News & Analysis as of

Jurisdiction Trademark Litigation

Seyfarth Shaw LLP

U.S. Isn’t Everything – The Importance for U.S. Entities to Obtain Trademark Protection Abroad (Yes, that includes Canada)

Seyfarth Shaw LLP on

The author of the lyrics for Canada’s national anthem, “O Canada,” probably didn’t have trademarks in mind when he wrote “we stand on guard for thee.” But a recent trademark infringement win for a Maryland-based U.S....more

Smart & Biggar

Top ten considerations for creating an effective anti-counterfeiting program

Smart & Biggar on

A key component of any effective brand protection strategy is an anti-counterfeiting program. How can a brand owner protect its reputation and rights against counterfeiters, infringers and pirates? The answer will depend not...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

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

McDermott Will & Emery

Your Gang Did What!? No Matter—No Forfeiture of IP

McDermott Will & Emery on

In a unique case blending intellectual property and criminal law, the US Court of Appeals for the Ninth Circuit agreed that a district court properly exercised jurisdiction over a motorcycle club and upheld the lower court’s...more

Akerman LLP - Marks, Works & Secrets

The Third Circuit Limits Preclusive Effect of the TTAB Rulings

On September 17, 2021, the Third Circuit held in Beasley v. Howard that trademark cancellation proceedings before the Trademark Trial and Appeal Board (“TTAB”) do not have claim preclusive effect against trademark...more

McDermott Will & Emery

Ninth Circuit Still Signals Shift in Arbitration Landscape for Non-Signatories

McDermott Will & Emery on

In a decision substantively the same as the now-withdrawn opinion entered on January 20, 2021, the US Court of Appeals for the Ninth Circuit once again affirmed denial of a non-signatory’s motion to compel arbitration. Setty...more

Dorsey & Whitney LLP

Who - What - Where? Trademark and Copyright Venue in 2020 and Beyond

Dorsey & Whitney LLP on

In recent years, commentators have discussed patent venue ad nasuem in the run-up to and following the Supreme Court’s 2017 decision in TC Heartland. In a nutshell: after TC Heartland restricted the circumstances under which...more

McDermott Will & Emery

Fiesta’s Over for Trademark Claims Without Proof of Secondary Meaning

The US Court of Appeals for the First Circuit found that it had jurisdiction despite an arguably improper notice of appeal, and that the trademark owner waived its right to submit new evidence and failed to prove that the...more

Dorsey & Whitney LLP

Jurisdiction based on a single bit of bitcoin: A single (probably) U.S.-based sale was enough to achieve relief with worldwide...

Dorsey & Whitney LLP on

The dispute over the bitcoin named Alibabacoin is apparently over. Last year, Chinese tech giant Alibaba sued Belarus - and Dubai-based ABBC Block Chain IT Solutions LLC in New York federal court for trademark infringement...more

Polsinelli

Digital Assets and the Long-Arm of the Law

Polsinelli on

A recent ruling from a federal district judge in the Southern District of New York, involving a trademark dispute between a digital asset offering and web-titan Alibaba, has caused heads throughout the FinTech world to turn. ...more

Carlton Fields

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

Carlton Fields on

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

Hogan Lovells

Unitary but toothless? – Limitations to jurisdiction over online EUTM infringements

Hogan Lovells on

German Federal Court of Justice rules on the scope of jurisdiction of national courts - In an online context, IP infringement frequently occurs simultaneously in more than one country and so the flexibility to take action...more

Hogan Lovells

EU IP rights enforcement: yet another jurisdiction conundrum heading to Luxembourg

Hogan Lovells on

The CJEU has just been posed the following questions on the interpretation of Article 97(5) of the EU Trade Mark Regulation ((EC) No. 207/2009) by the English Court of Appeal....more

McDermott Will & Emery

2017 Intellectual Property Law Year In Review

Though politics ruled the headlines in 2016, the year still brought big changes in intellectual property law and its application, most notably in patent subject matter eligibility, inter partes review institution and appeal...more

McDermott Will & Emery

Pre-Arbitration Injunction May Only Preserve Status Quo - Benihana, Inc. v. Benihana of Tokyo, LLC

In the context of a dispute surrounding a breach of a trademark license agreement that provided for arbitration of certain disputes, the U.S. Court of Appeals for the Second Circuit concluded that it was inappropriate for a...more

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