06 JUNE 2024
Declaration from director of opposing company deemed sufficient evidence of prior use by PTAB and Federal Circuit
A design and standard character mark infringement dispute has highlighted the validity of a declaration as evidence. While the defendant argued abuse of discretion by the PTAB, the Federal Circuit disagreed and supported a declaration from the director of the opposing company as sufficient for refusal to register.
Authors:
Karen Gover
30 MAY 2024
Third Circuit vacates district court’s grant of relief in charity infringement dispute
In a long-running trademark spat between two children’s education charities, the Third Circuit has ruled that the district court erred in granting relief to the plaintiff. Its decision sheds light on the impact of a delay in bringing a suit as well as where the burden of proof lies.
Authors:
Sarah Bro
23 MAY 2024
District court erred in granting preliminary injunction, Second Circuit rules
In an infringement spat between the Fire Department of New York and a first responder, the Second Circuit overturned a district court decision to grant a preliminary injunction. The ruling highlights the importance of the differences between descriptiveness and secondary meaning under the Lanham Act.
Authors:
Kathleen Lynch
09 MAY 2024
Timberland denied trade dress registration over lack of distinctiveness
The Fourth Circuit has upheld a district court decision to deny footwear manufacturer Timberland trade dress protection for its boot design. The decision highlights the need for direct evidence of a unique, nonfunctional design when applying for protection of this kind.
Authors:
Keval Amin
02 MAY 2024
Ninth Circuit clarifies power of district courts to cancel pending applications in infringement spat
In a dispute between two smoking product retailers, the Ninth Circuit has upheld a district court decision to cancel a pending trademark application. The decision sheds light on the jurisdiction of federal courts when it comes to resolving cases by cancelling pending applications.
Authors:
Cecilia Choy
25 APRIL 2024
Second Circuit denies Modelo summary judgment over ambiguous terms in licensing agreement
The scope of the definition of ‘beer’ in a trademark licensing agreement has been called into question after the licensee began selling hard seltzers under the plaintiff’s brand. The court’s summary judgment denial highlights the need for specificity when it comes to defining products in such agreements.
Authors:
Tessa Kroll
18 APRIL 2024
USPTO proposes new filing rules for 2025
The USPTO has requested written opinion from the public in response to its proposed changes to trademark filing procedures and fees. The new rules aim to support the office’s strategic objectives and improve prosecution.
Authors:
Peter Brunovskis
11 APRIL 2024
Breitling prevails with good-faith defence in Second Circuit infringement dispute ruling
An infringement suit brought against luxury watch retailer Breitling has shed light on the implications of using trademarks as descriptive terms. The court’s decision to grant summary judgment highlights how the good-faith prong in the fair-use defence can help when it comes to likelihood of confusion.
Authors:
Karen Gover
04 APRIL 2024
Fourth Circuit clarifies district court’s power to subpoena in USPTO proceedings
Upholding a district court decision in a software dispute, the Fourth Circuit has shed light on the rules that govern the power to subpoena evidence for use. The judgment underscores the differences between the TTAB and the courts, and the strategic implications of such a distinction.
Authors:
Eleanor B Atkins
07 MARCH 2024
TTAB insufficiently weighed likelihood-of-confusion factors in cancellation action, Federal Circuit rules
In an infringement dispute involving two baby product retailers, the US Court of Appeals for the Federal Circuit found that the TTAB erred in its application of several DuPont factors when it analysed the similarity between two marks.
Authors:
Eleanor B Atkins
22 FEBRUARY 2024
Rolex loses out on disgorgement of profits from laches defence in Fifth Circuit ruling
A Fifth Circuit decision has clarified the difference between the restoration and customisation of luxury watches, as well as the impact that a delay in filing infringement charges can have on the success of a disgorgement claim.
Authors:
Keval Amin
15 FEBRUARY 2024
Federal Circuit cements threshold between sentiment and source identification in registration refusal
The informational matter doctrine has proved crucial in deciding where to draw the line between source identification and sentiment following a TTAB refusal to register the mark ‘everybody vs racism’.
Authors:
Sydney McDermott
08 FEBRUARY 2024
Jack Daniel’s case prompts Ninth Circuit Punchbowl reversal
The recent reversal of a decision by the Ninth Circuit has once again highlighted the nuanced interaction of the Lanham Act and the First Amendment, following the precedential Jack Daniel’s case last year.
Authors:
Anisa Noorassa
01 FEBRUARY 2024
Prior analogous trademark use proves fatal for Cosmic Crusaders in TTAB cancellation
After a precedential 2022 decision, the TTAB has highlighted how prior analogous trademark use can impact priority in a recent spat between two competing comic creators.
Authors:
Eleanor B Atkins
18 JANUARY 2024
Vans parody loses out on heightened First Amendment protection in Second Circuit ruling
Following the Supreme Court’s ruling in Jack Daniel’s, the Second Circuit’s decision to deny an art collective First Amendment protection highlights the law’s limited scope for products that are considered to be artistic expressions rather than products for use.
Authors:
Karen Gover
04 JANUARY 2024
Federal Circuit vacates TTAB decision in dispute between two religious organisations
Drawing on previous opposition claims, the Federal Circuit has voided the board’s decision to sustain the opposition between two non-denominational internet churches. The decision highlights issues of waiver in trademark disputes that involve multi-class applications.
Authors:
Paul Devinsky
14 DECEMBER 2023
Fifth Circuit grants motion to transfer in TikTok case
False advertising allegations have fuelled a recent spat between two Chinese digital giants. A district court decision to deny a motion to transfer the case has been revoked by the Fifth Circuit in a bid to clarify the criteria required to issue a writ.
Authors:
Kathleen Lynch
16 NOVEMBER 2023
Federal Circuit rules that fraud after registration is not a basis for cancellation
The TTAB’s power to dismiss registered trademarks under Section 14 of the Lanham Act has been called into question in a dispute over fraudulently obtained registrations.
Authors:
Paul Devinsky
09 NOVEMBER 2023
Fifth Circuit finds that gun manufacturer lawsuit did not toll prescriptive period
A recent spat between two competing gun manufacturers over the trademarked appearance of a barrel has highlighted timing issues relating to the statute of limitations, as well as restrictions and complications of involving a sister company.
Authors:
Joshua Revilla
02 NOVEMBER 2023
Sixth Circuit sheds light on degree of similarity necessary for competing marks
A recent dispute between two competing children’s clothing companies has shed light on how similar trademarks must be for infringement claims to proceed.
Authors:
Mike Baldwin
26 OCTOBER 2023
Tenth Circuit rules no likelihood of confusion in Jägermeister dispute
In a trademark suit against Jägermeister, the court affirmed the decision that no infringement had taken place. While the word at issue was being used in advertising by both parties, the difference between the products was sufficient for the claim to be dismissed.
Authors:
Courtney Seams
19 OCTOBER 2023
Grubhub relishes victory against preliminary injunction
Consumer confusion theory functioned in favour of food-delivery service Grubhub, acquired by Just Eat in 2021, in a trademark infringement dispute over logo similarity.
Authors:
Tessa Kroll
12 OCTOBER 2023
Impossible Burger spat highlights issues of personal jurisdiction
Jurisdiction can be challenging to navigate in cases that involve multiple locations. The Ninth Circuit has now shed helpful light on the criteria that must be met for a court to establish jurisdiction over a non-resident defendant in a trademark infringement case.
Authors:
Cecilia Choy
05 OCTOBER 2023
Third Circuit deems candy shape and colour functional and unprotectable
Well-known sweet manufacturer Haribo has prevailed in an infringement dispute, relying on consumer common sense. The case sheds light on the role of functionality in trademark ownership and how two products can be found not to encroach on one another’s marks despite great similarity between them.
Authors:
Sujatha Rochford
28 SEPTEMBER 2023
Fifth Circuit holds that notice alone is sufficient for preliminary injunction
In a deep dive into the intricate area of preliminary injunctions, the Fifth Circuit has shed valuable light on the details of proper jurisdiction to issue such a motion. The finding is the latest twist in a trademark dispute involving the manufacturer of the well-known KitchenAid.
Authors:
Alexander Piala
21 SEPTEMBER 2023
Appeal court finds prior settlement does not impact future trademark licensees
The 11th Circuit has allowed a trademark licensee to bring a claim for unfair competition, despite a lack of authorisation in the licensing agreement. The court held that a previous agreement not to sue did not restrict the future licensees’ ability to take legal action against one another.
Authors:
Gaylon Hollis
14 SEPTEMBER 2023
Nothing lost in translation: book’s Spanish version is not a different creative work
Douglas Wood’s bid to register the titles of his English life guide and its Spanish translation has been rejected by the TTAB. The board maintained that the book and its translation were versions of the same work, not a series – and thus ineligible for trademark protection.
Authors:
Dana Breitman
07 SEPTEMBER 2023
Fourth Circuit affirms that disgorgement of profits is an appropriate remedy for breach of contract
Addressing the breach of a confidential settlement agreement, the Fourth Circuit has upheld a district court’s summary judgment rulings in a real estate trademark dispute, agreeing on all six likelihood-of-confusion factors.
Authors:
Kathleen Lynch
31 AUGUST 2023
Sixth Circuit defines criteria for assessing profits awards in restaurant dispute
In analysing a profits award, the Sixth Circuit held that several key factors should be considered, such as the defendant’s intent to deceive, whether sales were diverted and palming off, among many others. In light of such criteria, it upheld the district court’s award of profits, costs and attorneys’ fees.
Authors:
Thomas DaMario
24 AUGUST 2023
Covenant not to sue leads to Fifth Circuit reversal of district court invalidity finding
Explaining that the onus was on the plaintiff to show that it engaged in activities not covered by the covenant not to sue, the Fifth Circuit has found that the district court committed two errors in its summary judgment grant in a case involving a trademark invalidation claim and vacated its final judgment.
Authors:
Benjamin Ediger
17 AUGUST 2023
Brandy Melville fails to secure permanent injunction in Ninth Circuit’s first ever contributory infringement ruling
Parties looking to sue online marketplaces for contributory trademark infringement should be prepared to demonstrate that marketplace’s knowledge of specific instances of infringement.
Authors:
Sarah Bro and Kathleen Lynch
10 AUGUST 2023
Appeal court ruling outlines how to prove substantial differences between markets
In an education dispute, the 10th Circuit emphasised that establishing separate markets and detailing specific services for rights holders utilising a mark that closely resembles another in the same industry is critical.
Authors:
Tessa Kroll
03 AUGUST 2023
Federal Circuit ruling emphasises influence of DuPont factors when evaluating similar marks
In reversing and remanding a TTAB decision, an appeal court has reaffirmed that carefully and accurately applying DuPont factors is critical in disputes involving similar registered and unregistered trademarks.
Authors:
Mike Baldwin
27 JULY 2023
Ninth Circuit defines personal jurisdiction in interactive website dispute
In Herbal Brands, the Court of Appeals held that if a defendant sells a physical product via an interactive website and causes that product to be delivered to the forum, the exercise of personal jurisdiction may be appropriate.
Authors:
Cecilia Choy
20 JULY 2023
Fourth Circuit vacates district court’s injunctive relief ruling due to FRCP misapplication
The Federal Court of Appeals has reinforced the importance of properly applying criteria from the Federal Rules of Civil Procedure when reviewing a party’s request for injunctive relief.
Authors:
Kavya Rallabhandi
13 JULY 2023
Ninth Circuit rulings separate subjective opinions from verifiably false statements under Lanham Act
Following a complex series of decisions in a cybersecurity dispute, a federal court of appeals has unpicked the differences between subjectivity and objectivity in advertising.
Authors:
Tim Dunker
06 JULY 2023
TTAB rules unique building designs can acquire trade dress protection
The tribunal has highlighted the importance of proving a design’s inherent distinctiveness with concrete evidence when pursuing protected trade dress status.
Authors:
Christopher M Bruno
29 JUNE 2023
TRUMP TOO SMALL heads to Supreme Court for free speech review
The Supreme Court is to take a closer look at whether the USPTO’s refusal to register a mark related to the former president under the Lanham Act violates the First Amendment.
Authors:
Sarah Bro
22 JUNE 2023
Copyright infringers could be held liable under the Lanham Act following furniture dispute
The Ninth Circuit’s appeal court has confirmed that liability under the Copyright Act and Lanham Act are not mutually exclusive, which is particularly pertinent in regard to trade dress damages.
Authors:
Anisa Noorassa
08 JUNE 2023
Sixth Circuit ruling emphasises impact of alternative designs on assessing trade dress functionality
In reversing and remanding a district court’s decision, an appeal court has highlighted the critical role that an alternative design can play in helping a rights holder prove that its trade dress is non-functional and thus entitled to protection from infringers.
Authors:
Kavya Rallabhandi
25 MAY 2023
Federal Circuit ruling demonstrates Dupont factors’ impact on evaluation of similar marks
In affirming a TTAB refusal, an appeal court has promoted the application of the 13 Dupont factors in cases involving substantial similarity between registered and unregistered marks.
Authors:
Kathleen Lynch
11 MAY 2023
Successful MLBPA trademark suit shines spotlight on priority of use and likelihood of confusion
In its ruling on MLBPA trademark oppositions made on behalf of New York Yankees star player Aaron Judge, the TTAB has analysed key factors establishing priority of use and employed the Dupont factors to assess the likelihood of confusion caused by the relevant marks.
Authors:
Jake B Vallen
27 APRIL 2023
Federal Circuit ruling against Apple demonstrates limits of trademark tacking
In its reversal of a TTAB decision, an appeal court has reaffirmed the need for rights holders to demonstrate that their pre-existing mark covers all services specified in their new application in order to tack the latter’s use to the former’s earlier priority date.
Authors:
Kyle Sorenson
20 APRIL 2023
TTAB clarifies test to meet “goods in trade” registration requirement in New York Times case
In reversing an examining attorney’s refusal of trademark registrations by the New York Times, the TTAB has promoted the three-factor Lens.com test as the gold standard for registrability.
Authors:
Lillian Spetrino
06 APRIL 2023
Fifth Circuit ruling proves charter schools are not immune from trademark suits
In its judgment of a trademark infringement appeal, an appeal court has leaned on the pre-established Clark factors to clarify charter schools’ access to sovereign immunity and the IP protections it traditionally provides public schools.
Authors:
Amol Parikh
30 MARCH 2023
Fourth Circuit provides welcome clarity on certification marks in Gruyere ruling
While the applicants for GRUYERE believed that the term should be used only to label cheese produced in the Gruyère region, the court held that it is a generic term for consumers and encouraged the USPTO and courts to look to FDA regulations as evidence in future disputes.
Authors:
Sarah Bro
16 MARCH 2023
How the metaverse and NFTs might impact IP protection in 2023
Pivotal cases involving major international brands such as Hermès and Nike are coinciding with evolving USPTO enforcement strategies to shake up the IP landscape for US brand owners in the metaverse and NFT spaces.
Authors:
Joshua Revilla and Sarah Bro
09 MARCH 2023
Key trademark and copyright developments shape 2023 US outlook
Several key updates in 2022 are helping the USPTO and the US Copyright Office to make great strides in their joint mission to clear the path to IP protection – particularly with regard to taking actions against fraudulent filings and shortening the application process.
Authors:
Christina Martini
