News & Analysis as of September 23, 2024

Trademark Infringement

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A Trademark is a legally registered distinctive mark or sign which identifies goods, products or services that originate or are associated with a particular person or enterprise . A typical example of a trademark... more +

Usage of Ad Words by a Competitor Does Not Amount to Trademark Infringement

International Lawyers Network on 3/22/2024

Google AdWords have long been used by businesses to ensure that their business listings feature on top of the Google search results when the users search for particular terms (which have been bought by a business from...more

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/8/2023

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Sale of Keyword Advertising Not a Basis for Georgia State Tort, Quasi-Contract, and Civil RICO Claims

Dunlap Bennett & Ludwig PLLC on 9/9/2022

On February 15, 2022, the Georgia Supreme Court held that the sale of one’s trade name in a keyword advertising service is not the theft of another’s trade name. In Edible IP, LLC v. Google, LLC, 313 Ga. 305, 2022 Ga. Lexis...more

MarkIt to Market® - November 2020: Faux-cus: Google Takes Aim at the Counterfeit Industry

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 12/4/2020

Why do most consumers prefer to purchase expensive goods in person? Do they value the trust factor of seeing and knowing what they are buying? Do they need to feel confident that the item is worth the price? As the pandemic...more

MarkIt to Market® - November 2020

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 12/2/2020

[co-author: Joseph Diorio, Law Clerk] The November 2020 issue of Sterne Kessler's MarkIt to Market® newsletter discusses a rare failure-to-function refusal reversal at the TTAB, Google's efforts to combat counterfeit goods,...more

Google Inc. V. Equustek & The Supreme Court Of Canada

Ladas & Parry LLP on 9/12/2017

In the case of Google Inc. v. Equustek, the Supreme Court of Canada has upheld the grant of a preliminary injunction by the Court of Appeals of British Columbia ordering Google to de-index on a global basis websites of a...more

Life in the Lowercase Lane: Lessons for Trademark Owners About Genericide

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 9/6/2017

Death by genericide is a painful way to go, for trademarks that is. When the public comes to think of a trademark as the common word for a product or service -- as opposed to identifying its exclusive source -- the trademark...more

Intellectual Property Law - July 2017

Manatt, Phelps & Phillips, LLP on 7/14/2017

SCOTUS: For Patent Venue, Domestic Corporations ‘Reside’ Where Incorporated - Why it matters: On May 22, 2017, the Supreme Court issued its decision in TC Heartland LLC v. Kraft Foods Group Brands LLC—rejecting...more

Trademark Law & Genericide: Google's Not Dead Yet

Lewitt Hackman on 6/20/2017

Domain name registration is usually a good first step to cement trade name and mark ownership. In a previous blog we reminded readers that possession, even in Intellectual Property matters, is nine-tenths of the law...more

Is Trademark Use in Google AdWords Trademark Infringement?

Knobbe Martens on 6/8/2017

Does the use of Google AdWords amount to the advertising, promoting, marketing, or offering for sale of goods covered by a registered trademark? Tipsy Elves, LLC. vs. Ugly Christmas Sweater, Inc. is the latest in a string of...more

Use of Competitors’ Trademarks as Google AdWords is not Infringement

Bennett Jones LLP on 8/27/2015

The British Columbia Supreme Court has decided that the use of a competitor’s trademarks in Google AdWords does not constitute infringement. In Vancouver Community College v Vancouver Career College (Burnaby) Inc.,...more

And the Winner is? Digital Platform Liability for Trademark Infringement

Fenwick & West LLP on 8/12/2015

Much has been made of the question of liability for the operation or furnishing of digital platforms in the copyright context. Since the U.S. Supreme Court ruling that the provider of the Betamax recorder did not itself...more

"Want Coke? Buy Pepsi!” Is This Confusing?

McCarter & English, LLP on 7/28/2015

Suppose you walk into a greasy cheeseburger joint and ask for a Coke®. A cook who looks remarkably like the late John Belushi doesn’t say, “No Coke; Pepsi.” Instead, he says, “You want Coke? Have a Pepsi!” and you buy the...more

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