News & Analysis as of

Trademark Registration Declaratory Judgments

Erise IP

What’s Trending in Trademarks, May 2024: Taylor Swift Fans Analyze Latest Trademark Filing; San Francisco Sues Over San Francisco...

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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: Taylor...more

Morrison & Foerster LLP - Left Coast Appeals

This Week At The Ninth: Justiciability of Trademark Disputes

This week, the Court addresses whether a validity challenge to a trademark remains justiciable after a judgment of non-infringement. The Court holds that the district court lacked Article III jurisdiction to determine...more

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

MarkIt to Market® - January 2023: Here It Goes Again: OK Go’s Recent Trademark Dispute Over…Cereal?

In 2006, rock band OK Go released a music video for their song “Here It Goes Again,” which featured the band members running back and forth on four treadmills set up side-by-side in what looks like an unfinished basement. The...more

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

MarkIt to Market® - January 2023

Thank you for reading the January 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss an ongoing trademark dispute between the band OK Go and cereal company Post, how to stay vigilant about...more

Proskauer - Minding Your Business

‘Maybe’ Is Not Enough: Foreign Business Fails to Obtain Declaratory Judgment for Potential Use of Trademark

A foreign business recently failed to prevail in a trademark lawsuit because it could not demonstrate it had immediate plans to commence use of the trademark in the United States. Plaintiff-appellant Abdul Rehman Karim...more

McDermott Will & Emery

In the Pink: Lack of Personal Jurisdiction Results in Dismissal of Non-Infringement Verdict

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Addressing personal jurisdiction in a declaratory judgment action, the US Court of Appeals for the 10th Circuit reversed the district court’s bench trial verdict, finding that the district court lacked specific personal...more

Dorsey & Whitney LLP

Wine Dispute Has No Legs: Trademark Opposition Alone Insufficient to Create a Justiciable Controversy for Declaratory Judgment...

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Two recent decisions from the Western District of North Carolina in Winestore Holdings LLC v. Justin Vineyards & Winery LLC provide a tasting of the requirements for bringing a declaratory judgment action for non-infringement...more

Shutts & Bowen LLP

Do You Need To Threaten Litigation To Trigger Declaratory Judgment Subject Matter Jurisdiction?

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No. Erbaviva, LLC, a California LLC, sent a demand letter to Era Organics, a Florida company. The letter identified a number of Erbaviva federal trademark registrations, and “request[ed]” Era Organics: 1. Request the...more

Dorsey & Whitney LLP

Lanham Act Lesson: Dropbox Drop Kicks Opponent and Scores Attorneys’ Fees Award

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As the sun set on 2016, the 9th Circuit Court of Appeals in Sunearth, Inc. v. Sun Earth Solar Power, Co. embraced a new standard for awarding attorneys’ fees in Lanham Act cases. Adopting the U.S. Supreme Court’s rationale...more

Genova Burns LLC

Bakery's Apple Pie Design is Functional and Inelgible for Trademark Protection, Third Circuit Affirms

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The Third Circuit Court of Appeals affirmed a district court’s determination that the key element of a gourmet bakery’s registered pastry design was functional, and therefore ineligible for trademark protection, in Sweet...more

McDonnell Boehnen Hulbert & Berghoff LLP

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 14, Issue 2 (Spring 2016)

Pre-AIA and Post-AIA Issues Presented by the On-Sale Bar - The “on-sale” bar to patentability refers to a sale or offer for sale of an invention that can invalidate the patent for that invention. The...more

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