Trademark Litigation

News & Analysis as of

Role Reversal: David Bullying Goliath?

When claims of trademark infringement make the news, it is often because a billion dollar corporation is suing old man Donaldson’s tavern for trademark infringement (Although, McDonaldson’s might have been a bad choice…). ...more

Target prevents registration of mark with three-ring design

In Target Brands Inc v Artificer Life Corp (Opposition Nos 91206421 and 91206422), the Trademark Trial and Appeal Board (TTAB) has upheld Target Brands Inc’s opposition against the registration of a trademark containing a...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

Cert Alert: Is Trademark Tacking a Fact Issue or Legal Issue?

Hana Financial, Inc. v. Hana Bank & Hana Financial Group - In trademark law “tacking” is a practice whereby an applicant for registration can establish an earlier priority date by adding the period of use of an older...more

Cert Alert: Is TTAB Decision on Likelihood of Confusion Preclusive?

B&B Hardware, Inc. v. Hargis Industries, Inc. - The U.S. Supreme Court has agreed to review a decision of the U.S. Court of Appeals for the Eighth Circuit (in turn affirming a district court decision) finding the mark...more

The Eighth Circuit Weighs In on Trademark Licenses as Executory Contracts in Bankruptcy Proceedings

Lewis Bros. Bakeries, Inc. v. Interstate Brands Corp. (In re Interstate Bakeries Corp.) - An en banc panel of the U.S. Court of Appeals for the Eighth Circuit reversed an earlier ruling of the same court finding that a...more

A “Giant” Decision: Trademark Trial and Appeal Board Denies Registration of “G-Men” to the New York Giants

It’s not just the Redskins anymore! Following the cancellation of the Redskins trademark earlier this summer, the Trademark Trial and Appeal Board has issued another football related decision regarding the New York Giants’...more

Mister Softee vs. Master Softee: Non-Compete & Trademark Ice Cream Fight in the SDNY

Dimitrios Tsirkos first became a Mister Softee franchisee in the mid 1980’s. To be clear, we are talking about the ice cream truck business. Over the years, Tsirkos entered several franchise agreements with Mister Softee and...more

Tesla Successfully Resolves Chinese Trademark Dispute

Further to our recent Tesla Motors post, Bloomberg and BNA report that Tesla has resolved its trademark dispute with Zhan Baosheng, the individual who registered the TESLA marks in China. ...more

How The White Tower Burgers Trademark White-Washed, Washed Out, Then Washed Up

If you happen to be in the Boston area this August, and you are sick of the Freedom Trail, here’s an idea for a little trademark trail. Start in Cambridge at Moody’s Falafel Palace and head downtown past Kneeland Street to...more

An Expensive Reminder to Secure Trademark Rights Prior to Foreign Expansion

Electric car manufacturer Tesla Motors was recently sued in China by businessman Zhan Baosheng. Baosheng registered the TESLA trademark in China in 2006, prior to Tesla's entry into the Chinese market....more

Duke, Hershey, and Winston: Who gets to trademark a famous name?

Common sense tells you that you can always use your own name. But under trademark law, that’s not always true. Three recent cases illustrate this conundrum, which plays a major role in many Internet marketing and domain name...more

MarkIt to Market - July 2014

The July issue of Sterne Kessler's MarkIt to MarketTM newsletter contains an analysis of the TESLA trademark lawsuit in China, a reminder to look beyond the register to determine whether trademarks in the U.S. are both...more

The Trademark “Chaff” Quandary: PTO Report On Post-Registration Proof of Use

As any IP lawyer will readily admit, trademark practice before the United States Patent & Trademark Office (PTO) comes with its fair share of annoyances: inconsistent treatment of similar applications, unreasonably stringent...more

Trademark Review (July 2014)

Past Disparagement Results in Present Cancellation: REDSKINS Marks Cancelled by TTAB - The Trademark Trial and Appeal Board (“TTAB”) cancelled six registrations for marks consisting in whole or in part of the term...more

Prior Publication Precludes Coverage for Advertising Injury

In Street Surfing, LLC v. Great American E&S Ins. Co., 752 F.3d 853 (9th Cir. 2014), the court held that the prior publication exclusion precluded coverage to Street Surfing, LLC (“Street Surfing”) for an underlying lawsuit...more

“Big Chocolate” Gets Injunction Against Whack-A-Mole Senator; Trademark “Services” Include Political Activities

Last week, Judge William Quarles of the District of Maryland issued an injunction preventing Maryland Republican State Senator Steve Hershey from using his own campaign literature. The case was brought by the Hershey...more

Believe What You Want, But Who Will Win?

In case you were unaware, the (Men’s) World Cup happened over the last two months and is now over (the Women’s World Cup is next year, in Canada). I Believe that if you followed Team USA at all, you probably heard the...more

10 Popular Reads Covering Latest European Union Developments

Recap of popular updates covering latest developments in the European Union....more

And Speaking of Foreign Trademark Filing Strategy: Tesla Motors is Sued in China for Trademark Infringment

Further to our recent post about the worldwide trademark trials and tribulations of Anheuser-Busch and its BUDWEISER trademark, we now report that the up-and-coming electric car manufacturer Tesla Motors Inc. has been sued...more

Dictionaries and Trade Mark

Hello. My name is Paul Harris, and this is my ‘Letter from Europe’, the first in what will be a fortnightly communique of my thoughts on the commercial world, and IP in particular. After all, I have been doing this for more...more

Trademark License Not Subject To Rejection In Bankruptcy In Certain Circumstances

Pursuant to 11 U.S.C. § 365, a debtor or bankruptcy trustee has the option, subject to court approval, of electing one of the following three alternatives with respect to an executory contract: (a) assuming the contract, (b)...more

Supreme Court To Decide Preclusive Effect of TTAB Decisions on Subsequent Court Actions

Last week the Supreme Court granted certiorari to determine whether decisions of the Trademark Trial and Appeals Board (TTAB) concerning likelihood of confusion preclude relitigating that issue in subsequent infringement...more

Insurance Recovery Law - July 2014

Second Circuit: Insurer Must Defend Where Factual Allegations Create a Possibility of Coverage - Why it matters: In a recent pro-policyholder decision, the Second Circuit, applying New York law, reminded...more

UPDATE: U.S. Supreme Court Will Decide What Preclusive Effect, If Any, Should Be Given to Likelihood of Confusion Findings by the...

As we reported in our May 29 client alert, the Solicitor General submitted an amicus brief recommending that the Supreme Court grant a petition for certiorari seeking a determination of whether likelihood of confusion...more

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