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Lanham Act Corporate Counsel Trademark Litigation

Fish & Richardson

No Space at the Trademark Office for US SPACE FORCE

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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

Seyfarth Shaw LLP

Bully for You: Cannabis Company Fails to Adequately Plead “Trademark Bullying” Defense Says the TTAB

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In a recent precedential decision, the Trademark Trial and Appeal Board (the “Board”) found that Door Dash, Inc. (“Door Dash”) was merely doing what all trademark owners must do—protect their valuable rights. Door Dash, Inc....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

Irwin IP LLP

Not Just One Size Fits All in Brandy Melville Decision: Ninth Circuit Opines on a Trio of Trademark First Impressions

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Addressing not one but three matters of first impression, the Ninth Circuit held that willful blindness giving rise to contributory trademark infringement requires a defendant to have specific knowledge of specific infringers...more

Buckingham, Doolittle & Burroughs, LLC

If a Good is not a Good, then a Trademark is not a Trademark

The Trademark Trial and Appeal Board (TTAB) adopted a new rule for evaluating whether non-syndicated news columns are “goods in trade” under the Lanham Act in In re The New York Times Company, a precedential opinion issued on...more

McDermott Will & Emery

2023 IP Outlook: Trademark and Copyright Supreme Court Update

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Three interesting intellectual property cases are on the Supreme Court of the United States’ docket in 2023. The Supreme Court’s opinions in these cases could have significant implications for trademark and copyright disputes...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

McDermott Will & Emery

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 & Emery

“TRUMP TOO SMALL” Trademark Decision Leaves Big Questions

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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

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

McDermott Will & Emery

TTAB Judicial Appointments are Determined Constitutionally Sound

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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 & Emery

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

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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

Mintz - Trademark & Copyright Viewpoints

The Trademark Modernization Act Establishes New Trademark Cancellation Procedures

On December 27, 2020, the Trademark Modernization Act of 2020 (“the Act”) became law as part of the Consolidated Appropriations Act, 2021. Among other changes, the Act includes important amendments to the Lanham Act...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

Dorsey & Whitney LLP

Court Trims Cannabis Company’s Prior Use Defense Based on Preemption by Federal Trademark Law

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A federal district court has eliminated a cannabis company’s affirmative defense to federal trademark infringement claims based on the company’s prior use of a trademark that was legal under state law but not federal law. The...more

Womble Bond Dickinson

SCOTUS to Consider Awards of Profits in Trademark Infringement Disputes

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Forfeiting profits is a worst-case-scenario for companies accused of trademark infringement. The possibility of turning over profits certainly is a threat that trademark defense teams want to avoid. The United States Supreme...more

BakerHostetler

Who Is Holding the Bag: How Will the Supreme Court Resolve the Circuit Split on Recovery of Profits in Trademark Cases?

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Two weeks from now, on January 14, 2020, the Supreme Court will hear oral argument in Romag Fasteners, Inc. v. Fossil, Inc. on the long-standing circuit split over whether willful infringement is a necessary precondition for...more

Womble Bond Dickinson

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

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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

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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

Dorsey & Whitney LLP

Flawed Consumer Survey Wipes Out $54 Million Verdict in Trademark Infringement Dispute

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In trademark infringement cases, consumer survey evidence can be a powerful tool. It can also badly malfunction, as Black & Decker recently experienced. ...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

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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

Proskauer Rose LLP

Second Circuit Affirms Preliminary Injunction of "Identical" Gray Goods

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Earlier this month in Abbott Laboratories v. Adelphia Supply USA et al, the Second Circuit affirmed a district court's grant of a preliminary injunction halting the alleged sale of gray-good diabetes test strips made by...more

Dorsey & Whitney LLP

Who Should Own a Trademark Registration? The Case of the Not-So-Related Parent Company

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A recent precedential Trademark Trial and Appeal Board decision provides valuable guidance on the proper allocation of trademark registration ownership as between a corporate parent and a subsidiary, highlighting the perils...more

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