Addressing for the second time whether the design of a chocolate-dipped, stick-shaped cookie was eligible for trade dress protection, the US Court of Appeals for the Third Circuit held again that the product configuration was...more
2020 was a year like no other, so you’d be forgiven if the year’s biggest headlines in trademark law didn’t quite catch your attention. In 2020, the US Supreme Court shaped trademark jurisprudence through a trio of notable...more
1/22/2021
/ Coronavirus/COVID-19 ,
Counterfeiting ,
Economic Stimulus ,
Electronic Filing ,
Enforcement ,
Fraud ,
Injunctive Relief ,
Lanham Act ,
New Legislation ,
Online Marketplace ,
SCOTUS ,
Trademark Ownership ,
Trademark Registration ,
Trademarks ,
USPTO
Addressing the assessment and application of the DuPont likelihood of confusion factors, the US Court of Appeals for the Federal Circuit upheld the Trademark Trial and Appeal Board’s finding of no likelihood of confusion...more
Addressing the Supreme Court of the United States’ ruling in USPTO v. Booking.com B.V., the US Patent and Trademark Office (PTO) recently issued guidance on the examining procedures for “generic.com terms.” (Examination Guide...more
11/12/2020
/ Acquired Distinctiveness ,
Appeals ,
Booking.com ,
Domain Name Registration ,
Domain Names ,
Generic Marks ,
Lanham Act ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV
The US Court of Appeals for the Third Circuit found that trade dress protection did not extend to the design of a chocolate-dipped, stick-shaped cookie, because the product configuration was useful. Ezaki Glico Kabushiki...more
The US Court of Appeals for the Second Circuit found that the federal Copyright Act preempts a state right of publicity claim when the latter is merely “a thinly disguised effort to exert control over an unauthorized [use of...more
The US Court of Appeals for the Eighth Circuit addressed the copyright protection afforded to an information database and whether comments made to a reporter while litigation was ongoing violated the disparagement clause in a...more
Addressing whether a copyright infringement claim should be dismissed with prejudice where the plaintiff failed to register his copyright prior to filing the lawsuit, the US Court of Appeals for the First Circuit held that...more
Addressing whether a dog toy meant to humorously evoke a bottle of whiskey was entitled to First Amendment protection, the US Court of Appeals for the Ninth Circuit held that the toy was a protectable expressive work. The...more
Pursuant to the temporary authority granted by the CARES Act, the US Copyright Office and the USPTO have announced that they are taking steps to assist those impacted by the coronavirus (COVID-19) pandemic by extending...more
Addressing for the first time the issue of implied copyright sublicenses, the US Court of Appeals for the First Circuit held that where a copyright license provides an unrestricted right to grant sublicenses, a copyright...more
Trademark jurisprudence in 2019 may be best summarized in two words: questions and answers. Decisions handed down at the district court level have teed up key questions that are poised to be answered by the United States...more
Addressing whether the activities of non-exclusive licensees subject the licensor to personal jurisdiction, the US Court of Appeals for the Fifth Circuit held that jurisdiction over the licensees does not extend personal...more
1/3/2020
/ Amended Complaints ,
Appeals ,
Dismissals ,
Forum State ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Jurisdiction ,
Licensees ,
Non-Exclusive License Agreements ,
Personal Jurisdiction ,
Remand ,
Reversal ,
Trademark Infringement ,
Trademarks ,
Unfair Competition ,
Vacated
Addressing for the first time the issue of whether a presumption of irreparable harm should apply in copyright infringement cases, the US Court of Appeals for the Third Circuit held that it did not, aligning the rule for...more
9/13/2019
/ Appeals ,
Copyright ,
Copyright Infringement ,
Copyright Litigation ,
Copyright Ownership ,
Corporate Counsel ,
Injunctive Relief ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Irreparable Harm ,
Preliminary Injunctions ,
Remand ,
Work-For-Hire
Responses to Gender Pay Inequity: A Quick World Tour -
Most major jurisdictions have pay equity laws, but their approach is far from uniform. Global companies need to evaluate compliance with these laws on a...more
9/5/2019
/ Alien Tort Statute ,
Artificial Intelligence ,
Competition ,
EEO-1 ,
Employer Liability Issues ,
Employment Contract ,
Equal Employment Opportunity Commission (EEOC) ,
Equal Pay ,
Foreign Investment ,
Gender Equity ,
International Labor Laws ,
International Tax Issues ,
Wage and Hour
Addressing for the first time whether International Trade Commission (ITC) trademark infringement rulings have a preclusive effect on district court litigation, the US Court of Appeals for the Federal Circuit affirmed the...more
7/10/2019
/ Administrative Law Judge (ALJ) ,
Appeals ,
Claim Preclusion ,
Consent Order ,
Initial Determination (ID) ,
Intellectual Property Protection ,
International Trade Commission (ITC) ,
Likelihood of Confusion ,
Trademark Infringement ,
Trademark Invalidity ,
Trademarks
Addressing—for the second time—the ownership of certain trademarks after sale of the relevant business, the US Court of Appeals for the Fifth Circuit concluded that the trademarks and goodwill associated with a single...more
Addressing the issue of trademark ownership under since-terminated development and commercialization agreements, the US Court of Appeals for the Third Circuit reversed in part and affirmed in part, finding that under a...more
Addressing the proper procedure for electing statutory damages under the Copyright Act, the US Court of Appeals for the Sixth Circuit affirmed the district court, agreeing that the plaintiff had properly informed the court of...more
Addressing the Trademark Trial and Appeal Board’s (TTAB’s) treatment of certain evidence in its likelihood of confusion analysis, the US Court of Appeals for the Federal Circuit vacated and remanded the TTAB’s dismissal of...more
Addressing the issue of substantial similarity as a matter of law, the US Court of Appeals for the Third Circuit affirmed the district court’s dismissal of a copyright infringement case against the creator of the television...more
Addressing a fishing boat company’s claim for trade dress infringement and misappropriation of trade secrets, the US Court of Appeals for the 11th Circuit affirmed a grant of summary judgment for the defendant, a rival...more
The US Court of Appeals for the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision to cancel a registration after the TTAB refused to consider the registrant’s reply brief and the evidence included in...more
Addressing the proper analysis for awarding attorneys’ fees and costs under the Copyright Act in the wake of the Supreme Court of the United States’ ruling in Kirtsaeng v. John Wiley & Sons, the US Court of Appeals for the...more
Addressing the evidentiary standard for irreparable harm in a Lanham Act case, the US Court of Appeals for the Ninth Circuit affirmed the district court’s grant of a preliminary injunction preventing a sneaker company from...more