Trademarks, Settlement Agreements

Bridal Fashion Label and Designer Straighten Social Media Ruffles in Bankruptcy Deal

Dorsey & Whitney LLP on 5/31/2024

The 2010s were a heyday for bridal fashion. TLC’s “Say Yes to the Dress” reality series captivated viewers watching brides navigate family opinions and emotions while shopping for “the dress” at Kleinfeld’s Bridal in New York...more

Back to the Future: Prior Third-Party Settlement Doesn’t Impact Future Trademark Licensees

McDermott Will & Emery on 9/7/2023

The US Court of Appeals for the Eleventh Circuit ruled that under certain circumstances a trademark licensee can bring a claim against a third party for unfair competition under the Lanham Act even if the licensing agreement...more

Disgorgement of Profits Appropriate Remedy for Breach of Contract, Trademark Infringement

McDermott Will & Emery on 8/25/2023

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

Three Point Shot - November 2022

Proskauer Rose LLP on 11/30/2022

NBA Properties Lands Slam Dunk in Intellectual Property Win Heard Around the Globe - NBA Properties, Inc. (“NBAP”), the exclusive licensee of the National Basketball Association (“NBA”) and NBA teams’ distinctive trademarks,...more

Second Circuit: Trademark Agreements Restricting Keyword Advertising Are Not Anti-Competitive

Fenwick & West LLP on 8/31/2021

In a recent decision, the U.S. Court of Appeals for the Second Circuit clarified the legal standing of trademark settlement agreements and upheld agreements prohibiting a competitor’s use of a trademarked term in keyword...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

Second Circuit Overturns FTC Antitrust Decision Against 1-800-Contacts Involving Trademark Settlement Agreements

Proskauer - Minding Your Business on 6/29/2021

Earlier this month, the Second Circuit overturned a decision by the Federal Trade Commission (the “FTC”) holding 1-800-Contacts violated antitrust law by entering into trademark settlement and related agreements that...more

2nd Circuit Appeals Court Upholds Trademark Settlements As Valid Under Antitrust Law

Cozen O'Connor on 6/23/2021

The Second Circuit’s recent decision in 1-800 Contacts, Inc. v. FTC signals that trademark holders can aggressively enforce their rights and pursue settlements with competitors that are not “inherently suspect” under the...more

Second Circuit Provides Clarity on “Inherently Suspect” Standard, Overturns FTC’s Ruling on 1-800 Contacts Trademark Agreements

Mintz - Trademark & Copyright Viewpoints on 6/22/2021

On June 11, 2021, the U.S. Court of Appeals for the Second Circuit dismissed the Federal Trade Commission’s (FTC) administrative order against 1-800 Contacts, Inc. The Second Circuit found that the online retailer’s trademark...more

School’s Out: Trademark Settlement Agreement Enforceable

McDermott Will & Emery on 4/29/2021

Addressing issues relating to jurisdiction, contract enforceability and trademarks, the US Court of Appeals for the First Circuit concluded that two schools that used similar names had a valid and enforceable settlement...more

Major Development in BCBS Association Antitrust Litigation

Patterson Belknap Webb & Tyler LLP on 12/22/2020

Antitrust litigation has been ongoing for several years in the U.S. District Court for the Northern District of Alabama against one of the biggest business associations in America, the Blue Cross Blue Shield Association...more

The Federal Circuit “OK”s a Questionable Path to Petitioning for Cancellation of a Trademark Registration

Haug Partners LLP on 12/17/2020

In Australian Therapeutic Supplies Pty Ltd. v. Naked TM, LLC, the Federal Circuit recently denied a petition for rehearing en banc of a panel decision finding that a petitioner who contracted away its rights to unregistered...more

IP Litigation Quarterly Update

Miller Canfield on 5/12/2020

Introducing the IP Litigation Quarterly Update, a quarterly newsletter summarizing noteworthy and interesting opinions related to intellectual property law. In this first edition covering the first quarter of 2020, the...more

Jay-Z Has 99 Problems, and...Lack of Diversity Is One

Dorsey & Whitney LLP on 1/23/2020

Jay-Z and Iconix Brand recently settled a two-year old lawsuit centered on a $204 million licensing agreement. The settlement not only ends the federal lawsuit, but also ends an arbitration related to the suit which Jay-Z had...more

MarkIt to Market® - October 2019

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 11/1/2019

The October 2019 issue of Sterne Kessler's MarkIt to Market® newsletter discusses three "lawful use" cannabis trademark decisions, a recent FTC settlement with a cosmetics company, and the USDA's newly issued interim rules...more

Lucky Opening Brief on Cert.: Second Circuit’s Novel “Defense Preclusion” Rule Turns a Blind Eye on Bedrock Preclusion Principles

Akerman LLP - Marks, Works & Secrets on 10/29/2019

In June 2019, the United States Supreme Court granted certiorari in Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., No. 18-1086. As set forth in our prior blog posts, Lucky Brand Dungarees Inc. and related...more

Trademark Practice Tip: How to Settle a Trademark Opposition Proceeding and Obtain Judgment Against the Applicant After an...

Dorsey & Whitney LLP on 9/13/2019

Most opposition proceedings in the Trademark Trial and Appeal Board of the USPTO settle before final judgment, often based on a negotiated settlement agreement requiring the abandonment of the opposed application. In these...more

Supreme Court to Address Whether Claim Preclusion Bars Defendant from Raising Defense Not Litigated or Resolved in Prior Case

McDermott Will & Emery on 8/14/2019

The Supreme Court of the United States granted Lucky Brand’s request to address whether claim preclusion principles bar a defendant from asserting a new defense in a case when the defense could have been raised over previous...more

In Marcel v. Lucky Brands, Two Retail Companies in Long-Running Trademark Dispute Hope to “Get Lucky” at the Supreme Court

Womble Bond Dickinson on 7/18/2019

After years of litigation, two retail companies - Lucky Brand Dungarees, Inc. and Marcel Fashions Group - will have their most recent case heard by the United States Supreme Court. In 2001, Marcel Fashions sued Lucky Brand...more

Will Lucky Get Lucky This Time Around?

Akerman LLP - Marks, Works & Secrets on 7/9/2019

On Friday, June 28, 2019, the U.S. Supreme Court agreed to consider whether, in cases where a plaintiff asserts new claims, federal preclusion principles bar a defendant from raising defenses that were not actually litigated...more

Stirring the Pot: Recent Trademark Infringement Claims from Major Brands In the Cannabis Field

Knobbe Martens on 5/31/2019

What do UPS and TAPATIO hot sauce have in common? Based on recent California Court filings, both companies are serious about protecting their trademarks from infringement by entities in the cannabis space. In 2019, both...more

Design, Designation and Regulatory: Structuring Considerations and Regulatory Due Diligence in EU Food and Beverage Transactions

King & Spalding on 5/9/2019

When structuring and assessing transactions in the food and beverage sector in a European context, a purchaser must consider and evaluate several EU-specific requirements in order to ensure a successful transaction with...more

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