News & Analysis as of

Trademark Litigation Trade Dress Appeals

ArentFox Schiff

It’s Not Easy Being Green (If You Are a Color Trademark for Medical Gloves)

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In refusing registration of the color green for “chloroprene medical examination gloves,” the Federal Circuit adopted — for the first time — a legal test for genericness of color marks. The decision underscores the high...more

Jones Day

Gloves Off: Court Says No to Green Trademark Protection

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The U.S. Court of Appeals for the Federal Circuit held that the test for determining whether a word mark is generic also applies to color marks....more

Knobbe Martens

Traffix Jam – Technical Functionality Prevents Trademark Protection for the Color Pink

Knobbe Martens on

CERAMTEC GMBH v. COORSTEK BIOCERAMICS LLC - Before Lourie, Taranto, and Stark.  Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. A utility patent may still be considered strong...more

Venable LLP

Out of the Doghouse? Jack Daniel's Marks Tarnished but Not Infringed by Bad Spaniels Toy

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On January 23, 2025, the United States District Court for the District of Arizona issued a final decision ending the intensely disputed, decade-long litigation between Jack Daniel's Properties, Inc. and VIP Products LLC....more

McDermott Will & Schulte

Trade Dress Requires Separate Articulation and Distinctiveness Requirements

The US Court of Appeals for the Second Circuit vacated and remanded a district court’s dismissal of a complaint for trade dress infringement and unfair competition, finding that the district court erred in requiring the...more

Morrison & Foerster LLP

Thatchers v. Aldi: A Bitter Battle over Cider Branding

On 20 January 2025, the Court of Appeal handed down its judgment in the trade mark dispute between Thatchers Cider Company Limited (“Thatchers”), the largest family-run independent cider producer in the UK, and Aldi Stores...more

McDermott Will & Schulte

Chill Out: Request for Profit Disgorgement Isn’t Entitled to Jury Trial

The US Court of Appeals for the Eighth Circuit affirmed a district court ruling that a plaintiff was not entitled to a jury trial regarding its trade dress infringement claim and that the plaintiff failed to prove that its...more

Erise IP

What’s Trending in Trademarks, October 2024: T.I., Tiny Win $71.5M Verdict for OMG Girlz, Second Circuit Holds Against 1-800...

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Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about: Third...more

McDermott Will & Schulte

Don’t Tread on Illinois’ Absolute Litigation Privilege

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Addressing when Illinois law’s “absolute litigation privilege” bars certain counterclaims, the US Court of Appeals for the Federal Circuit affirmed a district court’s summary judgment finding that the plaintiff lacked a valid...more

McDermott Will & Schulte

It’s an Old Tune: Third-Party-Use Evidence From Long Ago Can Support Genericness

The US Court of Appeals for the Fifth Circuit found that the district court abused its discretion in wholesale exclusion of evidence on the issue of genericness. The evidence was offered to show prior use of a trade dress...more

McDermott Will & Schulte

Sole Searching: Trade Dress Hopes Booted as Functional, Nondistinctive

The US Court of Appeals for the Fourth Circuit affirmed a district court’s summary judgment grant in a trademark dispute, finding that the district court did not err in concluding that a subset of design elements lacked...more

Dorsey & Whitney LLP

Wavy Baby’s Shoes Not Entitled to Special First Amendment Protections

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40 years ago, I was the new kid in 6th grade – truly a terrible age in a young girl’s life to try and “fit in” at a new elementary school in a small town. But, one of my best memories from that year was procuring my first...more

ArentFox Schiff

Reflecting on the Interplay Between Real Estate and Intellectual Property in 2023 - Landmark Trademark Cases and Copyright...

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As 2023 came to an end, it offered a prime opportunity to examine significant legal developments in intellectual property case law and implications for the real estate industry in the year to come. Among other things,...more

McDermott Will & Schulte

Parody of Iconic Sneaker Isn’t Entitled to Heightened First Amendment Protection

McDermott Will & Schulte on

The US Court of Appeals for the Second Circuit upheld a temporary restraining order and preliminary injunction enjoining use of a trademark and trade dress associated with an iconic sneaker design over a First Amendment...more

McDermott Will & Schulte

Just How Similar Must Competing Marks Be to Survive Dismissal?

After a de novo review, the US Court of Appeals for the Sixth Circuit affirmed in part and reversed in part a district court’s motion to dismiss, finding the competing marks sufficiently similar to avoid dismissal, and the...more

Ladas & Parry LLP

TTAB Confirms that Building Design Marks Lack of Distinctiveness

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In In re Palacio Del Rio Inc (Serial Nos 88412764 and 88437801), the Trademark Trial and Appeal Board (TTAB) has issued an opinion affirming the refusal of two building design mark applications by Palacio Del Rio Inc (PDR) –...more

McDermott Will & Schulte

On the Road Again: Alternative Designs May Impact Trade Dress Functionality Analysis

The US Court of Appeals for the Sixth Circuit reversed and remanded a summary judgment ruling, finding that there were genuine disputes of material fact regarding whether the plaintiff’s alleged trade dress was functional and...more

McDermott Will & Schulte

Functionality Dooms Alleged Trade Dress Protection

McDermott Will & Schulte on

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 & Schulte

Supreme Court to Consider First Amendment Protection for Parody Dog Toy

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The Supreme Court of the United States has agreed to consider the scope of protection afforded by the First Amendment to commercial parody products that feature the unauthorized use of another party’s trademark(s). Jack...more

McDermott Will & Schulte

Colorful Non-Functionality Argument Misses the (Design) Mark

Addressing the functionality of colors in design marks, the US Court of Appeals for the Second Circuit reversed the district court’s entry of judgment for a trademark owner on its unfair competition and trademark claims,...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

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

Dorsey & Whitney LLP

Federal Circuit Kicks Chuck Taylor Case Back to ITC

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In the latest chapter of a long-running trademark dispute involving the outsole used by Converse, Inc. with its well-known CHUCK TAYLOR shoes, the U.S. Court of Appeals for the Federal Circuit has issued a ruling vacating an...more

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