News & Analysis as of

Domain Names Trademark Litigation

Procopio, Cory, Hargreaves & Savitch LLP

Global Brand Protection and Anticounterfeiting

Smart product manufacturers invest in protecting their intellectual property rights. Preventing and addressing counterfeit and infringing products on an ongoing basis should be prioritized as a core function of their...more

Latham & Watkins LLP

Bored Apes Scores Win in Protecting Its Trademarks

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In a major Web3 trademark infringement case, NFT creators prevail over those with a bad-faith intent to profit. On April 21, 2023, Yuga Labs, the original creators of the Board Ape Yacht Club (BAYC) non-fungible token...more

Stark & Stark

The Limits of Artistic Expression: A Look Behind How MetaBirkin NFTs Infringed on Hermès’ Famous Trademark and Handbag Trade Dress

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In early 2023, a federal jury found an opportunistic meta-artist infringed on a luxury fashion house’s iconic handbag trademark. Digital artist Mason Rothschild created 100 unique “MetaBirkin” non-fungible tokens (“NFTs”)...more

McDermott Will & Emery

Ninth Circuit Extends § 230 Immunity to Domain Name Registrars

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The US Court of Appeals for the Ninth Circuit affirmed a district court’s dismissal of the plaintiff’s suit against a domain name registrar, holding that the plaintiff did not adequately allege that the registrar used the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - January 2023

Thank you for reading the January 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss an ongoing trademark dispute between the band OK Go and cereal company Post, how to stay vigilant about...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - November 2022

Thank you for reading the November 2022 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we address a precedential TTAB decision that presents interesting priority issues relating in particular to the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - October 2022

Thank you for reading the October 2022 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss an ongoing trademark suit involving a claim of irreparable harm, share the now open gTLD Sunrise periods,...more

McDermott Will & Emery

This .SUCKS: Trademark Applications for Identical Characters Is a No-Go

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The US Court of Appeals for the Federal Circuit affirmed a Trademark Trial and Appeal Board (Board) decision affirming the US Patent and Trademark Office’s (PTO) refusal to register two trademark applications for “.SUCKS.” In...more

BakerHostetler

.SUCKS’ Luck Sucks: Federal Circuit Affirms Refusal to Register .SUCKS for Failure to Function

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On Feb. 2, 2022, the Federal Circuit decided In re Vox Populi Registry Ltd., an appeal from the Trademark Trial and Appeal Board’s (Board) affirmance of the refusal to register a stylized version of the term .SUCKS. Vox...more

Weintraub Tobin

Podcast - The Briefing from the IP Law Blog: Lord of The Rings Author’s Estate Clings to its Precious Trademark, Blocking JRR...

Weintraub Tobin on

In this episode of The Briefing from the IP Law Blog, Scott Hervey and Josh Escovedo discuss a trademark dispute between the Lord of The Rings Author’s Estate and the Cryptocurrency JRR Token. ...more

Weintraub Tobin

The Briefing from the IP Law Blog: Lord of The Rings Author’s Estate Clings to its Precious Trademark, Blocking JRR Token

Weintraub Tobin on

In this episode of The Briefing from the IP Law Blog, Scott Hervey and Josh Escovedo discuss a trademark dispute between the Lord of The Rings Author’s Estate and the Cryptocurrency JRR Token....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - October 2021

The October 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses a precedential TTAB decision regarding fraud; the DEA's proposal to increase production quotas for several schedule I controlled substances,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - August 2021

The August 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses Monster Energy's history of trademark disputes in the context of enhancing brand strength, tips for shortening the pendency of trademark filings...more

Jones Day

JONES DAY TALKS®: 75 Years of the Lanham Act and Changes in U.S. Trademark Law

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Signed into law in July of 1946, the Lanham Act has, for 75 years, governed U.S. trademark, servicemark, and unfair competition matters. In this edition of the Jones Day Talks Women in IP series, Meredith Wilkes, Anna Raimer,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - April 2021

[co-author: Joseph Diorio, Law Clerk] The April 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses the suit filed by Nike over MSCHF's "Satan Shoes"; the latest PTAB decision in the ongoing battle...more

Ward and Smith, P.A.

Brexit, Schmexit: How Resilient is Your Trademark Portfolio and Enforcement Strategy?

Ward and Smith, P.A. on

On January 31, 2020, the United Kingdom (UK) withdrew from the European Union (EU). From February 1, 2020, to December 31, 2020, the UK and EU are in a "Transition Period," where there will be no change to the process of...more

Orrick, Herrington & Sutcliffe LLP

Intellectual Property - Trademark - The World in U.S. Courts: Summer 2019

Optima Media Group Limited v. Bloomberg L.P., US District Court for the Southern District of New York, April 17, 2019 - Bloomberg contracted with Optima entities (none a US company) to produce and distribute...more

International Lawyers Network

Descendants of Danish well-known scientist could not prevent the use of his name by a large Danish based stated-owned energy...

The descendants of a well-known Danish scientist could not prevent the commercial use of the name ØRSTED as a trademark, domain and company name by the Ørsted Group (former Dong Energy A/S)....more

Hogan Lovells

The Curse of Shoeless Joe Continues: TTAB Finds White Sox Fan Lacked Bona Fide Intent-To-Use

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For any baseball fans already preparing to capitalize when their favorite team wins their next World Series game, you may strike out before getting up to bat at the Trademark Trial and Appeal Board (“TTAB”) in the United...more

International Lawyers Network

TOP-10 IP Disputes in 2018

CATEGORY: Trademarks - CASE: Sony vs. PAG - DETAILS: Resolution of the Constitutional Court No. 8-P dated 13 February 2018 - SUMMARY: Unlike the counterfeit, the original (grey) product cannot be destroyed under the...more

Hogan Lovells

WIPO – No fan site for tribute band

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In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a panel ordered the transfer of a domain name that exactly matched the name of a...more

Dorsey & Whitney LLP

Master of Your Domain – ACPA Damages Sought by Greg LeMond

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You might want to think twice before registering a domain name containing a competitor’s personal name or trademark. Three-time Tour de France winner Greg LeMond put his “pedal to the metal” recently, suing two Minnesota...more

Hogan Lovells

France: No requirement for a domain name to be distinctive in unfair competition claims

Hogan Lovells on

In a decision of 6 December 2016, the French Supreme Court of the Judiciary (“Cour de Cassation”) provided a very useful clarification in relation to unfair competition claim (“concurrence déloyale”, a tortious action) based...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® | January 2017

The January 2017 issue of Sterne Kessler's MarkIt to Market® includes an overview of the TTAB's recent surname decisions, the changes made by the USPTO to their trademark processing and services fees, and lists the new gTLD...more

Dorsey & Whitney LLP

No Room at the USPTO: TTAB Rejects Booking.com Trademarks As Generic

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Many online businesses prefer to use domain names that communicate as clearly and concisely as possible the types of goods and services offered on their websites. That may be good marketing strategy. But as a recent decision...more

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