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Counterfeiting Trademark Infringement Lanham Act

Troutman Pepper Locke

Is My Guitar Pedal a Klone or a Counterfeit? — No Infringement Intended Podcast

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In this episode, Austin Padgett and Rusty Close venture into the dynamic world of guitar pedals, focusing on the iconic Klon Centaur and its creator's legal showdown with Behringer's Centaur Overdrive. While many Klon...more

Proskauer Rose LLP

Three Point Shot - August 2025

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Nike and Sneaker Customizer Lace Up a Settlement - On June 18, 2025, Nike, Inc. (“Nike”) and Dominic Ciambrone (“Ciambrone”), founder of the shoe customization outfit, The Shoe Surgeon, entered into a confidential...more

McDermott Will & Schulte

Up in Smoke: Statutory Trademark Damages Can Exceed Actual Damages

Addressing a jury’s statutory damages award that surpassed the plaintiffs’ actual damages, the US Court of Appeals for the Eleventh Circuit affirmed the district court’s denial of the defendant’s motion for judgment as a...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

Sheppard Mullin Richter & Hampton LLP

What Lady Whistledown Can Teach Us About Anti-Counterfeiting

Dearest Gentle Reader, it seems that the scandalous allure of counterfeit goods has infiltrated our esteemed society with alarming frequency. Behind the shimmering facade of the finest of marketplaces, whispers abound of...more

McDermott Will & Schulte

Burst That Bubble: Specific Knowledge Necessary to Prove Contributory Trademark Infringement

The US Court of Appeals for the Ninth Circuit addressed contributory trademark infringement for the first time, finding that specific knowledge is required for liability to attach. Y.Y.G.M. SA, DBA Brandy Melville v....more

Womble Bond Dickinson

What’s in a Name? Chicago’s Darvin Furniture & Mattress Claims Trademark Violation in Lawsuit Versus Wayfair

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Darvin Furniture And Appliance Of Orland Park, Inc. V. Wayfair LLC, Case No. 1:23cv4121 (N.D. Illinois, June 27, 2023) Darvin Furniture And Appliance Of Orland Park, Inc., a Chicagoland retailer which does business as Darvin...more

Proskauer Rose LLP

Three Point Shot - November 2022

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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

Morgan Lewis

Jury Finds for Online Marketplace over Atari in Trademark Infringement Case

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In the case, Atari had alleged that Redbubble failed to adequately police its marketplace to remove artist uploads that counterfeited or infringed upon Atari’s trademarks in its logo and other iconic images. As part of its...more

Miller Nash LLP

THC-Infused Candies are All Tricks, No Treats, Says Candy Maker

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Just in time for Halloween, Ferrara Candy Co., owner of popular candy brands such as NERDS, TROLLI, and SWEETARTS, filed infringement suits against companies making and selling cannabis edible versions of their sweet treats....more

Dorsey & Whitney LLP

E-Commerce and Trademark Infringement: OSU Wins a Battle at the Sixth Circuit

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The Ohio State Buckeyes may have lost the college football national championship to Alabama earlier this year but OSU can take some consolation from its recent victory in a trademark case before the Sixth Circuit Court of...more

Jones Day

JONES DAY TALKS®: Women in IP: 2020 in Review and a Look Toward 2021

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Jones Day's Meredith Wilkes and Anna Raimer discuss 2020's most significant developments in trademark law and preview what's to come in 2021, including possible progress in Washington on the highly anticipated Trademark...more

Dorsey & Whitney LLP

9th Circuit: Counterfeiting Claim Requires Court to Evaluate Likelihood of Confusion by Comparing Products as a Whole, Not Just...

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Does the Lanham Act require a plaintiff to show a likelihood of confusion to prevail on a counterfeiting claim? And if so, should the court simply compare the marks at issue, or look beyond them to the products themselves and...more

ArentFox Schiff

Ninth Circuit Says “Eye Dew” to a Likelihood of Confusion Requirement for Counterfeiting Claim

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In 2014, Farmacy Beauty, a New Jersey limited liability company, began to develop a line of skin care products. In 2015, Farmacy began selling its EYE DEW eye cream product after being informed by a copywriter that EYE DEW...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

Morrison & Foerster LLP - Left Coast Appeals

This Week at The Ninth: Counterfeiting and Superfund

This week, we examine a Ninth Circuit decision addressing whether a plaintiff pursuing a Lanham Act counterfeiting claim must demonstrate that consumers were likely to be confused (the answer: yes), and another resolving the...more

Jones Day

Second Circuit Vacates Tiffany's $21 Million Win Over Costco

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The Second Circuit vacates Tiffany's summary judgment win over Costco and remands for a trial over the use of the word "Tiffany" in advertising for engagement rings. On August 17, 2020, in Tiffany & Co. v. Costco Wholesale...more

Troutman Pepper Locke

Diamonds are Forever, but Tiffany’s $21M Trademark Win is Not

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A federal appeals court issued its opinion on August 17th in Tiffany & Co. v. Costco Wholesale Corp., vacating a $21 million judgment against Costco Wholesale Corp. Costco had marketed unbranded diamond engagement rings...more

Haug Partners LLP

Intermediary Liability and Indirect Infringement for Marketplaces in Europe and the United States

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Counterfeiters often act through intermediaries, including online marketplaces, social media companies, and internet service providers (“ISPs”), that may not be aware that their services are being used for infringing...more

ArentFox Schiff

Court Rules Trademark Infringement Enough to Hold Landlord Liable

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Last year, the Eleventh Circuit affirmed a judgment holding that a landlord’s constructive knowledge of its tenant’s trademark infringement is enough to hold the landlord liable. Several years earlier, Arent Fox...more

Jaburg Wilk

Why Register My Trademark? The Benefits of Trademark Registration

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A trademark is a word, name, or symbol used to identify and distinguish a seller’s product from those of others. A trademark is part of a company’s brand. It is the embodiment of the company’s reputation. Over time, a...more

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

Markit to Market - July 2018: Recent Decision in Nike Counterfeiting Case Bad News for Vandelay Industries

We jest! Because, of course, Vandelay Industries – famed import/export company referenced by Seinfeld character George Costanza’s (and owned by the multi-talented “Art Vandelay”) -- is fictitious. But for actual...more

Harris Beach Murtha PLLC

Significant Intellectual Property Trademark Decisions

2017 was a year filled with significant developments in case law for trademarks. The below rulings highlight some successes and obstacles faced by companies in the protection of their trademarks and their brand as a whole. ...more

Proskauer Rose LLP

Three Point Shot - December 2016

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In Partial Trademark Victory over Chinese Sportswear Company, MJ Posterizes Unauthorized User of Chinese Version of His Name - In Game 3 of the first round of the 1991 NBA Eastern Conference playoffs between the New York...more

McDonnell Boehnen Hulbert & Berghoff LLP

Tiffany vs. Costco: Jury Awards Tiffany Substantial Damages for Costco’s Sale of Counterfeit Diamond Rings

In a highly publicized decision of over a year ago, Judge Swain of the U.S. District Court of the Southern District of New York ruled in favor of the luxury retailer Tiffany and Co., deciding that Costco Wholesale Corp., the...more

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