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Corporate Counsel Appeals Lanham Act

Clark Hill PLC

9th Circuit panel upholds geographical limitation on trademark infringement damages as to U.S.-made products marketed and sold...

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The Lanham Act is a collection of federal statutes that allows trademark owners the right to sue and recover damages from those who infringe their trademark by marketing and selling similar products under a brand name that...more

Fish & Richardson

No Space at the Trademark Office for US SPACE FORCE

Fish & Richardson on

In a rare precedential decision involving Section 2(a) of the Lanham Act, the U.S. Court of Appeals for the Federal Circuit recently upheld a denial by the Trademark Trial and Appeal Board (TTAB) of applications filed for US...more

Harris Beach Murtha PLLC

Fourth Circuit Confirms: Physical Distance Does Not Avoid Trademark Confusion

The Fourth Circuit Court of Appeals recently issued a decision confirming that using similar names for businesses in the same industry can result in a likelihood of confusion despite the physical distance of the entities. In...more

McDermott Will & Schulte

Dolly Pardon: American Girl Can Sue Foreign Counterfeiter for Internet Sales

The US Court of Appeals for the Second Circuit clarified its standards for establishing personal jurisdiction over foreign defendants that conduct business over the internet. American Girl, LLC v. Zembrka, DBA...more

McDermott Will & Schulte

Foreign Sales to Foreign Customers Are Not Actionable Under the Lanham Act

Issuing a revised opinion following the Supreme Court’s 2023 decision in Abitron Austria GmbH v. Hetronic Int’l, Inc., the US Court of Appeals for the Tenth Circuit determined that none of the defendant’s purely foreign sales...more

Proskauer - Minding Your Business

Ninth Circuit Provides Further Guidance on Trademark Lawsuits Involving “Expressive Works”

We previously discussed the United States Supreme Court’s June 2023 Jack Daniel’s Properties, Inc. v. VIP Products, LLC decision, which altered the way the “Rogers test,” a doctrine designed to protect First Amendment...more

McDermott Will & Schulte

Court Uncorks New Way to Serve Trademark Complaints

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The US Court of Appeals for the Ninth Circuit concluded that Section 1051(e) of the Lanham Act permits a plaintiff in a district court case to serve a complaint against a foreign defendant via the Director of the US Patent &...more

McDermott Will & Schulte

First Sale Defense Bars Trademark Infringement Where Trademarked Component Is Adequately Disclosed

A US Court of Appeals for the Ninth Circuit panel vacated a grant of summary judgment in favor of the plaintiff, holding that the first sale doctrine applies when a trademarked product is incorporated into a new product....more

McDermott Will & Schulte

“TRUMP TOO SMALL” Trademark Decision Leaves Big Questions

Revisiting jurisprudence touching on the Lanham Act and the First Amendment from the Supreme Court’s decisions in Matal v. Tam and Iancu v. Brunetti, the US Court of Appeals for the Federal Circuit held that applying Sec....more

McDermott Will & Schulte

TTAB Judicial Appointments are Determined Constitutionally Sound

Addressing for the first time whether the Supreme Court of the United States’ recent decision in United States v. Arthrex, Inc. also applied to the Trademark Trial and Appeal Board (TTAB), the US Court of Appeals for the...more

McDermott Will & Schulte

10th Circuit Falls into Line on Exceptionality Doctrine in Lanham Act Cases

Addressing whether the term “exceptional case” in the Patent Act differs in meaning from the same term used in the Lanham Act, the US Court of Appeals for the 10th Circuit upheld an award of attorneys’ fees granted under a...more

Ervin Cohen & Jessup LLP

Can Product Reviews Be Subject To Lanham Act Liability?

On January 22, 2021, a divided Ninth Circuit panel ruled that a nutritional guide could constitute commercial speech subject to the Lanham Act. The Lanham Act is best known for being the primary federal trademark statute...more

McDermott Will & Schulte

Eye Don’t: No Counterfeiting Without Likelihood of Confusion

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Referring to the act of counterfeiting as “hard core” or “first degree” trademark infringement, the US Court of Appeals for the Ninth Circuit for the first time confirmed that the Lanham Act requires a likelihood of confusion...more

Mintz - Trademark & Copyright Viewpoints

US Supreme Court Holds That Trademark Owners Need Not Prove Willful Infringement To Seek An Infringer’s Profits

In a unanimous decision, the US Supreme Court held that a trademark owner need not prove willful infringement in order to seek lost profits from a trademark infringer. The case, Romag Fasteners Inc. v. Fossil Inc. et al.,...more

Womble Bond Dickinson

Supreme Court to Settle Standard for Obtaining Trademark Infringer’s Profits

Womble Bond Dickinson on

Trademark infringement plaintiffs have long argued that because actual damages in trademark infringement cases are often difficult to measure, receiving a cut of an infringer’s profits is in many cases the only meaningful...more

Snell & Wilmer

Supreme Court to Decide Two Trademark Cases

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The Supreme Court of the United States recently granted certiorari in two trademark cases. In Romag Fasteners v. Fossil, the Court will consider whether courts can order trademark infringers to disgorge their profits without...more

UB Greensfelder LLP

Walmart Burned by the Jury in Trademark Infringement Suit

UB Greensfelder LLP on

Earlier this month, a federal jury in North Carolina hit Walmart with a $95.5 million verdict for its willful infringement of Variety Stores, Inc.’s “BACKYARD” trademarks. The jury awarded $45.5 million as a reasonable...more

McDermott Will & Schulte

Second Circuit Joins Majority in Applying Octane Fitness to Lanham Act

In a fight involving sales of mattresses and alleged trash talking pertaining to those mattresses, the US Court of Appeals for the Second Circuit joined the Third, Fourth, Fifth, Sixth, Ninth and Federal Circuits in holding...more

Jones Day

Standing to Enforce Foreign Trademark Rights After Belmora v. Bayer Certiorari Denial

Jones Day on

On February 27, 2017, the Supreme Court of the United States denied certiorari in Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016), cert. denied, __ S. Ct. __, 2017 WL 737826 (U.S. Feb. 27, 2017) (No....more

Fenwick & West LLP

Litigation Alert: In Louis Vuitton Trademark Suit, Second Circuit Says Parody Prevails Even if Brand Owner Doesn’t “Get” the Joke

Fenwick & West LLP on

The U.S. Court of Appeals for the Second Circuit recently affirmed the Southern District of New York’s order on summary judgment that My Other Bag’s canvas tote bags do not dilute or infringe Louis Vuitton’s trademarks for...more

Snell & Wilmer

Octane Fitness and Highmark Apply to Ninth Circuit Attorney Fee Awards under the Lanham Act

Snell & Wilmer on

On October 24, 2016, the Ninth Circuit Court of Appeals, sitting en banc, held that district courts analyzing a request for attorney fees under the Lanham Act should consider the totality of the circumstances, as set forth in...more

McDermott Will & Schulte

Trader Woes: Lanham Act Applies Extraterritorially to Canadian Resale of US Grocery Chain’s Products

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A recent case from the US Court of Appeals for the Ninth Circuit illustrates how the Lanham Act may be applied extraterritorially to foreign activities that affect US commerce. Trader Joe’s v. Michael Norman Hallatt, Case No....more

Dorsey & Whitney LLP

Federal Judge vs. TTAB – Trademark Battle over Bear Bryant’s Houndstooth Hat

Dorsey & Whitney LLP on

The case of The Board of Trustees of the University of Alabama and Paul W. Bryant, Jr. v. Houndstooth Mafia Enterprises LLC et al. showcases an unusual clash between a federal judge and the Trademark Trial and Appeal Board...more

Proskauer Rose LLP

Third Circuit Rejects Presumption of Irreparable Harm for Injunctive Relief under Lanham Act

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Following a series of recent appellate decisions across the spectrum of intellectual property disciplines, including the fields of patent, copyright and trade secrets, the Court of Appeals for the Third Circuit has ruled that...more

Sheppard Mullin Richter & Hampton LLP

Second Circuit Clarifies the Use of Legal Presumptions of Consumer Confusion and Injury in Certain Lanham Act Cases

On Tuesday, July 29, the United States Court of Appeals for the Second Circuit “clarified certain aspects of [its] false advertising jurisprudence” and held that, where literal falsity and deliberate deception have been...more

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