News & Analysis as of

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

Victoria’s Secret Defends Dream Angels?

How important is the DREAM ANGELS brand to Victoria’s Secret? Victoria’s Secret has a robust portfolio of federally-registered trademarks to protect the DREAM ANGELS sub-brand for undergarments and a line of personal...more

Trader Joe’s vs. Pirate Joe’s Update

The very popular US grocery retailer Trader Joe’s has a following among Canadian consumers. Capitalizing on this popularity north of the border, a Vancouver entrepreneur has made it his business to buy genuine Trader...more

Single Color Trademark Developments

Over the past five years, we have spilled a lot of black digital ink discussing trademark ownership of single colors. Color continues to be an important aspect of branding and differentiation in a variety of markets,...more

Bungle in the Beer Tapper Jungle?

The Sports Bar in the Mirage Resort & Casino, located in Las Vegas, Nevada, is currently sporting a pretty interesting collection of tap beers, from left to right: Bud Light, Goose Island Honker’s Ale, Stella Artois,...more

Houston, We Have a Problem: City Petitions the US Supreme Court to Register Its Official Seal as a Trademark

The City of Houston, Texas has filed a Petition For Writ Of Certiorari with the Supreme Court of the United States asking the Court to interpret Section 2(b) of the Lanham Act to determine whether it prohibits a government...more

Show you[']r[e] what?! It’s a battle of the breeches

“Yes!” I exclaimed as I scrolled through my Facebook feed two days ago, “Perfect timing! I’ll get to follow-up on Brent Lorentz’s ‘You’ve gotta be shipping me!!’ DuetsBlog post from earlier this year....more

Google’s Latest Trademark Bugaboo?

Fame tends to attract attention, and imitation, especially unwanted imitation from, well, even pests. The Google trademark appears to have obtained such a high degree of fame that no third party can include the word “Google”...more

IP Update, Vol. 16, No. 7, July 2013

“Reverse Payment” Settlements Face Greater Antitrust Scrutiny Following U.S. Supreme Court Ruling in FTC v. Actavis: Federal Trade Commission v. Actavis, Inc. - Resolving a split among the U.S. Courts of Appeals, the...more

Recent Developments In Information Technology Law – Second Quarter 2013

In This Issue: - I. U.S. Supreme Court - A. Trademarks 3 - II. U.S. Courts of Appeal - A. Patents - B. Copyrights - C. Copyrights/Criminal - D. Trademarks - E. Trademarks/Unfair Trade...more

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