Trademark Litigation

News & Analysis as of

The Second Circuit Re-Visits Dawn Donut and the Geographic Scope of Injunctive Relief in Trademark Cases

More than half a century ago, the Court of Appeals for the Second Circuit issued an influential decision in Dawn Donut Co. v. Hart’s Food Stores, Inc., concerning the proper scope of injunctive relief in a trademark...more

Filing of Cancellation Prior to Registration’s Fifth Anniversary Allows Later Addition of Otherwise Time-Barred Non-use Claim

Ashland Licensing & Intellectual Property LLC (“Ashland”) petitioned on June 6, 2013, to cancel two registrations owned by Sunpoint International Group USA Corp. (“Sunpoint”). Following discovery, Ashland moved to amend to...more

HAVANA CLUB: Where’s the Rum Gone?

You’d probably assume no TTAB proceedings originated in 1995 remain active, but the HAVANA CLUB dispute has some serious staying power. As U.S.-Cuba relations unthaw, one particular trademark battle is also returning to...more

Federal Circuit Skewers Trademark Applicant

In In re Cordua Restaurants, Inc., [2015-1432] (May 13, 2016), the Federal Circuit affirmed the refusal of registration of the stylized mark CHURRASCOS for restaurant services on the ground that term is...more

Copyright and Trademark Case Review: Sibling Rivalry, Grilled Meat and Attorneys' Fees

Copyright Opinions - Sixth Circuit Upholds Siblings' Termination of Brother's Copyright Assignment: Brumley v. Albert E. Brumley & Sons, Inc., No. 15-5429 (6th Cir. May 16, 2016) - Sutton, J. In a declaratory...more

Nominative Fair Use: The Second Circuit Joins Neither The Third Nor Ninth Circuits In Its Approach

In an important decision delineating the boundaries of fair use of another person’s trademark, the Second Circuit announced a standard by which nominative fair use of a trademark will be evaluated in that Circuit in...more

Tyson Foods Knocks It Out of the Park in Lanham Act Dispute over Hot Dogs

Baseball parks and hot dogs are staples of Americana. So, it is no surprise that both were recently on display in a Lanham Act dispute in the U.S. District Court for the Eastern District of Pennsylvania. The court’s...more

USPTO Throws in the Towel in Dispute With Federal Judge

In an earlier post, we discussed at length the curious case of The Board of Trustees of the University of Alabama and Paul W. Bryant, Jr. v. Houndstooth Mafia Enterprises LLC et al. Surprisingly, this dispute came to an...more

En Banc Reconsideration Sought in FLANAX Case

Belmora LLC filed a petition for reconsideration en banc of the Fourth Circuit’s FLANAX decision in Belmora LLC v Bayer Consumer Care AG, Appeal No. 15-1335 (4th Cir. March 23, 2016). As we previously have blogged...more

5th Circuit Adds Fuel to the Octane Fitness Fire in Lanham Act Cases

The prospect of recovering attorneys’ fees after notching a victory under the Lanham Act just got a bit rosier–at least if you find yourself prevailing in the 5th Circuit. The Lanham Act allows the recovery of attorneys’...more

Is Evidence of Confusion Really Necessary to Succeed in a Trademark Infringement Case?

It is not every day that a massive international TV hit show is found to infringe a trade mark. A decision of the English High Court, approved recently by the Court of Appeal, held that the popular 20th Century Fox teenage...more

Client Alert: A WHOLE NEW BALL GAME - Implications for Brand Owners of Proposed Rule Changes in the TTAB and the Actual Effects...

Trademark litigation has recently undergone, and continues to undergo, a number of important changes that may significantly affect the strategy of corporate counsel and trademark practitioners in managing these types of...more

Panera and Great Harvest Argue over Tagline

Panera Bread and the Great Harvest Bread Co. will not be breaking bread together anytime soon. To the contrary, Great Harvest recently filed a trademark lawsuit against Panera over Panera’s “food as it should be” campaign,...more

The Slants and the Future of Disparaging Trademarks

Trademark and copyright law are in a constant struggle with the right of free expression guaranteed under the First Amendment of the US Constitution. This is unavoidable. Copyright laws were enacted to protect authors of...more

Pro Football Calls SCOTUS Audible

As we noted here last week, the Director of the USPTO filed a petition for writ of certiorari to the U.S. Supreme Court requesting that it review the Federal Circuit’s en banc decision, In re Tam. That decision held Section...more

Who Should Own a Trademark Registration? The Case of the Not-So-Related Parent Company

A recent precedential Trademark Trial and Appeal Board decision provides valuable guidance on the proper allocation of trademark registration ownership as between a corporate parent and a subsidiary, highlighting the perils...more

What’s That Sound? It Might Just Be a Trademark.

Trademarks are not only words or logos, but can come in many other forms, including sounds. In the words of the Trademark Trial and Appeal Board in the case In re Gen. Electric Broad. Co., 199 USPQ 560, 563 (TTAB 1978),...more

Federal Judge vs. TTAB – Trademark Battle over Bear Bryant’s Houndstooth Hat

The case of The Board of Trustees of the University of Alabama and Paul W. Bryant, Jr. v. Houndstooth Mafia Enterprises LLC et al. showcases an unusual clash between a federal judge and the Trademark Trial and Appeal Board...more

Although Healthy Hemp May do Many Things, It Does Not Function As a Trademark

In a non-precedential decision in In re French Meadow Organic Bakery LLC, Serial No 86243820 (February 4 2016), the Trademark Trial and Appeal Board (TTAB) held that HEALTHY HEMP was merely descriptive of “bakery goods;...more

Copyright and Trademark Case Review: FLANAX, Fishing Tackle, Football Players and More

Summaries of Recent Precedential and Informative Appellate Opinions - Trademark Opinions - Owners of Foreign Marks May Sue Under Lanham Act Without Using Marks in the US: Belmora LLC v. Bayer Consumer Care AG,...more

Fourth Circuit Extends Section 43(a) Lanham Act Standing to Companies Not Selling Their Product or Using Their Mark in the U.S.

Last week, an appellate court held that a plaintiff has standing to bring a false association and false advertising claim under Section 43(a) of the Lanham Act, even though it did not use its mark or sell its competing...more

Recent Events in the News Highlight the Importance of Registering Trademarks with the USPTO

Last week, New Belgium Brewing Company and Oasis Texas Brewing Company settled a trademark dispute between the companies that began in 2014. The two breweries were disputing which of them had the right to use the name “Slow...more

Trademark Series: Can a Geographical Name be a Trademark?

Let’s take an example. Is the word PARIS registrable as a trademark in Canada? A quick search of the registry shows that there are over 250 registered marks which contain the word PARIS for everything from jewelry to software...more

Rolls-Royce & the Rapper: Social Media Activity Helps Decide a Trademark Tussle

We recently wrote about a musician who got into some trouble with a court by using social media to flaunt images of hundred dollar bills after he had filed for bankruptcy. Now, an Atlanta-based rapper known as Rolls Royce...more

No Room at the USPTO: TTAB Rejects Booking.com Trademarks As Generic

Many online businesses prefer to use domain names that communicate as clearly and concisely as possible the types of goods and services offered on their websites. That may be good marketing strategy. But as a recent decision...more

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