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Appeals Intellectual Property Litigation Trademark Litigation

McDermott Will & Emery

It’s not monkey business: NFTs can be trademarked

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The US Court of Appeals for the Ninth Circuit concluded that a non-fungible token (NFT) is a “good” under the Lanham Act but reversed the district court’s grant of summary judgment for trademark infringement because the owner...more

Ladas & Parry LLP

Federal Circuit: it’s not easy being green for colour marks

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Legal updates: case law analysis and intelligence - - The TTAB, applying the Milwaukee test, rejected an application for a dark green colour mark for medical gloves on the ground that it was generic - The Federal Circuit...more

McDermott Will & Emery

Victory lap: Extraterritorial injunction permitted for breach of settlement agreement

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The US Court of Appeals for the Fourth Circuit upheld a permanent injunction, concluding that the district court properly determined that a party’s violation of a settlement agreement would lead to irreparable harm. Wudi...more

International Lawyers Network

Major Setback for Tiktok’s Trademark Rights in India

The Bombay High Court recently affirmed the order of the Registrar of Trade Marks whereby TikTok’s application for declaration of its mark as well-known in India was disallowed. Interestingly, this decision (by the Bombay...more

McDermott Will & Emery

Jurisdiction Affirmed: Trademark Ripples Reach US Shores

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Addressing for the first time the issue of whether a foreign intellectual property holding company is subject to personal jurisdiction in the United States, the US Court of Appeals for the Eleventh Circuit reversed a district...more

Mayer Brown

Lost in Translation: The Doctrine of Foreign Equivalents in Trademark Law

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In this episode of The Upper Brand, Kristine Young and Rich Assmus discuss the recent Federal Circuit case regarding the doctrine of foreign equivalents in trademark law. They explore the concepts of descriptiveness and...more

McDermott Will & Emery

No Fairytale Ending for Consumer Opposition: RAPUNZEL Reinforces Lexmark Standing Limits

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The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s dismissal of a trademark opposition brought by a consumer, holding that mere consumer interest is insufficient to establish...more

Fenwick & West LLP

Ninth Circuit Prescribes New Hearing for Damages in AirDoctor Default Judgment

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The plaintiff AirDoctor sued the defendant under the Lanham Act for advertising and selling filters for use in AirDoctor purifiers. While the defendant advertised its filters as “compatible” and “replacements” for the...more

Proskauer - The Patent Playbook

Value and Risk of Overlapping Intellectual Property Protections

A well-orchestrated intellectual property strategy requires carefully and thoughtfully leveraging copyright, trademark, and patent laws, as highlighted by a recent decision handed down by the United Sates Court of Appeals for...more

Fish & Richardson

Federal Circuit Finds Beer Trademark Application Nothing but "Chicken Scratch"

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In yet another recent example of the need for care in establishing a full record when appealing the denial of a trademark application, on April 14, 2025, the U.S. Court of Appeals for the Federal Circuit upheld the denial of...more

McDermott Will & Emery

Royal Play Penalty: No Standing in the End (Zone)

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The US Court of Appeals for the Federal Circuit dismissed an appeal from the Trademark Trial & Appeal Board, finding that the appellant lacked standing because it failed to allege any actual and particularized injury. Michael...more

Knobbe Martens

Fireball Frenzy: When First Registering a Mark, Genericness of a Mark Is Determined at the Time of Registration

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BULLSHINE DISTILLERY LLC v. SAZERAC BRANDS, LLC - Before Moore, Reyna and Taranto. Appeal from the Trademark Trial and Appeal Board. In assessing genericness, the TTAB considers how the mark was understood at the time of...more

McDermott Will & Emery

Opposers Beware: Your Own Mark May Not Be Protectable

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The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s dismissal of an opposition to the registration of the marks IVOTERS and IVOTERS.COM while also noting that the US Patent &...more

Knobbe Martens

Traffix Jam – Technical Functionality Prevents Trademark Protection for the Color Pink

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CERAMTEC GMBH v. COORSTEK BIOCERAMICS LLC - Before Lourie, Taranto, and Stark.  Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. A utility patent may still be considered strong...more

Knobbe Martens

Zoned Out: The Zone of Natural Expansion Doctrine Can Only Be Used Defensively

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DOLLAR FINANCIAL GROUP, INC. v. BRITTEX FINANCIAL, INC. [OPINION] - Before Prost, Taranto, and Hughes.  Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. The zone of natural...more

Akin Gump Strauss Hauer & Feld LLP

US Supreme Court: 'Defendant’s Profits' Are Limited to Named Defendants Under the Lanham Act

Under the Lanham Act, a plaintiff who prevails on a trademark infringement claim may be entitled to recover the “defendant’s profits” as damages. The Supreme Court in Dewberry Group, Inc. v. Dewberry Engineers Inc....more

McDermott Will & Emery

No Bull: Historically Generic Term Can Become Non-Generic

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The US Court of Appeals for the Federal Circuit affirmed Trademark Trial & Appeal Board rulings, finding that a previously generic term was not generic at the time registration was sought because at that time the mark, as...more

Irwin IP LLP

Time To “Dew” It Again. 

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Dewberry Group, Inc., FKA Dewberry Capital Corp v. Dewberry Engineers Inc., No. 23-900, 604 U.S. (2025) - On February 26, 2025, the United States Supreme Court unanimously overturned a $43 million damages award arising out...more

Sunstein LLP

Trademarks & The First Amendment Webinar Recap

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At our webinar, "Trademarks & The First Amendment," featuring litigators Lisa Tittemore and Katherine Soule, we promised to provide an update regarding the status of the injunction in the VIP Products v. Jack Daniel’s case....more

Mintz - Intellectual Property Viewpoints

Whose Profits Are These, Anyway? Who Constitutes The Defendant For Purposes of Disgorgement Of Profits In A Trademark Infringement...

In a unanimous (and unsurprising) decision on Wednesday, the Supreme Court vacated an award of nearly $43 million in disgorged profits to a trademark infringement plaintiff because those profits were not attributable to the...more

Coblentz Patch Duffy & Bass

Only the Defendant’s Profits Are Recoverable: Supreme Court Vacates Nearly $43 Million Trademark Infringement Award that...

Key Takeaways - A plaintiff prevailing in a trademark infringement suit is often entitled to an award of the “defendant’s profits.” 15 U.S.C. §1117(a)....more

Fenwick & West LLP

SCOTUS Stands by Corporate Separateness, Overturns Nearly $43M Award in Trademark Dispute

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The Supreme Court on February 26, 2025, overturned a nearly $43 million award granted in a decades long trademark dispute between two real estate companies. The unanimous ruling emphasized that under the Lanham Act section...more

Dorsey & Whitney LLP

SCOTUS Holds Affiliate Profits Not Available Under One Lanham Act Provision, But Leaves Door Open for Other Theories

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The United States Supreme Court issued a unanimous decision in Dewberry Group, Inc. v. Dewberry Engineers Inc., vacating a nearly $43 million profits award and remanding the case for further consideration. The Court concluded...more

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

Supreme Court Overturns Nearly $43 Million Trademark Infringement Award Based on Section 35 of the Lanham Act

The U.S. Supreme Court’s opinion in the Dewberry Group, Inc. v. Dewberry Engineers Inc. case was released Wednesday. In a unanimous opinion, the Court found that Section 35 of the Lanham Act, which provides that a plaintiff...more

Venable LLP

Out of the Doghouse? Jack Daniel's Marks Tarnished but Not Infringed by Bad Spaniels Toy

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On January 23, 2025, the United States District Court for the District of Arizona issued a final decision ending the intensely disputed, decade-long litigation between Jack Daniel's Properties, Inc. and VIP Products LLC....more

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