Trademark Litigation

News & Analysis as of

North Face Scales Sanyang Applications For Clothing and Services

In The North Face Apparel Corp. v. Sanyang Industry Co., Ltd., Opp. No. 91187593 (September 18, 2015), the Trademark Trial and Appeal Board (“TTAB”) handed The North Face Apparel Corp. (“The North Face”) significant victories...more

Pow! Boff! Thwack! Batmobile Wins Copyright Litigation

It's not every day a Ninth Circuit court opinion includes, "Holy copyright law, Batman!," or “To the Batmobile!” But in affirming a district court’s ruling in a copyright infringement case by DC Comics against the maker of...more

Chocolate Bear Beats Gummy Bear

Can a wordmark with a particular meaning be infringed by a three-dimensional product design? Disputes regarding the infringement of a wordmark by a purely figurative mark (and vice versa) have been the object of several...more

Is Gatorade Gonna Hate Hate Hate?

It may be because I attended her concert last weekend, but a new trademark lawsuit brought by the owner of the GATORADE mark made me think of Taylor Swift. One of her popular songs, “Shake it Off” has a chorus that says,...more

Of Slants, Skins and Signs: The Coming First Amendment Showdown

Are we heading for a constitutional showdown over Section 2(a) of the Lanham Act? Will the Supreme Court strike down this prohibition on disparaging marks as an abridgement of First Amendment rights? It is certainly...more

Marshmallow Justice: 10 Tales of Legal Fluff and Other Stuff

Just about one hundred years ago, Archibald Query of Somerville, Massachusetts invented the first commercial marshmallow cream, which he pedaled door-to-door in Union Square. Around 1917, he sold the recipe for $500 to two...more

A Wolf in Swiss Clothing: TTAB Finds No Bona Fide Intent to Use

The number of successful oppositions against trademark applications based on a claim that the applicant had “no bona fide intent to use” has been increasing in recent years. On September 10, 2015, in Swiss Grill Ltd. v. Wolf...more

Summary of Recent Precedential Trademark Trial and Appeal Board Decisions

From June through August 2015, the Trademark Trial & Appeal Board issued eleven precedential decisions. Over the course of the upcoming weeks, we will briefly summarize each opinion and a “take away” for brand owners and...more

The Survey Says: TIFFANY Is Not Generic for a Ring Setting

Last week, the Southern District of New York granted summary judgment to Tiffany & Co. on its trademark infringement claim against Costco Wholesale Corporation for selling rings advertised under the TIFFANY mark. Tiffany &...more

What Does It Take to Trademark Your Name? - Tartell, M.D. v. South Florida Sinus and Allergy Center, Inc., et al.

Addressing the question of when a professional name can be protected as a trademark, the U.S. Court of Appeals for the Eleventh Circuit found that the plaintiff doctor’s name had not acquired that distinction. Tartell, M.D....more

A Spin of the Wheel Results in Broader Injunctive Relief - CFE Racing Products, Inc. v. BMF Wheels, Inc.

Addressing numerous evidentiary issues arising during the course of a jury trial, as well as the scope of a permanent injunction, the U.S. Court of Appeals for the Sixth Circuit affirmed in part and remanded in part the...more

When Peace and Love Are Not Enough: Consider It All - Juice Generation, Inc. v. GS Enters., LLC

The U.S. Court of Appeals for the Federal Circuit reversed a refusal by the Trademark Trial and Appeal Board’s (TTAB or Board) to register the mark “PEACE LOVE AND JUICE” in connection with juice bar services due to...more

Do’s Search Results Constitute Trademark Infringement? - Multi Time Machine, Inc. v., Inc.

Holding that a reasonable jury could find that online retailer created a likelihood of consumer confusion through the format of its product search returns, the U.S. Court of Appeals for the Ninth Circuit reversed the district...more

Third Circuit Deciphers Proper Standard for Evidence of Actionable Confusion - Arrowpoint Capital Corp. v. Arrowpoint Asset Mgmt.,...

Addressing the standard for actionable confusion, the U.S. Court of Appeals for the Third Circuit reversed the district court’s denial of a motion for a preliminary injunction for limiting what constitutes actionable...more

Proof of Confusion Essential for Trademark Injunction - Arborjet, Inc. v. Rainbow Treecare Scientific Advancements, Inc.

Addressing the likelihood of success requirement for injunctive relief, the U.S. Court of Appeals for the First Circuit vacated an order requiring trademark attribution where the district court had not found a likelihood of...more

The Evolving Role of the Hashtag in Trademark Law

Oh, the once humble hashtag (or pound sign, number sign, octothorpe, etc.). For so long a symbol both ubiquitous and free from controversy, its new life as a go-to signifier of discussions and trending topics on Twitter has...more

I Think That I Shall Never See, Trademark Injunctions If Confusion Is Unlikely

In its recent decision in Arborjet, Inc. v. Rainbow Treecare Scientific Advancements, Inc., a case involving claims for breach of contract and trademark infringement, the U.S. Court of Appeals for the First Circuit affirmed a...more

Trademark Practitioners Beware: Issue Preclusion May Now Apply to TTAB Findings More Often Than You Think

Trademark owners and practitioners who took heart in the Supreme Court's seemingly confined holding that issue preclusion can but does not necessarily apply to likelihood of confusion determinations by the Trademark Trial and...more

August 2015: Trademark/Copyright Litigation Update

Federal Circuit Invalidates Apple’s iPhone Trade Dresses as Functional. On May 18, 2015, the Court of Appeals for the Federal Circuit reversed a judgment of the Northern District of California that Samsung had diluted Apple’s...more

No More Pussy-Footing Around: Consider Marks as a Whole in Light of Third-Party Uses

In Jack Wolfskin Aurrustung for Fraussen GmbH & Co. LGAA v. New Millennium Sports, S.L.U, [2014-1789] August 19, 2015, the Federal Circuit affirmed that New Millennium had not abandoned its mark by making changes to its...more

Pushing the Envelope on Initial Interest Confusion Claims — Multi Time Machine, Inc. v.

Consider this: You are shopping online and you type in the name of a brand of wristwatch. Perhaps you wanted to purchase that exact brand of watch, or perhaps you were looking for a selection of watches that included the...more

In Trademark Dispute, New Hampshire School Website Address Not Taken For Granite

New Hampshire is commonly referred to as the Granite State. In one recent trademark infringement case, however, a federal court in New Hampshire did not find a likelihood of consumer confusion between website addresses for...more

Dangers in Pro-se Federal Trademark Prosecution: Errors in Owner Identification Can Render a Seemingly Valid Registration Void

Many trademark owners choose to file and prosecute their own trademark applications before the United States Patent and Trademark Office (USPTO). The wisdom of filing these pro-se applications, however, is questionable in...more

Caveat Opposer: Preclusion Lurks at the TTAB

Recently, the Trademark Trial and Appeal Board (the “TTAB”) held that an unsuccessful opposer was precluded from later pursuing a cancellation against the same trademark owner, even though the opposer assumed a different...more

Timing Is Everything—Objective Evidence of Bona Fide Intent to Use Necessary at the Time of Filing Application - M.Z. Berger & Co....

Addressing what constitutes sufficient evidence of “bona fide intent” to use a trademark in commerce, the U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB or Board) decision...more

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