News & Analysis as of

Lanham Act Summary Judgment Trademark Litigation

McDermott Will & Emery

Clean bill of health: Only domestic activities count when analyzing likelihood of confusion

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Affirming a summary judgment decision finding no trademark infringement under the Lanham Act, the US Court of Appeals for the Ninth Circuit determined that the district court properly focused on domestic activity with regard...more

McDermott Will & Emery

Don’t walk away: Trademark owner can’t bring infringement suit against co-owner

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The US Court of Appeals for the Fifth Circuit upheld a district court’s summary judgment decision that a co-owner of a trademark cannot bring infringement or dilution claims under the Lanham Act against other co-owners or...more

Loeb & Loeb LLP

Enos v. The Walt Disney Company

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District court grants Disney’s motion for summary judgment, holding it did not infringe plaintiffs’ copyright in blue-eyed ukulele-playing turtle character, but rather independently created its own musical turtle character,...more

McDermott Will & Emery

Up in Smoke: Statutory Trademark Damages Can Exceed Actual Damages

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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

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 & Emery

When Analyzing Likelihood of Confusion, It’s Not Just Location, Location, Location

The US Court of Appeals for the Fourth Circuit vacated a district court’s decision finding no infringement that focused on only the geographic distance between the physical locations of the two users without considering the...more

Fox Rothschild LLP

TTAB Practitioners Beware: TTAB Dismissals With Prejudice, But Without Judgment, Can Support A Claim Preclusion Defense

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In a recent precedential cancellation decision, the Trademark Trial and Appeal Board (“Board”) partially granted Respondent’s motion for summary judgment, holding that the parties’ stipulation that prior proceedings between...more

McDermott Will & Emery

Chickening Out: Reason for Trademark Abandonment Irrelevant Without Proof of Intent to Resume

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The US Court of Appeals for the First Circuit affirmed a district court’s summary judgment decision finding that the prior owner of a trademark for fresh chicken had abandoned the mark by failing to use it for three years and...more

McDermott Will & Emery

Rebel Libertarians Aren’t at Liberty to Violate Lanham Act

In a case that required the US Court of Appeals for the Sixth Circuit to articulate the boundary between the Lanham Act and the First Amendment when the trademark in question is the name of a political party, the Court found...more

Sheppard Mullin Richter & Hampton LLP

Divided 9th Circuit Says District Court Has Power to Adjudicate TM Applications

In BBK Tobacco & Foods LLP v. Cent. Coast Agric., Inc., 97 F.4th 668 (9th Cir. 2024), the Ninth Circuit Court of Appeals held that federal district courts have power to adjudicate trademark applications pursuant to the Lanham...more

McDermott Will & Emery

Disgorgement of Profits Appropriate Remedy for Breach of Contract, Trademark Infringement

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In a trademark infringement and breach of contract case involving real estate companies with a shared name, the US Court of Appeals for the Fourth Circuit affirmed summary judgment in favor of the trademark owner, including...more

McDermott Will & Emery

Functionality Dooms Alleged Trade Dress Protection

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The US Court of Appeals for the Eighth Circuit affirmed summary judgment of noninfringement in a trade dress suit, finding that the trade dress was functional and the attorneys’ fee award—as diminished by the district...more

McDermott Will & Emery

Veil Piercing Under Lanham Act Requires Specific Showing of Liability

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The US Court of Appeals for the Eleventh Circuit reversed a district court decision granting summary judgment of liability under the Lanham Act, finding that the plaintiffs failed to apply the correct standards for piercing...more

McDermott Will & Emery

No Harm, No Foul: No False Advertisement Where Trade Association Failed to Show Injury

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The US Court of Appeals for the Tenth Circuit affirmed a district court’s grant of summary judgment in favor of a home inspector association on a false advertising claim brought by a competitor, finding no evidence of injury...more

Fenwick & West LLP

Bacardi Rum Can’t Be Tamed: Ninth Circuit Rules in Favor of Bacardi in Trademark Summary Judgment Ruling

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In an interesting twist, the Ninth Circuit granted summary judgment to a defendant in a trademark infringement case in Lodestar v. Bacardi on April 21, 2022. Given the Ninth Circuit’s common refrain that “summary judgment is...more

McDermott Will & Emery

Greek God or Continent? Defining “Confusing Similarity” under the Anti-Cybersquatting Consumer Protection Act

Examining whether a registered mark and a domain name were confusingly similar under the Anti-Cybersquatting Consumer Protection Act (ACPA), the US Court of Appeals for the 11th Circuit affirmed the district court’s grant of...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

Troutman Pepper Locke

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

Troutman Pepper Locke on

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

Akerman LLP - Marks, Works & Secrets

Lanham Act Preemption of State Law Where Cannabis Trademarks Are At Issue

As cannabis products become legal in more and more states, commercial interest grows in protecting the trademarks associated with those products.  The United States Patent and Trademark Office has maintained its refusal to...more

Morrison & Foerster LLP

Second Circuit Upholds Parody Defense, Tosses Louis Vuitton’s Trademark Suit

In late December, the Second Circuit issued a ruling in Louis Vuitton Malletier, S.A., v. My Other Bag, Inc., affirming the district court’s grant of summary judgment for claims of trademark infringement and dilution of a...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

Akerman LLP - Marks, Works & Secrets

Trade Dress Claim Based on Shoe’s Rectangular Metal Toe Plate Booted by SDNY

The Southern District of New York recently booted shoe manufacturer LVL XIII Brands, Inc.’s trade dress infringement suit against Louis Vuitton Malletier S.A. in LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.. At issue...more

Dorsey & Whitney LLP

Trademark Wars: Fox’s “Empire” Strikes Back

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In another episode involving the First Amendment and the Lanham Act, Twentieth Century Fox’s “Empire” notched a win for the First Amendment. In Twentieth Century Fox Television, et al. v. Empire Distribution Inc. the United...more

Foley & Lardner LLP

Amazon Wins Ruling on Results for Searches on Brands It Doesn’t Sell

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On October 21, 2015, the Ninth Circuit ruled that online retailer Amazon does not violate the Lanham Act when, in response to a search for a brand it doesn’t sell, it returns a results page that fails to disclose that fact...more

Akerman LLP - Marks, Works & Secrets

WD-40 Squeaks By On Appeal Of Its Summary Judgment Win On “Long-Term Corrosion Inhibitor”

In Sorensen v. WD-40 Company, the Seventh Circuit affirmed the district court’s finding that the use of the term “inhibitor” for a rust-inhibitor product was not trademark infringement and constituted a descriptive fair use. ...more

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