News & Analysis as of

Trademark Registration Corporate Counsel Trademark Infringement

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

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

Jones Day

SkyKick v Sky: UK Supreme Court Confronts Bad Faith in Trade Mark Applications

Jones Day on

The UK Supreme Court has issued a landmark judgment dealing with specific bad faith considerations for trade marks....more

Morrison & Foerster LLP

UK Supreme Court Ruling: Sky Falls in Pivotal Trade Mark Battle with SkyKick

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The wait is over! The UK Supreme Court has handed down its judgment in the closely followed and long-running litigation between Sky, the well-known television and broadband company, and SkyKick, a lesser-known cloud computing...more

Smart & Biggar

Canadian Trademark Law 2023: A Year in Review

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2023 was an active year in Canadian trademark law. Canadian Courts addressed a wide range of issues, from licensing to comparative advertising to co-branding.   Notable changes also emerged from the Canadian Trademarks...more

Haug Partners LLP

Federal Circuit Clarifies The Relevance Of Third-Party Trademark Registrations In Determining The Conceptual And Commercial...

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In a significant decision, the Federal Circuit has clarified the weight given to third-party registrations in determining the strength of the opposer’s mark and has firmly placed the burden of showing non-use of such marks on...more

Sunstein LLP

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

Sunstein LLP on

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 & Schulte

Up in Smoke: TTAB Dismisses E-Cigarette Opposition, Provides Guidance for Effective Evidence and Testimony

McDermott Will & Schulte on

In a precedential opinion, the Trademark Trial & Appeal Board (Board) dismissed an opposition filed against an application for registration of a logo mark containing the word “SMOKES,” finding no likelihood of confusion with...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

Kilpatrick

Trademark Modernization Act Becomes Law: Establishes New Procedures to Remove Deadwood Registrations, Restores Presumption of...

Kilpatrick on

Introduction - On December 27, 2020, the Trademark Modernization Act of 2020 (“TMA”) became law after it passed Congress and was signed by the President as part of the year-end Consolidated Appropriations Act for 2021.1 The...more

McDermott Will & Schulte

Eye Don’t: No Counterfeiting Without Likelihood of Confusion

McDermott Will & Schulte on

Referring to the act of counterfeiting as “hard core” or “first degree” trademark infringement, the US Court of Appeals for the Ninth Circuit for the first time confirmed that the Lanham Act requires a likelihood of confusion...more

Perkins Coie

China’s National Legislature Advances Changes to Trademark Law

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The Standing Committee of the National People’s Congress (NPC) announced amendments to the Trademark Law of the People’s Republic of China (PRC Trademark Law) on April 23, 2019. The amendments apply to six articles of the PRC...more

Hogan Lovells

China Trademarks: 2018 Highlights & 2019 Forecast

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Last year, right holders in China have seen a number of major developments including; a milestone Supreme Court judgment dealing with trademark squatting, new specialized cyberspace courts, a new E-Commerce law, clarification...more

Knobbe Martens

Divide and Conquer: How Louis Vuitton's Brand Protection Strategy Might Increase the Opportunities for Brand Owners to Combat...

Knobbe Martens on

On November 7, 2018 Louis Vuitton Malletier, S.A. filed a complaint in the Southern District of New York against i-Fe Apparel, Inc., Yongun Jung, and a number of presently unknown entities and individuals (“Defendants”)....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

Foley Hoag LLP - Making Your Mark

First Circuit Affirms Personal Jurisdiction Based on Global Web Activity in Trademark Action

When does the globally available website of a foreign company subject that company to jurisdiction in the United States for purposes of a trademark infringement action? Does it make a difference if the foreign company has...more

Knobbe Martens

Ethical Brand Protection in the Age of Social Media: Fair Ball or Foul?

Knobbe Martens on

Presentation Goals - • WHAT - Build and maintain strong brand equity through proper trademark policing • HOW - Protect the brand via a custom enforcement strategy • CONSIDERATIONS - Promote ethical investigations in...more

Knobbe Martens

Beware! A Trademark Trial and Appeals Board Decision Can Stop You in Your Tracks

Knobbe Martens on

It has been a few years since the Supreme Court decision in the case B&B Hardware, Inc. v. Hargis Industries, Inc., and we are beginning to see the aftermath in the district courts. In B&B Hardware, the Supreme Court held...more

Dorsey & Whitney LLP

Tea Rose, Swiss Cheese and Slam Dunk Evidence of Infringement – The 9th Circuit Weighs in on Remote Geographic Trademark Users

Dorsey & Whitney LLP on

When two different companies adopt confusingly similar trademarks and use them in different parts of the United States, complications ensue. The adjudication of the respective rights of the parties will depend on the...more

Foley Hoag LLP - Making Your Mark

U.S. Krispy Kreme Doughnuts Win 4-0 Over Spanish Donuts

A decision rendered by the European Court of Justice (ECJ) on March 2, 2017, affirming a General Court ruling and potentially ending a nearly twenty-year legal battle, is a reminder to trademark owners that what is generic in...more

Akerman LLP - Marks, Works & Secrets

TTAB Makes Double Brown Ale Open to Nut Sack Mark

In a ruling bound to please 15 year-old boys everywhere, the USPTO Trademark Trial and Appeal Board (“TTAB”) reversed the Examining Attorney’s refusal to register the trademark NUT SACK DOUBLE BROWN ALE (in standard character...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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