News & Analysis as of

Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc. - USDC, N.D. California, November 24, 2014

Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc. - USDC, N.D. California, November 24, 2014: District court grants summary judgment in favor of publisher of military-action video game Call of Duty: Ghosts on trademark...more

Channeling Justice Ginsburg of U.S. Supreme Court on the Right to Register a Trademark

We sounded the alarm exactly six months ago about a trademark case of great importance to brand owners: B&B Hardware v. Hargis Industries. Earlier this week, the U.S. Supreme Court heard oral argument in the case, and here is...more

Wrigley Opposes Registration of “WTF” Mark

Imagine you’re standing in the checkout aisle of your local grocery store, and as your eyes wander across the display of tasty treats and candy confections you spot the mark WTF. Would you be offended? ...more

Octane Fitness Changes the Landscape for Trademark Cases Too

Fair Wind Sailing, Inc. v. Dempster - Addressing for the first time the application of the Supreme Court decision in Octane Fitness to trademark cases, the U.S. Court of Appeals for the Third Circuit held that a...more

Microsoft’s New Battle: Toads

It isn’t often that Forbes and Arcade Sushi are reporting on the same story. But some news is so big, so ground breaking, and so important that all media outlets cannot, in good moral consciousness, fail to comply with their...more

Pizza and the Edge of the Trademark Universe

Can you trademark a pizza flavor? A recent decision says no and offers a glimpse at the edge of the known trademark universe. The doctrines of functionality and inherent distinctiveness, like the force of gravity or tendrils...more

Unincorporated Associations Can Own and Enforce Trademark Rights

Southern California Darts Association v. Zaffina - The U.S. Court of Appeals for the Ninth Circuit affirmed a grant of summary judgment and a permanent injunction in favor of a common law trademark owner whose marks...more

Advertising Law - October 2014

SPECIAL FOCUS: The Impact of eBay on Lanham Act False Advertising Litigation - A recent opinion by the United States Court of Appeals for the Third Circuit held that the Supreme Court’s landmark decision in eBay is...more

Seasoning Maker Swamp Dust LLC Files Trademark Complaint Against Competitor Cajun Wholesale

On September 2, 2014, LaGrange, Georgia-based company Swamp Dust, LLC filed a complaint against Louisiana-based Cajun Wholesale Distributing, Inc. and its director Ritchie Allen Romero (collectively, the “Defendants”)...more

Res judicata Does Not Bar Claims Arising After Prior Litigation, Even One Based on Similar Conduct

TechnoMarine SA v. Giftports Inc. - Addressing whether a prior litigation between the parties resolving claims of unfair competition bars subsequent suit over similar conduct occurring after settlement of the earlier...more

Washington Redskins Challenge the Constitutionality of Section 2(a) of the Lanham Act

The Washington Redskins trademark controversy is far from over. Despite the fact that certain news and sports commentators and mainstream newspapers and organizations have announced that they will no longer use the term...more

Ninth Circuit Allows Delinquent Corporation To Sue And Own Trademarks

In Southern California Darts Association v. Zaffina, the Ninth Circuit held that a corporation, whose charter had been suspended by the state of California in 1977, had standing in 2012 to sue and to own trademarks as an...more

Unincorporated Associations Can Protect Unregistered Trademarks Under The Lanham Act

Can an unincorporated association own a trade mark and enforce trademark rights under the Lanham Act? The Ninth Circuit says that it can. (Southern California Darts Association v. Zaffina, No. 13-55780, 2014 U.S. App. Lexis...more

Redskins Ruling is Consistent with TTAB Precedent

In Blackhorse v. Pro-Football Inc., the U.S. Patent and Trademark Office once again canceled various registrations for trademarks used by the Washington Redskins football team as being disparaging to Native Americans. While...more

Could Offensive Trademarks Find Refuge in Common Law?

The 177-page tome the Trademark Trial and Appeal Board (TTAB) just issued in Blackhorse v. Pro-Football Inc. is remarkable for its length and its subject matter, cancellation of the controversial REDSKINS mark as disparaging...more

Trade Dress and the Functionality Doctrine: At the Intersection of Trademark and Patent Law

Earlier this week, the Fourth Circuit reversed the dismissal of a Lanham Act claim for trade dress infringement involving a pixel pattern embossed on an absorbent textile-like product used in medical supplies, hygiene...more

Flummoxed By FLANAX: TTAB Cancels Trademark Registration Based On Misrepresentation As To Source Despite No Use In U.S. By...

In an interesting precedential decision, the Trademark Trial and Appeal Board (TTAB) canceled a registration for FLANAX despite the fact that the petitioner, Bayer Consumer Care AG, did not use FLANAX in the United States,...more

Intent to Lose? Be Wary of Pitfalls Involving Intent-to-Use Trademark Applications.

Merger and Acquisitions often involve the acquisition and/or assignment of trademarks. Companies acquiring trademarks must beware of potential problems lurking with intent-to-use (ITU) trademark applications (or applications...more

H&R Block Seeks to Enforce “Peace of Mind” Trademark Against Fast Cash Taxes, LLC

On March 28, 2014, HRB Innovations, Inc. (“HRBI”) of Las Vegas, Nevada, and HRB Tax Group, Inc. (“HRBTG”) of Kansas City, Missouri, filed a complaint against Fast Cash Taxes, LLC (“FCT”) of Doraville, Georgia and Gregory A....more

Ninth Circuit Confirms that Trademark Cancellation Is a Remedy and Not a Cause of Action

Airs Aromatics v. Victoria’s Secret - Dismissing a trademark cancellation claim against Victoria’s Secret’s DREAM ANGELS trademarks, the U.S. Court of Appeals for the Ninth Circuit ruled that federal trademark law...more

Bait-And-Switch Trademark Case Defines Limits Of Initial Interest Confusion

In its recent decision in Sussman-Automatic v. Spa World, the Eastern District of New York dismissed a plaintiff’s trademark infringement claims, while allowing its claims for false advertising based on the same conduct to...more

Academic Advertising Seeks to Protect “Community College Jobs” as Trademark

On April 15, 2014, Academic Advertising, LLC (“Academic”), a Georgia based limited liability company, brought suit against Jobelephant.com, Inc., and Michael Ang (“Jobelephant”), of San Diego, California, for trademark...more

MarkIt to Market - April 2014

The April issue of Sterne Kessler's MarkIt to MarketTM newsletter contains a cautionary tale regarding use of social media, a clarified test for false advertising standing, updates to Canada's Trade-marks Act, and an updated...more

Supreme Court Clarifies Standing Requirements in False Advertising Lawsuits

On March 25, the U.S. Supreme Court clarified who has the right to assert a federal claim for false advertising. In a unanimous ruling, the Court established that one company can sue another under the Lanham Act, the federal...more

Supreme Court Inks Uniform Standing Test for Lanham Act False Advertising Claims

Key Takeaways - - The US Supreme Court created a uniform test for standing for false advertising claims under Section 43(a) of the Lanham Act, resolving a three-way circuit split. - The new standing test...more

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