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Appeals Counterfeiting

McDermott Will & Emery

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

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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

AEON Law

Patent Poetry: Ninth Circuit: Specific Knowledge Needed to Prove Contributory Trademark Infringement

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The US Court of Appeals for the Ninth Circuit has found that specific knowledge is required for liability in a case of contributory trademark infringement. The case is Y.Y.G.M. SA, DBA Brandy Melville v. Redbubble, Inc.,...more

McDermott Will & Emery

Burst That Bubble: Specific Knowledge Necessary to Prove Contributory Trademark Infringement

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

Proskauer Rose LLP

Three Point Shot - November 2022

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NBA Properties Lands Slam Dunk in Intellectual Property Win Heard Around the Globe - NBA Properties, Inc. (“NBAP”), the exclusive licensee of the National Basketball Association (“NBA”) and NBA teams’ distinctive trademarks,...more

McDermott Will & Emery

Counterfeit Dealer Gets Smoked in Trademark Preliminary Injunction Proceeding

The US Court of Appeals for the Ninth Circuit affirmed a preliminary injunction barring the defendant from selling counterfeit e-cigarette and vaping products bearing the plaintiff’s logo because the plaintiff’s psychoactive...more

Smith Gambrell Russell

ECTA Anti-Counterfeiting Committee Report October 2021 – FY 2020

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I. Legal developments - 1. Next Investments, LLC v. Bank of China, No. 20-602 (2d Cir. 2021) In 2013, Nike, Inc. ("Nike") and Converse Inc. ("Converse") brought a trademark infringement action under the Lanham Act against...more

McDermott Will & Emery

No Immunity: State Right of Publicity Law is § 230 “Law Pertaining to Intellectual Property”

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The US Court of Appeals for the Third Circuit held that § 230 of the Communications Decency Act, 47 U.S.C. § 230(c), does not preclude claims based on state intellectual property laws, reversing in part a district court’s...more

Dorsey & Whitney LLP

E-Commerce and Trademark Infringement: OSU Wins a Battle at the Sixth Circuit

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The Ohio State Buckeyes may have lost the college football national championship to Alabama earlier this year but OSU can take some consolation from its recent victory in a trademark case before the Sixth Circuit Court of...more

WilmerHale

USPTO/PTAB Update - March 2021

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USPTO News - ..Administrative Patent Judges Michael Cygan and Kristi L. R. Sawert, and Patent Attorney Thomas Volper discussed the one-year ex parte appeal, Fast-Track Appeals Pilot Program, and what happens after PTAB...more

Holland & Knight LLP

Patent Directed to Countering Credit Card Fraud is an Invalid Abstract Idea Under Section 101

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In the case of In Re: SARADA MOHAPATRA, Appellant, No. 2020-1935, 2021 WL 408755 (Fed. Cir. Feb. 5, 2021), Sarada Mohapatra sought to overturn a decision of the Patent Trial and Appeal Board (PTAB), holding that his patent...more

McDermott Will & Emery

US-China Agreement Supports International Injunction Against Alleged Chinese Counterfeiter Under State Law

Addressing for the first time whether state law has extraterritorial scope, the US Court of Appeals for the Sixth Circuit upheld a worldwide preliminary injunction against an alleged Chinese counterfeiter’s use of alleged...more

McDermott Will & Emery

No Appellate Jurisdiction to Review Post-Verdict Appeal of Previously Denied SJ Motion

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In a closely watched trademark/counterfeiting case, the US Court of Appeals for the Second Circuit affirmed a judgment for contributory infringement, award of permanent injunction and monetary damage award against a...more

Proskauer - Advertising Law

2020 Advertising Law Year in Review

While 2020 was an eventful year in the world of advertising law, it feels wrong to begin any type of “year in review” without acknowledging the global events of this year, and the challenges they have brought to every...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

Dorsey & Whitney LLP

9th Circuit: Counterfeiting Claim Requires Court to Evaluate Likelihood of Confusion by Comparing Products as a Whole, Not Just...

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Does the Lanham Act require a plaintiff to show a likelihood of confusion to prevail on a counterfeiting claim? And if so, should the court simply compare the marks at issue, or look beyond them to the products themselves and...more

ArentFox Schiff

Don’t Bank on the Billions: Chinese Banks Appeal to Second Circuit in Effort to Dodge Fine for Failing to Help Enforce $1.8...

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The Bank of China and four other Chinese banks (the Banks) are urging the Second Circuit to reject a requested $150 million contempt sanction for allegedly perpetuating the sale of counterfeit Nike and Converse products by...more

McDermott Will & Emery

Eye Don’t: No Counterfeiting Without Likelihood of Confusion

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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

Jones Day

JONES DAY TALKS®: Tiffany v. Costco Raises Trademark Infringement, Counterfeiting Questions

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A federal appeals court has overturned Tiffany & Co’s $21 million judgment against Costco Wholesale over the retail chain’s sale of diamond engagement rings with the "Tiffany" name. Jones Day partners Meredith Wilkes and...more

McDermott Will & Emery

Diamonds to Dust? Too Many Factual Disputes Precludes Summary Judgment

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The US Court of Appeals for the Second Circuit vacated a district court’s summary judgment grant in favor of a fine jewelry producer for trademark infringement, counterfeiting and unfair competition because factual disputes...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - March 2020: Certification Marks: Better to Ask Permission than Forgiveness

In a recent Federal Circuit ruling, ICCS USA Corp. v. United States, 2019-1561 (Fed. Cir. March 11, 2020), the Court affirmed a decision by the U.S. Court of International Trade with respect to misuse of a certification mark...more

Fenwick & West LLP

Eleventh Circuit Affirms Contributory Trademark Infringement Award

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The United States Court of Appeals for the Eleventh Circuit affirmed liability under the “know or has reason to know” standard for contributory trademark infringement in Luxottica Group, S.p.A. v. Airport Mini Mall, a case...more

Shutts & Bowen LLP

Landlord Liable for Subtenants’ Trademark Infringement

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If you asked most commercial landlords what keeps them up at night, they probably wouldn’t say that they worry about their tenants committing trademark infringement.  Granted, trademark infringement is not likely to be an...more

McDermott Will & Emery

Fifth Circuit Schools Plaintiff on Likelihood of Confusion

Addressing whether the name of a public school district’s summer reading program infringed upon an education services company’s trademarks related to a literacy incentive program, the US Court of Appeals for the Fifth Circuit...more

Hogan Lovells

UK Supreme Court holds rights-holders should bear the costs of web-blocking injunctions

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The Supreme Court handed down its much anticipated judgment in Cartier International AG v British Telecommunications Plc yesterday. ...more

Harris Beach PLLC

Significant Intellectual Property Trademark Decisions

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2017 was a year filled with significant developments in case law for trademarks. The below rulings highlight some successes and obstacles faced by companies in the protection of their trademarks and their brand as a whole. ...more

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