In Vidal v. Elster, a unanimous Supreme Court of the United States reversed the US Court of Appeals for the Federal Circuit’s decision, holding that the Lanham Act’s names clause does not violate the First Amendment or...more
6/21/2024
/ Constitutional Challenges ,
Donald Trump ,
First Amendment ,
Free Speech ,
Lanham Act ,
SCOTUS ,
Trademark Application ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
Vidal v Elster
Issuing a revised opinion following the Supreme Court’s 2023 decision in Abitron Austria GmbH v. Hetronic Int’l, Inc., the US Court of Appeals for the Tenth Circuit determined that none of the defendant’s purely foreign sales...more
After the district court, on remand, held that laches did not bar relief, the US Court of Appeals for the Third Circuit again determined that the district court abused its discretion by not properly applying the presumption...more
The US Court of Appeals for the Ninth Circuit addressed contributory trademark infringement for the first time, finding that specific knowledge is required for liability to attach. Y.Y.G.M. SA, DBA Brandy Melville v....more
8/3/2023
/ Appeals ,
Counterfeiting ,
Damages ,
Intellectual Property Protection ,
Lanham Act ,
Online Marketplace ,
Remand ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Vacated ,
Willful Blindness
In a decision that may make it more difficult for brand owners to enforce their marks against infringers located outside of the United States, the Supreme Court of the United States vacated the judgment of the US Court of...more
7/11/2023
/ Abitron Austria GmbH v Hetronic International Inc ,
Damages ,
Extraterritoriality Rules ,
Foreign Jurisdictions ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
International Trademark Protection ,
Lanham Act ,
Likelihood of Confusion ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Ownership ,
Trademarks
The Supreme Court agreed to review the US Patent & Trademark Office’s (PTO) challenge to a February 2022 ruling by the US Court of Appeals for the Federal Circuit. In the ruling at issue, the Federal Circuit held that...more
Revisiting jurisprudence touching on the Lanham Act and the First Amendment from the Supreme Court’s decisions in Matal v. Tam and Iancu v. Brunetti, the US Court of Appeals for the Federal Circuit held that applying Sec....more
3/10/2022
/ Appeals ,
Constitutional Challenges ,
Corporate Counsel ,
First Amendment ,
Free Speech ,
Intellectual Property Protection ,
Lanham Act ,
Matal v Tam ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks
For the second time, the US Court of Appeals for the Federal Circuit examined the standard for demonstrating fraud in a party’s claim of a trademark’s acquired distinctiveness for purposes of registration under Section 2(f)...more
The US Court of Appeals for the Ninth Circuit affirmed a grant of summary judgment, finding that a trademark registrant had alleged infringement of its trademark without having engaged in bona fide use of the trademark in...more
2020 was a year like no other, so you’d be forgiven if the year’s biggest headlines in trademark law didn’t quite catch your attention. In 2020, the US Supreme Court shaped trademark jurisprudence through a trio of notable...more
1/22/2021
/ Coronavirus/COVID-19 ,
Counterfeiting ,
Economic Stimulus ,
Electronic Filing ,
Enforcement ,
Fraud ,
Injunctive Relief ,
Lanham Act ,
New Legislation ,
Online Marketplace ,
SCOTUS ,
Trademark Ownership ,
Trademark Registration ,
Trademarks ,
USPTO
Presented with a publishing company defendant’s mashup of Dr. Seuss’ copyrighted works with Star Trek in a work titled Oh, the Places You’ll Boldly Go!, the US Court of Appeals for the Ninth Circuit tackled claims of both...more
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
In a unanimous decision, the Supreme Court of the United States confirmed that a plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a...more
4/27/2020
/ § 1125(a) ,
§ 1125(c) ,
Appeals ,
Burden of Proof ,
Charge-Filing Preconditions ,
Compensatory Awards ,
Dilution ,
Lanham Act ,
Lost Profits ,
Remand ,
Remedies ,
Romag Fasteners v Fossil ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Vacated ,
Willful Infringement
In a 6–3 opinion, the Supreme Court of the United States affirmed a 2017 US Court of Appeals for the Federal Circuit decision holding the ban on registration of immoral or scandalous trademarks under the Lanham Act to be an...more
8/5/2019
/ Appeals ,
Constitutional Challenges ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Lanham Act ,
Reaffirmation ,
Reversal ,
Scandalous/Immoral Marks ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
USPTO ,
Viewpoint Discrimination
In finding a fair use defense and no “likelihood of confusion” in a cosmetics trademark infringement dispute, the US Court of Appeals for the 11th Circuit also considered, as an issue of first impression, whether the Seventh...more
7/11/2019
/ Appeals ,
Cosmetics ,
Disgorgement ,
Fair Use ,
Jury Trial ,
Lanham Act ,
Likelihood of Confusion ,
Permanent Injunctions ,
Seventh Amendment ,
Statutory Damages ,
Trademark Infringement ,
Trademarks ,
Unfair Competition
A 6-3 opinion from the Supreme Court of the United States in Iancu v. Brunetti affirmed a Federal Circuit 2017 decision. Both rulings found the ban on the registration of immoral or scandalous trademarks under the Lanham Act...more
6/27/2019
/ Appeals ,
Constitutional Challenges ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Lanham Act ,
Reaffirmation ,
Reversal ,
Scandalous/Immoral Marks ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
USPTO ,
Viewpoint Discrimination
In a fight involving sales of mattresses and alleged trash talking pertaining to those mattresses, the US Court of Appeals for the Second Circuit joined the Third, Fourth, Fifth, Sixth, Ninth and Federal Circuits in holding...more
Following the Supreme Court of the United States’ 2017 decision in Matal v. Tam (i.e., the Slants case) finding the proscription on the registration of disparaging trademarks under § 2(a) of the Lanham Act to be an...more
2/6/2018
/ Constitutional Challenges ,
Disparagement ,
First Amendment ,
Free Speech ,
Lanham Act ,
Matal v Tam ,
SCOTUS ,
The Slants ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
In an 8–0 decision, the Supreme Court of the United States affirmed an en banc panel of the US Court of Appeals for the Federal Circuit and found the disparagement clause of the Lanham Act to be facially unconstitutional...more
7/11/2017
/ Constitutional Challenges ,
Disparagement ,
First Amendment ,
Free Speech ,
Lanham Act ,
Matal v Tam ,
Music Industry ,
SCOTUS ,
The Slants ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
The US Court of Appeals for the Ninth Circuit made a point to remind trademark litigants of the relevant laws and policies pertaining to trademark “genericide” when it sustained summary judgment in favor of ubiquitous search...more
A unanimous decision from the Supreme Court of the United States in Matal v. Tam affirmed an en banc panel of the Federal Circuit and found the disparagement clause of the Lanham Act to be facially unconstitutional under the...more
6/22/2017
/ Constitutional Challenges ,
Disparagement ,
First Amendment ,
Free Speech ,
Lanham Act ,
Matal v Tam ,
SCOTUS ,
The Slants ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
In 2014, the Supreme Court of the United States issued its ruling in Octane Fitness (IP Update, Vol. 17, No. 5), in which it examined the fee-shifting provision of the Patent Act and clarified the types of “exceptional” cases...more
In the last several decades, the disparagement provision of § 2(a) of the Lanham Act has become a more frequent basis for rejection or cancellation of trademarks by the United States Patent and Trademark Office (PTO) and the...more
In the last several decades, the disparagement provision of § 2(a) of the Lanham Act has become a more frequent basis for rejection or cancellation of trademarks by the United States Patent and Trademark Office (USPTO) and...more
The U.S. Court of Appeals for the Federal Circuit issued a sua sponte order vacating its April 20, 2015, decision in In re Tam to consider the constitutionality of Section 2(a) of the Lanham Act, which provides that the U. S....more