified an important unanswered question about the line between the First Amendment’s freedom of speech and trademark owners’ rights under the Lanham Act. In a unanimous, 9-0...more

Erise IP

Protecting Your House Brand is Paramount: Two Case Studies Show Different Approaches

Erise IP on

Companies may have hundreds of trademarks, but the primary or house mark is the most important and should be the centerpiece of every trademark strategy. Trademark owners take different approaches to brand awareness and...more

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