Trademarks, Dismissals

Unbranded Brandy: COGNAC Certification Mark Matters, Even in Hip-Hop

McDermott Will & Emery on 8/15/2024

The US Court of Appeals for the Federal Circuit vacated a ruling from the Trademark Trial & Appeal Board, disagreeing with the Board’s dismissal of Bureau National Interprofessionnel du Cognac’s opposition to a trademark...more

Trader Joe’s Labor Union Bags a Victory in Trademark Dispute

Dorsey & Whitney LLP on 3/13/2024

Trader Joe’s is a hugely popular grocery chain that has expanded from its Southern California origins to operate close to 600 stores across the United States. Although Trader Joe’s has traditionally had a reputation as an...more

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): Bertini v. Apple Inc., 63 F.4th 1373 (Fed. Cir. 2023)...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/2/2024

In June 2015, Apple began using the mark APPLE MUSIC for its streaming services and filed a trademark application seeking to register the mark for production and distribution of sound recordings and arranging, organizing,...more

The Time Node for Judging Whether the Prior Right Exists is the Date of Approval for Registration at the Latest | “象球” (Xiang Qiu...

Linda Liu & Partners on 12/28/2023

When applying for a trademark, the trademark owner shall not prejudice the prior rights of others, and shall fulfill the obligation of reasonable avoidance. However, considering that the trademark right has not been acquired...more

Missed Shot: Lawsuit Against Related Company Doesn’t Toll Prescriptive Period

McDermott Will & Emery on 10/12/2023

The US Court of Appeals for the Fifth Circuit affirmed a district court’s decision to dismiss claims under the Louisiana Unfair Trade Practices Act (LUTPA), finding that a dispute against a related company did not toll the...more

Just How Similar Must Competing Marks Be to Survive Dismissal?

McDermott Will & Emery on 10/5/2023

After a de novo review, the US Court of Appeals for the Sixth Circuit affirmed in part and reversed in part a district court’s motion to dismiss, finding the competing marks sufficiently similar to avoid dismissal, and the...more

What Barbenheimer Can Teach Us About Intellectual Property

Woods Rogers on 7/21/2023

Barbenheimer is a new term for consecutively watching the movies “Barbie” and “Oppenheimer.” In honor thereof, we present the Barbenheimer Legal Alert. Did you know Mattel sued, and lost, to stop the “Barbie Girl” song?...more

Personal Jurisdiction? Selling Products via Interactive Website Will Do It

McDermott Will & Emery on 7/13/2023

The US Court of Appeals for the Ninth Circuit reversed and remanded a district court’s dismissal for lack of personal jurisdiction, deciding that the sale of a product via an interactive website provides sufficient “minimum...more

And All That Jazz: Trademark Used for One Service Doesn’t Permit Tacking for Others

McDermott Will & Emery on 4/14/2023

Reversing the Trademark Trial & Appeal Board’s decision to dismiss an opposition, the US Court of Appeals for the Federal Circuit addressed the requirements for a trademark owner to employ “tacking” based on the use of a mark...more

Charter Schools Aren’t Immune from Trademark Suits

McDermott Will & Emery on 3/16/2023

The US Court of Appeals for the Fifth Circuit affirmed a district court’s dismissal of a trademark suit against a charter school operator and public school district in Texas but explained that the charter school was not...more

Single T-Shirt Sale Can’t Clothe Bare-Bones Personal Jurisdiction Claim

McDermott Will & Emery on 8/18/2022

The US Court of Appeals for the Eighth Circuit affirmed a district court’s dismissal of a trademark infringement suit for lack of personal jurisdiction, finding that the trademark owner failed to allege that the alleged...more

Déjà vu Decision on Likelihood of Confusion

McDermott Will & Emery on 5/19/2022

The US Court of Appeals for the Fifth Circuit affirmed a district court’s dismissal of a trademark suit that was essentially identical to a previous lawsuit that was dismissed based on a finding of lack of confusion....more

Evel Knievel Trademark Stunt Falls Short: Disney’s Toy Story 4 Character Found Non-infringing

ArentFox Schiff on 10/7/2021

A federal district court judge recently dismissed infringement claims brought against Disney and Pixar over the daredevil character Duke Caboom featured in Toy Story 4. A year ago, Evel Knievel's son filed the case as head of...more

Influenced by Social Media Marketing, the Ninth Circuit finds Personal Jurisdiction over Foreign Defendant under Federal Rule...

Dorsey & Whitney LLP on 9/10/2021

In a recent decision, the Ninth Circuit Court of Appeals found that an Australian cosmetic company is subject to the personal jurisdiction of a federal district court in California despite having no traditional “minimum...more

Zero Hero: Disclaiming Disputed Term Renders Dispute Moot

McDermott Will & Emery on 4/15/2021

The Trademark Trial & Appeal Board redesignated as precedential a decision dismissing a beverage company’s opposition to trademarks using the term “ZERO” for zero-calorie drinks after the trademark applicant disclaimed the...more

Agreement to One Is Not Consent to All

McDermott Will & Emery on 2/25/2021

Addressing a myriad of issues involving unauthorized use of professional models’ photographs for gentlemen’s clubs’ promotional materials, the US Court of Appeals for the Second Circuit held that the district court erred in...more

PC v. PC: Smart & Biggar prevails in dismissal of appeal on behalf of Pampered Chef

Smart & Biggar on 2/23/2021

On February 15, 2021, the Federal Court of Appeal issued its decision dismissing an appeal from the Federal Court’s trial decision in Loblaws Inc v Columbia Insurance Company, 2019 FC 961. As previously reported, Pampered...more

The Franchise Memorandum - Issue # 260

Lathrop GPM on 12/10/2020

Welcome to The Franchise Memorandum by Lathrop GPM, formerly known as The GPMemorandum. Periodically, The Franchise Memorandum focuses on topics primarily of interest to companies that use distributors and dealers rather than...more

GOOGLES Wins Right to Sue Google

McDermott Will & Emery on 7/9/2020

The US Court of Appeals for the Second Circuit vacated and remanded a district court’s dismissal of a trademark dispute for lack of subject matter jurisdiction, noting that the dispute arose under contractual standing, which...more

The fight over depreciation of goodwill in Canada keeps going and going …

Smart & Biggar on 5/12/2020

While comparative advertising can be an effective tool for comparing and contrasting competing brands, there are limits on what claims can lawfully be made. One such limit is provided by Section 22 of the Trademarks Act,...more

Internet Sales Lead to Personal Jurisdiction Despite No Physical Presence

McDermott Will & Emery on 3/12/2020

Addressing the issue of personal jurisdiction in a trademark infringement case, the US Court of Appeals for the Seventh Circuit reversed the district court and concluded that the plaintiff had made a prima facie showing that...more

True or False? Testing the limits of comparative advertising – Petline v Trupanion

Smart & Biggar on 2/22/2020

Comparative advertising can be a useful tool for marketers. It positions competing brands against each other and helps consumers make better choices. However, there are legal limits to comparative advertising which are set...more

Lotso More Than Non-Exclusive Licensor-Licensee Relationship Needed for Personal Jurisdiction

McDermott Will & Emery on 1/3/2020

Addressing whether the activities of non-exclusive licensees subject the licensor to personal jurisdiction, the US Court of Appeals for the Fifth Circuit held that jurisdiction over the licensees does not extend personal...more

Transfer of “Know-How” Includes Copyrights

McDermott Will & Emery on 12/6/2019

The US Court of Appeals for the Sixth Circuit vacated the district court’s dismissal of trademark and false advertising claims and grant of summary judgment on a copyright claim. Evoqua Water Technologies, LLC v. M.W....more

Court Takes Ambiguity Off the Menu of Restaurant’s LLC Agreement

Farrell Fritz, P.C. on 12/2/2019

I’ve lost track of how many lawsuits I’ve seen between co-owners of New York City restaurants. It’s not surprising given the high percentage of restaurant failures in an intensely competitive market with high rents, high...more

Trademarks › Dismissals

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