News & Analysis as of

Subject Matter Jurisdiction Trademark Litigation

McDermott Will & Emery

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

McDermott Will & Emery on

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

Proskauer - Minding Your Business

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

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

Carlton Fields

Second Circuit Adopts Standard for Determining Subject-Matter Jurisdiction Over Motions to Confirm Arbitration Awards Under FAA...

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The Second Circuit Court of Appeals recently held as a matter of first impression that a district court properly looked to the substance of an underlying dispute in determining whether it had subject-matter jurisdiction over...more

Shutts & Bowen LLP

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

Shutts & Bowen LLP on

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

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

Akerman LLP - Marks, Works & Secrets

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

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

Dorsey & Whitney LLP

Thinking of Sending a Cease and Desist Letter? Judge Rakoff Has Some Advice About the Declaratory Judgment Risk

Dorsey & Whitney LLP on

A recent decision in federal court in New York serves both as a cautionary tale to companies looking to defend their trademarks and an important reminder to any company about to launch a new product under threat of an...more

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