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
12/7/2023
/ Appeals ,
Merely Descriptive ,
PTAB Precedential Opinion Panel (POP) ,
Remand ,
Trademark Application ,
Trademark Litigation ,
Trademark Opposition Proceedings ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
Vacatur
In a split panel decision, the US Court of Appeals for the Federal Circuit overturned the Trademark Trial & Appeal Board and ruled that a fraudulent declaration under Section 15 of the Lanham Act is not a basis for...more
The Supreme Court of the United States agreed to review the geographic scope of the Lanham Act and the extent to which trademark owners can use US trademarks to police foreign sales. Abitron Austria GmbH et al. v. Hetronic...more
In a precedential decision rendered in an opposition proceeding, the Trademark Trial & Appeal Board (Board) took the lawyers for each side to task for ignoring Board rules in presentation of their case, but ultimately decided...more
In the context of an opposition proceeding, the US Court of Appeals for the Federal Circuit upheld a Trademark Trial & Appeal Board (Board) refusal to register a trademark based on likelihood of confusion with a famous but...more
The Supreme Court of the United States granted certiorari on a petition filed by the US Patent and Trademark Office (PTO) seeking to overturn a district court decision in favor of Booking.com. The PTO argues that the mark is...more
12/6/2019
/ Acquired Distinctiveness ,
Appeals ,
Booking.com ,
Certiorari ,
Descriptive Trademarks ,
Domain Name Registration ,
Domain Names ,
Generic Marks ,
gTLD ,
Lanham Act ,
SCOTUS ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO
In response to a petition for rehearing by the intervenors, the US Court of Appeals for the Federal Circuit vacated part of an earlier precedential decision noting the lack of preclusive effect of trademark decisions by the...more
The Supreme Court of the United States granted writ of certiorari to consider the issue of profit disgorgement under 15 USC § 1117(a). Romag Fasteners, Inc. v. Fossil, Inc., et al., Case No. 18-1233 (S. Ct. June 28, 2019)....more
8/14/2019
/ Appeals ,
Calculation of Damages ,
Certiorari ,
Fashion Design ,
Lanham Act ,
Romag Fasteners v Fossil ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Willful Infringement
The US Court of Appeals for the 11th Circuit upheld a permanent injunction precluding a musician from using the trademarks of his former band. Commodores Entertainment Corp. v. Thomas McClary, Case No. 16-15794 (11th Cir.,...more
On September 29, 2016, the Supreme Court of the United States granted a petition for certiorari to consider the constitutionality of a provision of the US trademark laws directed to the registrability of disparaging...more
11/10/2016
/ Disparagement ,
First Amendment ,
Free Speech ,
Lanham Act ,
Petition for Writ of Certiorari ,
Popular ,
The Slants ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
Unconstitutional Condition
Addressing whether a trademark holder’s victory in a prior lawsuit barred a subsequent action on new acts of infringement, the U. S. Court of Appeals for the Second Circuit overturned a district court’s summary judgment and...more
Hana Financial, Inc. v. Hana Bank & Hana Financial Group -
In trademark law “tacking” is a practice whereby an applicant for registration can establish an earlier priority date by adding the period of use of an older...more
B&B Hardware, Inc. v. Hargis Industries, Inc. -
The U.S. Supreme Court has agreed to review a decision of the U.S. Court of Appeals for the Eighth Circuit (in turn affirming a district court decision) finding the mark...more
No Case or Controversy in DJ Against Patentee Who Sued Manufacturer’s Customers: Cisco Systems, Inc. v. Alberta Telecommunications Research Center -
In a non-precedential opinion addressing declaratory judgment...more
11/1/2013
/ Cisco ,
Claim Construction ,
Copyright ,
FRAND ,
Offsets ,
Patent Infringement ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Telecommunications ,
Trademark Policing ,
Trademarks
“Reverse Payment” Settlements Face Greater Antitrust Scrutiny Following U.S. Supreme Court Ruling in FTC v. Actavis: Federal Trade Commission v. Actavis, Inc. -
Resolving a split among the U.S. Courts of Appeals, the...more
7/31/2013
/ Abbreviated New Drug Application (ANDA) ,
Advertising ,
Antitrust Investigations ,
Arbitration Agreements ,
Claims Limitations Period ,
Copyright ,
Forum ,
FTC v Actavis ,
Good Faith ,
Induced Infringement ,
Infringement ,
International Trade Commission (ITC) ,
Jurisdiction ,
Lanham Act ,
Obviousness ,
Patent Infringement ,
Patent-Eligible Subject Matter ,
Patents ,
Pharmaceutical Industry ,
Prescription Drugs ,
Prior Art ,
Reverse Payment Settlement Agreements ,
Standard Essential Patents ,
Trade Secrets ,
Trademarks
Patent Exhaustion Rejected: Patented Seed Purchaser Has No Right to Make Copies: Bowman v. Monsanto Co. -
In a narrow ruling that reaffirms the scope of patent protection over seeds, and possibly over other...more
5/31/2013
/ Arbitration ,
Bowman v Monsanto ,
Claim Construction ,
CLS Bank ,
CLS Bank v Alice Corp ,
Copyright ,
FRAND ,
Genetically Engineered Seed ,
Infringement ,
Monsanto ,
Obviousness ,
Patent Exhaustion ,
Patents ,
SCOTUS ,
Standard Essential Patents ,
Standing ,
Trademarks
Obviousness-Type Double Patenting May Exist When There Is Neither Common Ownership nor Common Inventorship -
Addressing an obviousness-type double patenting rejection, the U.S. Court of Appeals for the Federal Circuit...more
4/30/2013
/ Affidavits ,
Claim Construction ,
Copyright ,
Copyright Infringement ,
Discovery ,
DMCA ,
Infringement ,
Patents ,
Prior Art ,
Safe Harbors ,
Trademarks ,
USPTO
In This Issue:
Supreme Court -
Supreme Court Finds That “First Sale” Doctrine Applies to Works
Patents -
Joint Actors as It Relates to Method Claim Infringement; Federal Circuit Ruling Clears Way...more
In This Issue:
Patents -
Supreme Court: State Court Has Jurisdiction over a Legal Malpractice Claim; Nothing Non-Obvious About Applying Pre-Existing Technology to the Internet; The Federal Circuit Is Not the...more
2/28/2013
/ Adverse Inference Instructions ,
America Invents Act ,
Assignor Estoppel ,
Attorney Malpractice ,
Commercial Bankruptcy ,
Covenant Not to Sue ,
Design Patent ,
Destruction of Evidence ,
Direct Infringement ,
First-to-File ,
Gunn v Minton ,
Infringement ,
Jurisdiction ,
Mattel ,
MGA Entertainment ,
Misappropriation ,
Obviousness ,
Patent Reform ,
Patents ,
SCOTUS ,
Trade Secrets ,
Trademarks
In Already, LLC v. Nike, Inc., the Supreme Court of the United States ruled that the trademark plaintiff’s voluntary dismissal of its infringement suit, together with a covenant not to sue, deprived the district court of...more
In This Issue:
Patents -
..Federal Circuit Rules It’s Own Standards Apply When Considering Preliminary Injunctions
..Preliminary Testing of Medical Devices in Animals Enables Their Use in...more
12/28/2012
/ America Invents Act ,
Claim Construction ,
Competition ,
Copyright ,
Infringement ,
International Trade Commission (ITC) ,
Obviousness ,
Patent Assertion Entities ,
Patent Reform ,
Patents ,
Pay-For-Delay ,
Permanent Injunctions ,
Preliminary Injunctions ,
Reissue Patents ,
Restitution ,
Trade Secrets ,
Trademarks ,
Walker Process Claims