Trademarks, Jurisdiction

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

A&O Shearman on 11/11/2024

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

When Are Pending Trademark Applications Subject to Court Review?

Kohrman Jackson & Krantz LLP on 11/4/2024

Generally, third parties who believe they may be harmed by a trademark registration can challenge a USPTO trademark application through the Trademark Trial and Appeal Board. However, do third parties have another avenue in...more

K&C Sports & Entertainment Law Weekly Roundup - October 2024 #2

Kaufman & Canoles on 10/8/2024

Surinamese sprinter Issamade Asinga sued the Gatorade Company on Wednesday, alleging his recent doping ban was the result of eating contaminated “recovery gummies” that the brand manufactured and provided....more

U.S. Isn’t Everything – The Importance for U.S. Entities to Obtain Trademark Protection Abroad (Yes, that includes Canada)

Seyfarth Shaw LLP on 6/11/2024

The author of the lyrics for Canada’s national anthem, “O Canada,” probably didn’t have trademarks in mind when he wrote “we stand on guard for thee.” But a recent trademark infringement win for a Maryland-based U.S....more

Supreme Court Asked to Clarify Activities that Give Rise to Specific Personal Jurisdiction

Snell & Wilmer on 5/8/2024

In Impossible X LLC v. Impossible Foods Inc., Impossible Foods recently filed an opposition to Impossible X’s petition for certiorari, which asks the Supreme Court to decide (1) whether some disputes should require so-called...more

Can Your Trademark Be False Advertising?

BakerHostetler on 4/3/2024

At the National Advising Division (NAD), competitors will sometimes go for the brass ring, the big prize, the whole enchilada, and ask the NAD to recommend that an advertiser’s trademarked slogan or even the brand name be...more

Top ten considerations for creating an effective anti-counterfeiting program

Smart & Biggar on 11/16/2023

A key component of any effective brand protection strategy is an anti-counterfeiting program. How can a brand owner protect its reputation and rights against counterfeiters, infringers and pirates? The answer will depend not...more

This Week At The Ninth: Justiciability of Trademark Disputes

Morrison & Foerster LLP - Left Coast Appeals on 2/13/2023

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/8/2023

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Your Gang Did What!? No Matter—No Forfeiture of IP

McDermott Will & Emery on 1/27/2023

In a unique case blending intellectual property and criminal law, the US Court of Appeals for the Ninth Circuit agreed that a district court properly exercised jurisdiction over a motorcycle club and upheld the lower court’s...more

MarkIt to Market® - June 2022

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 6/22/2022

[co-author: Ivy Attenborough, Summer Associate] Thank you for reading the June 2022 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss the differences between Copyright Claims Board and federal...more

How Far Can Injunctions Go? Part II: The Extraterritorial Reach of Trademark Injunctions from U.S. to Europe

Dorsey & Whitney LLP on 3/8/2022

In our last post on extraterritorial injunctions, we examined a recent decision from Hong Kong and how a brand owner was able to successfully enjoin infringers in mainland China. We will now look at a recent case in the U.S....more

The Basics of TTAB Oppositions

Fish & Richardson on 11/12/2021

Another person or entity has applied for a trademark at the United States Patent and Trademark Office (the “USPTO”) that is similar to your trademark. What can you do? One option is to institute an opposition with the...more

The Third Circuit Limits Preclusive Effect of the TTAB Rulings

Akerman LLP - Marks, Works & Secrets on 9/29/2021

On September 17, 2021, the Third Circuit held in Beasley v. Howard that trademark cancellation proceedings before the Trademark Trial and Appeal Board (“TTAB”) do not have claim preclusive effect against trademark...more

The Road Less Travelled: Why Arbitration is an Increasingly Attractive Alternative for Resolving IP Disputes

Mintz - Arbitration, Mediation, ADR... on 9/27/2021

Holders of IP rights, including patents, copyrights, trademarks, and trade secrets, have traditionally filed IP-related disputes in court, and there’s no question that court litigation will continue to be the most popular...more

Ninth Circuit Still Signals Shift in Arbitration Landscape for Non-Signatories

McDermott Will & Emery on 7/15/2021

In a decision substantively the same as the now-withdrawn opinion entered on January 20, 2021, the US Court of Appeals for the Ninth Circuit once again affirmed denial of a non-signatory’s motion to compel arbitration. Setty...more

Cease and Desist Letters Need to Balance Effectiveness While Considering Consequences

Ladas & Parry LLP on 7/14/2021

Letters demanding that a company “cease and desist” what the sender of the letter deems an infringement of the sender’s intellectual property rights – whether patent, trademark or copyright – are communications primarily to...more

MarkIt to Market® - March 2021

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 4/5/2021

The March 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses fair use cases for photographs and three recent developments in the cannabis space. We also highlight recent accolades earned by Sterne Kessler's...more

The Franchise Memorandum - Issue # 263

Lathrop GPM on 3/11/2021

Illinois Federal Court Excludes Plaintiffs’ Expert Testimony on Certification Motion in Anti-Poaching Class Action - A federal court in Illinois granted Jimmy John’s motion to exclude expert testimony of a putative class...more

In Setty, Ninth Circuit Signals Shift in Arbitration Landscape for Non-Signatories

McDermott Will & Emery on 2/4/2021

The US Court of Appeals for the Ninth Circuit tackled the question of whether non-signatories to an agreement may use state law doctrines to compel arbitration. Holding that the claims were insufficiently “intertwined” to...more

Dorsey & Whitney LLP on 11/5/2020

In recent years, commentators have discussed patent venue ad nasuem in the run-up to and following the Supreme Court’s 2017 decision in TC Heartland. In a nutshell: after TC Heartland restricted the circumstances under which...more

The Long Arm of American Enforcement: How Companies Without U.S. Operations Can Still Find Themselves Facing U.S. Law and...

Foley & Lardner LLP on 6/2/2020

...Think your company and its employees are beyond the reach of U.S. authorities? Maybe you don’t have U.S. operations there, or your company isn’t publicly traded on a U.S. stock exchange. Perhaps you don’t directly sell or...more

Trademarks › Jurisdiction