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Jurisdiction Trademarks

Morgan Lewis

EU General Court Affirms English Trade Marks Must Pass A1–A2 Bar

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In Karneolis LTD v. EU Intellectual Property Office and Match Group LLC,[1] the EU General Court ruled in favour of Match Group LLC, the dating app conglomerate that owns and operates, among others, Tinder, Hinge, and...more

Clark Hill PLC

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

Clark Hill PLC on

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

Jenner & Block

Two Years After Abitron: Navigating the Limits of US Trademark Enforcement Abroad

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Two years after the US Supreme Court’s decision in Abitron Austria GmbH v. Hetronic International, Inc., US trademark owners and global businesses continue to grapple with its implications for cross-border enforcement. The...more

McDermott Will & Schulte

Jurisdiction Affirmed: Trademark Ripples Reach US Shores

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

Farella Braun + Martel LLP

In Limited Cases, Foreign Trademarks Can Affect U.S. Registration Rights

It is a basic tenet of trademark law that rights are jurisdictional. Trademark owners only have rights in the mark in the jurisdictions in which they have registered (or, in some cases, used) the mark....more

McGlinchey Stafford

The #1 Reason to Register Your Trademark

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There are many valuable benefits of registering one’s trademark with the United States Patent and Trademark Office (USPTO). A cursory Internet search will yield dozens of articles on the “Top 10” or “Top 5” reasons to...more

Baker Botts L.L.P.

When Can District Courts Cancel Trademark Applications?

Baker Botts L.L.P. on

Courts are divided on whether their power to order the cancellation of trademark registrations extends to still pending trademark applications under review by the United States Patent and Trademark Office (USPTO). The Ninth...more

Jones Day

CJEU Grants Jurisdiction Over Foreign IP Infringement Cases

Jones Day on

The Court of Justice of the European Union ("CJEU") issued a landmark decision on February 25, 2025, in the case of BSH Hausgeräte GmbH v. Electrolux AB. The ruling extends the jurisdiction of EU courts to adjudicate...more

Fish & Richardson

USPTO Kicks “Hijacker” of Foreign Trademark Out the Door

Fish & Richardson on

When, if ever, is it okay to use a trademark in U.S. commerce that is identical to another company’s mark used outside the U.S.? Courts have struggled with this issue for years, and the U.S. Patent and Trademark Office...more

A&O Shearman

Crowd control caution: how a crowded market may affect your trade mark protection

A&O Shearman on

The Court of Appeal has confirmed that the existence of a “crowded market” and any coexistence terms entered into by parties may be relevant factors in assessing likelihood of confusion. While the Lifestyle Equities v Royal...more

Kohrman Jackson & Krantz LLP

When Are Pending Trademark Applications Subject to Court Review?

Generally, third parties who believe they may be harmed by a trademark registration can challenge a USPTO trademark application through the Trademark Trial and Appeal Board. However, do third parties have another avenue in...more

Kaufman & Canoles

K&C Sports & Entertainment Law Weekly Roundup - October 2024 #2

Kaufman & Canoles on

Surinamese sprinter Issamade Asinga sued the Gatorade Company on Wednesday, alleging his recent doping ban was the result of eating contaminated “recovery gummies” that the brand manufactured and provided....more

Seyfarth Shaw LLP

U.S. Isn’t Everything – The Importance for U.S. Entities to Obtain Trademark Protection Abroad (Yes, that includes Canada)

Seyfarth Shaw LLP on

The author of the lyrics for Canada’s national anthem, “O Canada,” probably didn’t have trademarks in mind when he wrote “we stand on guard for thee.” But a recent trademark infringement win for a Maryland-based U.S....more

Snell & Wilmer

Supreme Court Asked to Clarify Activities that Give Rise to Specific Personal Jurisdiction

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In Impossible X LLC v. Impossible Foods Inc., Impossible Foods recently filed an opposition to Impossible X’s petition for certiorari, which asks the Supreme Court to decide (1) whether some disputes should require so-called...more

BakerHostetler

Can Your Trademark Be False Advertising?

BakerHostetler on

At the National Advising Division (NAD), competitors will sometimes go for the brass ring, the big prize, the whole enchilada, and ask the NAD to recommend that an advertiser’s trademarked slogan or even the brand name be...more

Smart & Biggar

Top ten considerations for creating an effective anti-counterfeiting program

Smart & Biggar on

A key component of any effective brand protection strategy is an anti-counterfeiting program. How can a brand owner protect its reputation and rights against counterfeiters, infringers and pirates? The answer will depend not...more

Morrison & Foerster LLP - Left Coast Appeals

This Week At The Ninth: Justiciability of Trademark Disputes

This week, the Court addresses whether a validity challenge to a trademark remains justiciable after a judgment of non-infringement. The Court holds that the district court lacked Article III jurisdiction to determine...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

McDermott Will & Schulte

Your Gang Did What!? No Matter—No Forfeiture of IP

In a unique case blending intellectual property and criminal law, the US Court of Appeals for the Ninth Circuit agreed that a district court properly exercised jurisdiction over a motorcycle club and upheld the lower court’s...more

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

MarkIt to Market® - June 2022

[co-author: Ivy Attenborough, Summer Associate] Thank you for reading the June 2022 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss the differences between Copyright Claims Board and federal...more

Dorsey & Whitney LLP

How Far Can Injunctions Go? Part II: The Extraterritorial Reach of Trademark Injunctions from U.S. to Europe

Dorsey & Whitney LLP on

In our last post on extraterritorial injunctions, we examined a recent decision from Hong Kong and how a brand owner was able to successfully enjoin infringers in mainland China. We will now look at a recent case in the U.S....more

Fish & Richardson

The Basics of TTAB Oppositions

Fish & Richardson on

Another person or entity has applied for a trademark at the United States Patent and Trademark Office (the “USPTO”) that is similar to your trademark. What can you do? One option is to institute an opposition with the...more

Akerman LLP - Marks, Works & Secrets

The Third Circuit Limits Preclusive Effect of the TTAB Rulings

On September 17, 2021, the Third Circuit held in Beasley v. Howard that trademark cancellation proceedings before the Trademark Trial and Appeal Board (“TTAB”) do not have claim preclusive effect against trademark...more

Mintz - Arbitration, Mediation, ADR...

The Road Less Travelled: Why Arbitration is an Increasingly Attractive Alternative for Resolving IP Disputes

Holders of IP rights, including patents, copyrights, trademarks, and trade secrets, have traditionally filed IP-related disputes in court, and there’s no question that court litigation will continue to be the most popular...more

McDermott Will & Schulte

Ninth Circuit Still Signals Shift in Arbitration Landscape for Non-Signatories

In a decision substantively the same as the now-withdrawn opinion entered on January 20, 2021, the US Court of Appeals for the Ninth Circuit once again affirmed denial of a non-signatory’s motion to compel arbitration. Setty...more

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