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 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 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 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 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
Addressing for the first time whether attorneys’ fees should be included in an award of costs under Fed. R. Civ. P. 41(d), the US Court of Appeals for the Second Circuit affirmed the district court’s decision to include such...more
Addressing the Trademark Trial and Appeal Board (TTAB) finding that EARNHARDT was not primarily merely a surname, the US Court of Appeals for the Federal Circuit remanded the case to the TTAB to clarify its surname analysis....more
Addressing a dispute over ownership of a service mark between a departing member of a group and the remaining group members, the US Court of Appeals for the Federal Circuit upheld the Trademark Trial and Appeal Board’s...more
Expressly adopting for the first time a test to determine whether a manufacturer or distributor is the owner of an unregistered trademark in the absence of a contractual ownership clause, the US Court of Appeals for the Third...more
Addressing the standard for violating the Lanham Act’s false advertising provisions, the US Court of Appeals for the Fourth Circuit affirmed a district court’s grant of summary judgment for the defendant, finding that the...more
In Depth -
In efforts to enhance the US Patent and Trademark Office (USPTO) electronic filing system and to “assess and promote the accuracy and integrity of the trademark register,” the USPTO has ushered in changes that...more
Addressing a circuit split over a trademark licensee’s rights following a debtor/licensor’s bankruptcy, the US Bankruptcy Appellate Panel (BAP) for the First Circuit held that, although trademarks and trade names are not...more
The Trademark Trial and Appeal Board (TTAB) explained that an applicant’s evidence of a family of marks can be used to help prove acquired distinctiveness for a new member of that family, but held that the applicant failed to...more
Addressing the validity of, and likelihood of confusion between, two data-driven analytic software companies’ “Collective”-formative trademarks, the US Court of Appeals for the Second Circuit disagreed with the district...more