Last month, our post about art NFTs and the DMCA highlighted the distinction between non-fungible tokens and the copyrighted works they represent. In the context of copyright, this dichotomy is generally uncontroversial: In...more
4/12/2022
/ Blockchain ,
Corporate Counsel ,
Fashion Industry ,
First Sale Doctrine ,
Intellectual Property Protection ,
Nike ,
Nominative Fair Use Doctrine ,
Non-Fungible Tokens (NFTs) ,
Popular ,
Retail Market ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
Celebrities domiciled in New York State at the time of their death will soon have a transferable post-mortem right of publicity, bringing the law in New York closer in line to several other states, like California, that...more
It is generally understood that trademark law protects against a third party’s use of your mark or a confusingly similar mark to mislead consumers into thinking goods manufactured by someone else were made by your company....more
In a decision issued on June 30, the U.S. Supreme Court held that a generic word combined with “.com,” such as Booking.com, is entitled to federal registration if consumers perceive the combined mark as a non-generic brand...more
7/1/2020
/ Acquired Distinctiveness ,
Appeals ,
Booking.com ,
Domain Name Registration ,
Domain Names ,
Generic Marks ,
Lanham Act ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO
Under Section 1117(a) of the Trademark Act, courts may award the plaintiff's lost profits or the defendant's profits resulting from a violation of the statute. The Supreme Court decided today that while a defendant's mental...more
4/23/2020
/ Appeals ,
Calculation of Damages ,
Certiorari ,
Disgorgement ,
Lanham Act ,
Romag Fasteners v Fossil ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Willful Infringement
The Palm, known mostly for its famous steaks and caricature-filled walls, is quickly becoming notable for another reason. Recently, in an opinion following a bench trial, New York State Supreme Court Judge Andrea Masley...more
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
Last week, the TTAB agreed to vacate a precedential decision at the direction of a district court judge putting an end (for now) to a stand-off between the administrative body and the federal judiciary. As we have previously...more
On February 29, 2016, the Supreme Court declined to review a Ninth Circuit decision holding that there was no likelihood of confusion, and therefore no trademark infringement, where Amazon.com responded to consumer searches...more
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
9/4/2015
/ B&B Hardware v Hargis Industries ,
Corporate Counsel ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Issue Preclusion ,
Judicial Review ,
Likelihood of Confusion ,
Popular ,
Right To Appeal ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks
The federal Trademark Act (the Lanham Act) instructs that if an unsuccessful trademark applicant appeals a refusal to register in federal district court, the applicant must name the Director of the U.S. Patent & Trademark...more
6/12/2015
/ American Rule ,
Attorney's Fees ,
De Novo Standard of Review ,
Lanham Act ,
Legal Fees ,
Trademark Act ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO ,
Venue
The Bryant Park Hotel has been using its registered trademarks, including the well-known mark THE BRYANT PARK HOTEL, in connection with hotel, restaurant, and bar services since 2001, but U.S. District Judge Rakoff found that...more
On April 27, the Supreme Court surprisingly denied certiorari in Escamilla v. M2 Tech., Inc., U.S., No. 14-1012 rather than remanding the case for further consideration in light of the High Court's recent decision in B&B...more
Yesterday the United States Supreme Court issued a landmark ruling in B&B Hardware, Inc. v. Hargis Industries, Inc. et al., case number 13-352, 575 U.S. ___ (2015), holding that likelihood of confusion determinations by the...more
As reported in our September 23 Client Alert, the Supreme Court is set to hear argument on December 2 on the issue of whether likelihood of confusion findings by the Trademark Trial and Appeal Board (TTAB) are entitled to...more
Trademark practitioners are well familiar with the requirement under U.S. law that trademark licenses must contain quality control provisions, and trademark licensors must actually exercise quality control in fact, to ensure...more
As we reported in our July 2 client alert, the Supreme Court has granted a petition for certiorari seeking a determination of whether likelihood of confusion findings by the Trademark Trial and Appeal Board ("TTAB") are...more
Following a series of recent appellate decisions across the spectrum of intellectual property disciplines, including the fields of patent, copyright and trade secrets, the Court of Appeals for the Third Circuit has ruled that...more
8/29/2014
/ Appeals ,
Copyright ,
Corporate Counsel ,
eBay ,
Injunctive Relief ,
Irreparable Harm ,
Lanham Act ,
Patents ,
Pharmaceutical Industry ,
Popular ,
Trade Secrets
As we reported in our May 29 client alert, the Solicitor General submitted an amicus brief recommending that the Supreme Court grant a petition for certiorari seeking a determination of whether likelihood of confusion...more
As we reported in our February 28 Client Alert, a petition for certiorari has been filed asking the Supreme Court to decide whether likelihood of confusion determinations by the Trademark Trial and Appeal Board ("TTAB") are...more
Today, the U.S. Supreme Court resolved a circuit split on the crucial issue of who has standing to sue for false advertising under the Lanham Act. In a unanimous decision authored by Justice Scalia, the Court held that to...more
In advising clients and making strategic decisions about whether to bring or defend inter partes proceedings before the Trademark Trial and Appeal Board ("TTAB"), trademark practitioners need to consider carefully whether...more
On June 3, the U.S. Supreme Court granted the certiorari petition of Lexmark International Inc. ("Lexmark"). Lexmark sought cert to resolve a three-way split among the federal circuit courts regarding how to determine whether...more
Lanham Act false advertising law is largely consistent among the various federal circuit courts. However, one area of Lanham Act jurisprudence where the federal appellate courts do not see eye-to-eye concerns who has standing...more
Private organizations not affiliated with the United States Patent and Trademark Office (USPTO) often use the USPTO's publicly available trademark database to obtain applicant information, and then disseminate deceptive,...more