Trademark Litigation

News & Analysis as of

The B&B Hardware Case and its Potential Impact on Trademark Litigation

Trademark disputes can often play out in a number of forums. Trademark disputes often start off in the marketplace, with a confused consumer, and then proceed to litigation in several tribunals including the Trademark Trial...more

Federal Circuit: Lack of Bona Fide Intent to Use at the Time of Filing Fatal to Trademark Application

In a recent ruling the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board (TTAB) sustaining an opposition against a trademark application on the grounds that the applicant failed to prove that it...more

Typosquatting for Phone Numbers is not Infringement

Many Internet users today are familiar with the scam of “typosquatting” – which is when a company registers a domain name that is similar to a well-known domain name, and waits for people to inevitably make typos and get sent...more

TTAB Balks at Parody Argument in Yankees Trademark Case

In honor of Foley Hoag’s new New York office, we here at the Boston office reluctantly present a victory by the New York Yankees — albeit not one won on the baseball diamond. In a trademark opposition that has been...more

WD-40 Squeaks By On Appeal Of Its Summary Judgment Win On “Long-Term Corrosion Inhibitor”

In Sorensen v. WD-40 Company, the Seventh Circuit affirmed the district court’s finding that the use of the term “inhibitor” for a rust-inhibitor product was not trademark infringement and constituted a descriptive fair use. ...more

Power to the People: EU Court Rules LEGO’s “Minifigs” Are Protectable Trademarks

In our previous post, LEGO Tries New Angle To Guard Its IP Against Upstart MEGA BLOKS, we wrote about LEGO’s efforts to protect its IP against alleged knock-off brick makers. LEGO has now scored a victory in its ongoing...more

Four Stripes and You’re Out: Adidas Sues Marc By Marc Jacobs

On April 8, 2015, Adidas filed suit against Marc by Marc Jacobs (“Marc”) in the United States District Court of Oregon for trademark infringement, unfair competition, trademark dilution, and deceptive trade practices based on...more

Party Over for Claimed Mardi Gras Bead Dog Trademarks - Nola Spice Designs, L.L.C. v. Haydel Enterprises, Inc., et. al.

Addressing issues of trademark validity and substantial similarity in a copyright infringement claim, the U.S. Court of Appeals for the Fifth Circuit upheld a district court’s grant of summary judgment that the challenged...more

Pre-Arbitration Injunction May Only Preserve Status Quo - Benihana, Inc. v. Benihana of Tokyo, LLC

In the context of a dispute surrounding a breach of a trademark license agreement that provided for arbitration of certain disputes, the U.S. Court of Appeals for the Second Circuit concluded that it was inappropriate for a...more

MBHB Snippets: Review of Developments in Intellectual Property Law: Spring 2015 - Vol. 13, Issue 2

In This Issue: - After B&B Hardware, What is the Full Scope of Estoppel Arising From a PTAB Decision in District Court Litigation? - When You Don’t Know What You Know: The Role of Unappreciated Inherency in the...more

Political Speech, Trademarks And The Definition of “Goods or Services”

Last month witnessed the resolution of two trademark infringement cases involving the relationship between political activities and the definition of “goods or services.” On May 18, 2015, State Senator Steve Hershey gave up...more

Law à la Mode - Edition 16 - May 2015 (Global)

In This Issues: - Key Considerations: For Negotiating Electronic Point Of Sale Solution Agreements - Fashion Forward And Tech Savvy: The Co-Branding Of Wearable Technologies - The Internet Of Things: The...more

Meet Batman’s New (Trademark) Nemesis: Rihanna

After making (and remaking (and re-remaking)) movies, sequels, and prequels for nearly every comic book character in its library, it appears that DC Comics has finally found a new foe for its Batman franchise: music and...more

Trademark Bully Or Responsible Trademark Owner?

Travelers Cos., a large property-casualty insurer, sent a cease and desist letter to a small consulting firm in Anchorage, AK demanding that it stop using the image of an umbrella in connection with its business. Travelers...more

For Game of Thrones Beer, Quoth the RAVEN “Nevermore”

The HBO show “Game of Thrones” is a popular show for nerds and non-nerds alike. And if you also happen to be a beer nerd, Brewery Ommegang has been making a series of Game of Thrones-inspired beers in a collaboration with...more

Pretzel Logic: Federal Circuit holds that TTAB Failed to Consider Mark as a Whole

An application to register PRETZEL CRISPS as a mark will live another day, thanks to a Federal Circuit opinion reversing a TTAB decision that had canceled the mark on grounds of genericness....more

Supreme Court Holds that Issue Preclusion May Apply to TTAB Decisions

In a 7-2 decision authored by Justice Alito, the Supreme Court held on March 24, 2015, that issue preclusion may apply to Trademark Trial and Appeal Board (TTAB) decisions. The case, B&B Hardware, Inc. v. Hargis Industries,...more

IP Dispute Resolution Review Newsletter, Spring 2015

In This Issue: - The New “Clear Error” Standard of Review in Patent Infringement Mediation - Trademark Trial Appeal Board Decisions Now Have Preclusive Effect - Engaging Panelists for Neutral Analysis Provides...more

SCOTUS Opts Not To Remand Case Raising Preclusion Question Answered in B&B Hardware

On April 27, the Supreme Court surprisingly denied certiorari in Escamilla v. M2 Tech., Inc., U.S., No. 14-1012 rather than remanding the case for further consideration in light of the High Court's recent decision in B&B...more

Fourth Circuit Cleans Up Damages Award in Paper Towel Dispute and Sets Standard for the Award of Fees in Trademark Cases

In Georgia-Pac. Consumer Products LP v. von Drehle Corp., ___ F.3d ___, 2015 WL 1404765 (4th Cir. Mar. 30, 2015), as amended (Apr. 15, 2015), the Fourth Circuit reversed a damages award and clarified the standard for damages...more

Supreme Court Holds that TTAB Decisions May Have Preclusive Effect, Raising Stakes for Trademark Agency Proceedings

On March 24, the US Supreme Court issued a decision that is likely to raise the stakes of proceedings before the Trademark Trial and Appeal Board (TTAB). In B&B Hardware, Inc.v. Hargis Industries, Inc., No. 13-352 (March 24,...more

Coke Walks Tightrope in ZERO Branding

As you may recall, last September we wrote about Coca-Cola’s Significant Interest in Zero Marks, discussing Coca-Cola’s defense of a trademark infringement suit brought by an individual named Mirza Baig, who claimed rights in...more

Trademark/Copyright Litigation Update - March 2015

Supreme Court Confirms Jury Role in Trademark “Tacking.” Issuing its first substantive trademark decision in a decade, the Supreme Court unanimously held in January 2015 that the question of whether two trademarks are legal...more

An Empirical Lesson on Bluffing in Trademark Disputes

While it’s a great song, Kenny Rogers’ classic The Gambler doesn’t provide much guidance on winning a game of poker....more

Supreme Court Rules That TTAB Decisions Can Have Preclusive Effect in Infringement Actions

The ruling creates new risks to assess in TTAB litigation strategies. On March 24, the US Supreme Court decided in the case of B&B Hardware, Inc. v. Hargis Industries, Inc. that a decision by the Trademark Trial and...more

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