The U. S. Court of Appeals for the Federal Circuit reversed the Trademark Trial and Appeal Board’s (the Board) decision, concluding that the trademark TAKETEN used for a residential health improvement program can co-exist...more
On December 2, 2014, the United States Supreme Court heard oral argument in B&B Hardware, Inc. v. Hargis Industries, Inc.. The question before the Supreme Court is how much deference, if any, a federal district court hearing...more
Minnesota is known as the North Star State – L’Étoile du Nord. The state of hipsters, unique dining experiences, bitter cold winters, gorgeous summer nights, and fantastic craft brewers also has an impressive craft cocktail...more
On January 20, 2015, the U.S. Supreme Court, in a unanimous decision written by Justice Sonya Sotomayor, issued its first trademark ruling in more than a decade. The Court held that “trademark tacking” is a factual issue...more
The beer industry is rife with trademark legal issues. We’ve discussed quite a fe here, including disputes over brewery names, attempts to register as a trademark the design of a beer glass, or the longstanding issue of...more
A few years ago, I wrote a column addressing a case in which Pom Wonderful LLC sued Coca Cola Company in connection with the marketing of one of its pomegranate-blueberry juice products. That case dealt with whether one of...more
The United States Supreme Court settles circuit split, ruling that juries determine if a party’s revisions to a trademark impart the same commercial impression to consumers.
Trademark owners often update their marks...more
When Fortres Grand Corporation saw sales of its software program drop, it blamed – wait for it – Batman.
Fortres’ software, called “Clean Slate,” erases user changes to public computers upon reboot, thus returning the...more
In a unanimous ruling, the Supreme Court upheld the Ninth Circuit Hana Financial v. Hana Bank and ruled that the question of “tacking” — whether a party’s prior version of its trademark is so closely similar to the current...more
Sheppard Mullin’s intellectual property group prevailed before the United States Supreme Court in the trademark matter entitled Hana Financial v. Hana Bank. 574 U.S. ___ (2015). Justice Sotomayor, writing for a unanimous...more
Let’s suppose you’re a non-profit like the NRA, you sell stuff on your NRAstore.com, and you’d like to promote the fact that your website has over 30 product demonstration videos available that can easily be viewed online by...more
The likelihood of confusion test is often called the “cornerstone” of trademark infringement law. It may be in many circumstances, but it does not apply to allegations of infringement within expressive works, as the recent...more
On January 21, 2015, the Supreme Court issued a unanimous decision, affirming the ruling of the U.S. Court of Appeals for the Ninth Circuit, holding that trademark tacking is an inquiry that operates from the perspective of...more
On January 21, 2015, the U.S. Supreme Court in Hana Financial, Inc. v. Hana Bank, held that whether two trademarks are "legal equivalents" and thus may be "tacked" together for purposes of determining priority is a question...more
DISTRICT COURT CASES -
Akin Gump Wins Section 101 Motion to Dismiss, Invalidating 887 Patent Claims -
Following Supreme Court precedent set forth in Alice Corp. Pty. Ltd. v. CLS Bank International, Judge Sleet...more
The Supreme Court issued its first substantive trademark decision of the current term yesterday in Hana Financial, Inc. v. Hana Bank. The district court had charged the jury with determining whether Hana Bank’s original mark,...more
On January 21, 2015, the United States Supreme Court in Hana Financial, Inc. v. Hana Bank, case number 13-1211, unanimously held that in cases (1) that go to a jury and (2) whose facts do not warrant either summary judgment...more
As the brand manager or trademark counsel for Friendly’s, would you be friendly toward Freddy’s?
I remember the Friendly’s restaurant chain when we lived in Columbia, Maryland, back in the days when I clerked for a...more
On January 21, 2015, in its first substantive trademark case in over 10 years, the U. S. Supreme Court unanimously held that when a trademark owner attempts to establish priority based on an earlier use of a nearly-identical...more
On January 21, 2015, the Supreme Court of the United States issued a unanimous decision in Hana Financial, Inc. vs. Hana Bank, et. al., pertaining to a substantive trademark matter, namely, whether a judge or jury should...more
“Trademark tacking” is an issue of fact that must be decided by a jury, the U.S. Supreme Court has unanimously ruled in Hana Financial, Inc. v. Hana Bank, et al.
“Trademark tacking” is the doctrine by which a trademark...more
In its first substantive trademark ruling in more than a decade, the U.S. Supreme Court unanimously held on January 21, in Hana Financial, Inc. v. Hana Bank et al., No. 13-1211, that tacking – which is whether two trademarks...more
In a recent case, Hana Financial Inc. v. Hana Bank et al., the Supreme Court of the United States was presented with the question of whether a judge or a jury should determine if tacking was available in a particular...more
In the first substantial trademark case in over a decade, the Supreme Court unanimously decided that a jury can apply the tacking doctrine and decide whether two trademarks, used by a single party, convey the same commercial...more
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