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Highlights Part II of the Trademark Modernization Act of 2020: Ex Parte Expungement, Ex Parte Reexamination, and Non-Use...

As we wrote in Part 1 of this series, the Trademark Modernization Act of 2020 (“TMA”) was signed into law on December 27, 2020, and contained several significant amendments to the Lanham Act. This post will cover three of the...more

Second Circuit Affirms Louis Vuitton Not Liable for Attorneys’ Fees in Parody Handbag Case

It’s been an annual tradition here at The TMCA to write about a trademark and copyright dispute between Louis Vuitton Malletier, S.A. and My Other Bag, Inc. (“MOB”) over a line of canvas tote bags that parodied Louis...more

TiVo Proves More than 15 Minutes of Fame to Succeed on Trademark Dilution Claim

Andy Warhol once famously commented that “In the future everybody will be world famous for fifteen minutes.” For trademarks, fifteen minutes of fame is not sufficient to assert a trademark dilution claim. ...more

WTF? USPTO to Continue Refusing Scandalous and Immoral Marks…For Now

In light of ongoing litigation over an applicant’s effort to register the mark FUCT for wearing apparel, the USPTO recently issued an Examination Guide concerning the review of trademark applications under Section 2(a) of the...more

Louis Vuitton Not Liable for Attorneys’ Fees in Case of Parody Handbags

In January 2016 and January 2017, we blogged about a trademark and copyright dispute between Louis Vuitton Malletier, S.A. and My Other Bag, Inc. (“MOB”) over a line of canvas tote bags that parodied Louis Vuitton’s iconic...more

Tea Rose, Swiss Cheese and Slam Dunk Evidence of Infringement – The 9th Circuit Weighs in on Remote Geographic Trademark Users

When two different companies adopt confusingly similar trademarks and use them in different parts of the United States, complications ensue. The adjudication of the respective rights of the parties will depend on the...more

In What Way is False Advertising False and Why it Makes a Difference

What is the difference between an advertisement that is literally false by necessary implication and one that is impliedly false? It may seem like a fine (and somewhat opaque) distinction, but determining the particular way...more

POM Wonderful Returns – Lanham Act False Advertising Claim Against Home Pregnancy Tests Not Precluded by FDCA

On September 9, 2016, the Court of Appeals for the Second Circuit issued an interesting decision in a false advertising case involving a dispute between competitors in the home pregnancy testing market. Church & Dwight Co. v....more

Trump Hotel False Advertising Suit Against Culinary Workers Union Gets Chopped

Section 43(a) of the Lanham Act is generally considered a broad-based vehicle for asserting false advertising claims. For the owner and operator of the Trump Hotel Las Vegas, however, the statutory section was not broad...more

Empire State Building Trademark Owner Vanquishes Beer Logo Design

Can you trademark a building design? You can if the building in question is the Empire State Building. In the film classic King Kong, the iconic art deco building is the site of a titanic battle between Kong and the military...more

How to Infringe a Certification Mark – The Second Circuit Counts the Ways

We blogged last week about a recent decision by the Court of Appeals for the Second Circuit in International Information Systems Security Certification Consortium, Inc. v. Security University, LLC, in which the Court...more

Nominative Fair Use of a Trademark: The Second Circuit Weighs In

If a defendant in a trademark case uses the plaintiff’s trademark, not to identify the defendant’s own products, but rather to refer accurately to the plaintiff’s products, is that trademark infringement? Called “nominative...more

Who Should Own a Trademark Registration? The Case of the Not-So-Related Parent Company

A recent precedential Trademark Trial and Appeal Board decision provides valuable guidance on the proper allocation of trademark registration ownership as between a corporate parent and a subsidiary, highlighting the perils...more

Black Ops Mission Accomplished by Federal Trademark Registration

A recent district court decision granting a preliminary injunction in The Brooklyn Brewery Corp. v. Black Ops Brewing, Inc. demonstrates the advantage of owning a federal trademark registration when products bearing the...more

Louis Vuitton and My Other Bag – Do You Get The Joke?

In a recent post, we discussed the trademark parody defense in the context of a California district court decision holding that the owner of the Superman “S” logo had adequately stated infringement claims asserted against a...more

When Scientific Research Becomes False Advertising

Positive results of scientific research on a company’s products can provide a tempting topic for advertising and promotion. If an article published in a well-established, peer-reviewed journal says that your company’s...more

POM Wonderful: U.S. Supreme Court Holds Lanham Act False Advertising Claims Not Precluded by FDA Statute

On June 12, 2014, the United States Supreme Court issued its decision in POM Wonderful LLC v. Coca-Cola Co., No. 12-761, which confirms that federal false advertising claims can be brought against false or misleading...more

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