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Intellectual Property Protection Likelihood of Confusion Corporate Counsel

Jones Day

UK Supreme Court Holds Post-Sale Confusion is Relevant for Establishing Trade Mark Infringement

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The Court ruled that the post-sale context can be relevant when establishing similarity between trade marks....more

Troutman Pepper Locke

Trademark Case Shows Infringement Is Often in the Eye of the Beholder — Federal Court Rules in Favor of Beauty Company’s “Dupe”...

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Conventional notions of trademark law suggest that emulating a popular product or service carries certain legal risks. However, a recent federal ruling highlights the complexities of trademark infringement cases involving...more

Katten Muchin Rosenman LLP

No Confusion From Keywords: Federal Courts of Appeals Help Defendants Facing Trademark Suits on Paid Search - Kattison Avenue |...

In October 2024, both the US Courts of Appeals for the Second and Ninth Circuits issued published decisions that rejected trademark infringement claims based on advertising in keyword searches. While not precedent-breaking,...more

Fenwick & West LLP

Federal Circuit Turns the Burden on Trademark Owners to Prove Identical Third-Party Marks Are Not in Use

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In Spireon, Inc. v. Flex Ltd., No. 2022-1578 (Fed. Cir. June 26, 2023), the Federal Circuit took a surprising turn in which it held that it is the trademark owner’s burden to prove that identical third-party marks put forth...more

Cadwalader, Wickersham & Taft LLP

Intellectual Property Law: Looking Forward to 2023

With the continuing advancements of cutting-edge technologies — such as genome editing (CRISPR) and Non-Fungible Tokens (NFTs) — U.S. courts will have a full docket of challenging IP cases throughout 2023. Below are some of...more

Sunstein LLP

The Long Arm of Trademark Law: Where do we draw the line?

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Can a United States court really award tens of millions of dollars in damages for violation of US trademark law under the Lanham Act where the conduct at issue did not even take place in the United States? According to a...more

Smart & Biggar

Canadian Trademark Law 2021: A Year in Review

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2021 offered many lessons to Canadian trademark owners including: reminders of the challenges of enforcing inherently weak trademarks and the importance and benefits of registering IP rights at the Canadian border. As well,...more

Dorsey & Whitney LLP

Adidas’ All-In Dispute with Church Sheds Light on Trademark Abandonment and Failure to Function as a Trademark

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In 2005, Christian Faith Fellowship Church, a Chicago-based church group, filed two trademark applications for the mark ADD A ZERO for use on clothing, including shirts and caps that they later sold to raise money for...more

Akin Gump Strauss Hauer & Feld LLP

The Federal Circuit Vacates and Remands An International Trade Commission Final Determination in A Trademark-Based Investigation

• The Federal Circuit issued a rare precedential decision in an appeal from a trademark- and trade dress-based ITC investigation. • In its decision, the Federal Circuit reiterated that the act of trademark registration does...more

Fenwick & West LLP

The Ninth Circuit Writes the Script on Pleading and Proving Reverse Confusion Claims

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The U.S. Court of Appeals for the Ninth Circuit clarified the requirements for pleading and establishing a trademark infringement claim under a “reverse confusion” theory in Marketquest Group v. BIC, Case No. 15-55755 (9th...more

Fenwick & West LLP

Can Internet Comments and Search Results Prove Trademark Infringement?

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You’ve selected a unique trademark, marketed and sold products under the brand, and continue to build up a base of satisfied customers. But then a new company emerges with a very similar trademark, piggybacking on your...more

Dorsey & Whitney LLP

Is Evidence of Confusion Really Necessary to Succeed in a Trademark Infringement Case?

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It is not every day that a massive international TV hit show is found to infringe a trade mark. A decision of the English High Court, approved recently by the Court of Appeal, held that the popular 20th Century Fox teenage...more

Proskauer Rose LLP

Trademark Practitioners Beware: Issue Preclusion May Now Apply to TTAB Findings More Often Than You Think

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Trademark owners and practitioners who took heart in the Supreme Court's seemingly confined holding that issue preclusion can but does not necessarily apply to likelihood of confusion determinations by the Trademark Trial and...more

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