Trademarks, Remand

What’s Trending in Trademarks, August 2024: What Constitutes an Abandoned Mark? How Famous is Cognac?

Erise IP on 8/23/2024

Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about: Fourth...more

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

Rum Wars: Lanham Act Doesn’t Preclude Judicial Review of PTO Renewal Decisions

McDermott Will & Emery on 6/27/2024

The US Court of Appeals for the Fourth Circuit reversed and remanded a district court’s ruling, holding that the Lanham Act does not foreclose an Administrative Procedure Act (APA) action for judicial review of the US Patent...more

Trademark Trial & Appeal Board Gets a DuPont 101 Lesson

McDermott Will & Emery on 2/22/2024

Addressing errors in the Trademark Trial & Appeal Board’s likelihood of confusion analysis in a cancellation action, the US Court of Appeals for the Federal Circuit vacated and remanded, holding that the Board erred by...more

Second Circuit Finds Art Collective Can’t Use First Amendment to Skate Out of Injunction

Sheppard Mullin Richter & Hampton LLP on 12/8/2023

In its first opportunity to apply the Supreme Court’s recent decision in Jack Daniel’s Properties v. VIP Products LLC, which held that the First Amendment did not protect infringing works that “use [the complainant’s] mark [...more

Word From on High: Provide Reasoned Explanation When Departing From Established Practice

McDermott Will & Emery on 12/7/2023

In a decision on motion in an appeal from the Trademark Trial & Appeal Board, the US Court of Appeals for the Federal Circuit admonished the Board on remand to “furnish a reasoned explanation” when departing from its...more

New York Court Sides with PepsiCo on Remand in Ongoing Rise Brewing Dispute

Ladas & Parry LLP on 9/26/2023

In Riseandshine Corporation v PepsiCo Inc (SDNY-1-21-cv-06324), plaintiff Riseandshine Corporation, doing business as Rise Brewing, brought three federal and two state claims relating to trademark infringement and unfair...more

Burst That Bubble: Specific Knowledge Necessary to Prove Contributory Trademark Infringement

McDermott Will & Emery on 8/3/2023

The US Court of Appeals for the Ninth Circuit addressed contributory trademark infringement for the first time, finding that specific knowledge is required for liability to attach. Y.Y.G.M. SA, DBA Brandy Melville v....more

If at First You DuPont Succeed, Try a Different Factor

McDermott Will & Emery on 7/13/2023

The US Court of Appeals for the Federal Circuit remanded a Trademark Trial & Appeal Board decision, finding that the Board incorrectly analyzed several DuPont factors, improperly disregarded the DuPont factor regarding...more

MarkIt to Market® - June 2023

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 6/30/2023

Thank you for reading the June 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we begin a three-part series that closely examines ways to lose trademark rights; share an article that examines the...more

Supreme Court Vacates and Remands 10th Circuit's Decision in "Abitron"

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 6/30/2023

The US Supreme Court ruled today in the closely watched Abitron Austria GmbH v. Hetronic International, Inc. case, which considered whether a party could recover in US courts for trademark infringement that occurred outside...more

False Advertising: Verifiably False Versus Subjective Opinion

McDermott Will & Emery on 6/22/2023

In a case originally based on a false advertising claim under § 43(a) of the Lanham Act, the US Court of Appeals for the Ninth Circuit affirmed in part, reversed in part and remanded the district court’s dismissal of the...more

On the Road Again: Alternative Designs May Impact Trade Dress Functionality Analysis

McDermott Will & Emery on 5/25/2023

The US Court of Appeals for the Sixth Circuit reversed and remanded a summary judgment ruling, finding that there were genuine disputes of material fact regarding whether the plaintiff’s alleged trade dress was functional and...more

Message Received: US Courts Are Appropriate, More Convenient Venue to Adjudicate US IP Disputes

McDermott Will & Emery on 2/23/2023

Addressing personal jurisdiction and forum non conveniens in a software licensing dispute, the US Court of Appeals for the Fourth Circuit upheld a district court’s exercise of personal jurisdiction over a Dutch entity and the...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

I Know That Brand . . . Or Do I? Reviewing the Eleventh Circuit’s Likelihood of Confusion Analysis

McDermott Will & Emery on 1/26/2023

The US Court of Appeals for the Eleventh Circuit reversed and remanded a district court’s summary judgment ruling finding no likelihood that consumers might be confused as to any relationship between competitors operating in...more

Counterfeit Dealer Gets Smoked in Trademark Preliminary Injunction Proceeding

McDermott Will & Emery on 6/2/2022

The US Court of Appeals for the Ninth Circuit affirmed a preliminary injunction barring the defendant from selling counterfeit e-cigarette and vaping products bearing the plaintiff’s logo because the plaintiff’s psychoactive...more

Delay in Enforcing Trademark Measured from When Infringement Became Actionable

McDermott Will & Emery on 5/26/2022

Addressing laches and progressive encroachment, the US Court of Appeals for the Eighth Circuit reversed and remanded a district court’s grant of summary judgment based on laches because the district court failed to “conduct a...more

First Sale Defense Bars Trademark Infringement Where Trademarked Component Is Adequately Disclosed

McDermott Will & Emery on 4/14/2022

A US Court of Appeals for the Ninth Circuit panel vacated a grant of summary judgment in favor of the plaintiff, holding that the first sale doctrine applies when a trademarked product is incorporated into a new product....more

PTAB Strategies and Insights Newsletter - March 2022

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/31/2022

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

#Blessed? Preliminary Injunction Related to Social Media Accounts Vacated

McDermott Will & Emery on 2/3/2022

Addressing a dispute between a bridal designer and her former employer regarding the use of the designer’s name and control of various social media accounts, the US Court of Appeals for the Second Circuit affirmed the...more

Personal Jurisdiction in the Digital Age

Ervin Cohen & Jessup LLP on 12/16/2021

The concept of “presence” for jurisdictional purposes has evolved with the widespread use of websites, social media and other digital platforms. A company or individual may have no physical presence in a forum, but may...more

The Battle of Brooklyn: Lack of Concrete Injury and Prior Collaboration Doom TTAB Actions

Knobbe Martens on 10/28/2021

BROOKLYN BREWERY CORPORATION V. BROOKLYN BREW SHOP, LLC - Before Judges Dyk, O’Malley, and Hughes. Appeal from the Trademark Trial and Appeal Board. Summary: A challenger must demonstrate an injury in fact to have...more

Third Circuit Vacates $10.6 Million Trademark Infringement Award, Clarifying Several Standards to Be Applied by Trial Courts

Saiber LLC on 9/14/2021

In a recent precedential opinion, Kars 4 Kids Inc. v. America Can!, __ F.4th __ (3d Cir. 2021) (publication pending), the United States Court of Appeals for the Third Circuit vacated a $10.6 million trademark infringement...more

Latest Federal Court Cases - September 2021

Schwabe, Williamson & Wyatt PC on 9/8/2021

Belcher Pharmaceuticals, LLC v. Hospira, Inc., Appeal No. 2020-1799 (Fed. Cir. Sept. 1, 2021) - In an appeal from the United States District Court for the District of Delaware, the Federal Circuit affirmed the district...more

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