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Trademarks › Subject Matter Jurisdiction

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 +
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 would be a company's logo such as the Nike "Check" or McDonald's "Golden Arches."  less -
McDermott Will & Emery

Don’t Ruin Today’s CNS with Yesterday’s Problems

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The US Court of Appeals for the Fifth Circuit reversed a district court’s trademark invalidity finding based on lack of subject matter jurisdiction because a covenant not to sue (CNS) issued by the trademark owner precluded...more

Saiber LLC

Defendant Sings the Blues as Third Circuit Decides Claim Preclusion Based on Prior TTAB Decision Does Not Apply in Matter of First...

Saiber LLC on

In a recent precedential opinion, Beasley v. Howard, ___ F.4th ___ (3d Cir. 2021) (publication pending), the United States Court of Appeals for the Third Circuit determined, in an issue of first impression, that trademark...more

McDermott Will & Emery

School’s Out: Trademark Settlement Agreement Enforceable

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Addressing issues relating to jurisdiction, contract enforceability and trademarks, the US Court of Appeals for the First Circuit concluded that two schools that used similar names had a valid and enforceable settlement...more

McDermott Will & Emery

Waiver in PTO Trademark Appeals Applies “Per Decision, Not Per Case”

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Addressing a “narrow question of statutory interpretation,” the US Court of Appeals for the Fourth Circuit reversed the district court’s dismissal of a trademark case for lack of subject matter jurisdiction, holding that a...more

McDermott Will & Emery

GOOGLES Wins Right to Sue Google

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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

Proskauer - Minding Your Business

‘Maybe’ Is Not Enough: Foreign Business Fails to Obtain Declaratory Judgment for Potential Use of Trademark

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A foreign business recently failed to prevail in a trademark lawsuit because it could not demonstrate it had immediate plans to commence use of the trademark in the United States. Plaintiff-appellant Abdul Rehman Karim...more

ArentFox Schiff

Court Holds that TTAB Appellant Gets Only One Bite at the Apple When Selecting Forum for Appeal

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The loser of a trademark opposition or cancellation proceeding at the United States Trademark Trial and Appeal Board (TTAB) has two avenues for appealing the decision: (1) to the United States Court of Appeals for the Federal...more

Shutts & Bowen LLP

Do You Need To Threaten Litigation To Trigger Declaratory Judgment Subject Matter Jurisdiction?

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No. Erbaviva, LLC, a California LLC, sent a demand letter to Era Organics, a Florida company. The letter identified a number of Erbaviva federal trademark registrations, and “request[ed]” Era Organics: 1. Request the...more

Carlton Fields

Minnesota Federal Mutual Court Adopts “Look Through” Basis For Federal Question Jurisdiction In FAA Section 9 Disputes

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The District of Minnesota issued several opinions this summer in a dispute between two insurance companies, Federated Mutual Insurance Co. (“Federated Mutual”) and Federated National Holding Co. (“Federated National”),...more

McDermott Will & Emery

Trader Woes: Lanham Act Applies Extraterritorially to Canadian Resale of US Grocery Chain’s Products

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A recent case from the US Court of Appeals for the Ninth Circuit illustrates how the Lanham Act may be applied extraterritorially to foreign activities that affect US commerce. Trader Joe’s v. Michael Norman Hallatt, Case No....more

Akerman LLP - Marks, Works & Secrets

Ninth Circuit Revives Trader Joe’s Federal Trademark Claims Brought In Washington Against “Pirate Joe’s” Operating In Canada

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In Trader Joe’s Company v. Michael Norman Hallatt, the Ninth Circuit recently found that Trader Joe’s allegations of infringing conduct occurring within Canada supported a cognizable claim under the Lanham Act....more

Fenwick & West LLP

Litigation Alert: The Ninth Circuit Leaves Pirate Joe’s Saying “Shiver Me Timbers!”

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Late last week, the U.S. Court of Appeals for the Ninth Circuit determined a court had jurisdiction to decide a trademark lawsuit filed by a U.S. grocery store against a Canadian reseller where the products at issue were only...more

Ervin Cohen & Jessup LLP

Can a Defendant Sue a Receiver’s Property Management Company, or Are They Protected from a Lawsuit Like a Receiver?

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I hired a property management company to aid me in managing a receivership property. A defendant in the case has threatened to sue the management company for action taken at my request. Can the defendant sue the management...more

Pillsbury Winthrop Shaw Pittman LLP

How Trade Mark Defendants are Winning from MedImmune

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In 2007, the US Supreme Court set a new test for declaratory judgment actions in MedImmune. Its decision continues to have a profound impact on trade mark cases, explain Bobby Ghajar and Carolyn Toto. One-Minute Read -...more

Pillsbury Winthrop Shaw Pittman LLP

A Covenant Not to Sue May Avoid Invalidity Claims

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Last week, in Already, LLC v. Nike, Inc. (opinion attached), the Supreme Court unanimously decided that the voluntary cessation doctrine, most often used when a defendant claims its voluntary compliance moots a case where it...more

Fenwick & West LLP

Just Moot It: Supreme Court in Already v. Nike Clarifies When a Covenant Not to Sue Can Kill a Declaratory Judgment Case

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In 2007, the Supreme Court in MedImmune v. Genentech broadened the scope of declaratory judgment jurisdiction, making it easier for parties fearing IP claims to bring defensive lawsuits. Last week, the Court made it easier...more

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