News & Analysis as of

Trademark Act Supreme Court of the United States

McAfee & Taft

Abitron v. Hetronic — Damages reduced on remand

McAfee & Taft on

In a tIPsheet article titled “SCOTUS rules Lanham Act does not have extraterritorial reach” published on July 20, 2023, we discussed Abitron Austria GmbH v. Hetronic Int’l, Inc., 600 U.S. 412 (2023), a U.S. Supreme Court case...more

Wolf, Greenfield & Sacks, P.C.

Supreme Court Upholds Constitutionality of the Trademark Act’s “Names Clause” in Affirming Refusal to Register TRUMP TOO SMALL

Yesterday, in Vidal v. Elster, the Supreme Court rejected a challenge to the constitutionality of Section 2(c) of the Trademark Act (15 U.S.C. § 1052(c)), which prohibits registration of a mark that “[c]onsists of or...more

Seyfarth Shaw LLP

Courts and Brand Owners Struggling With SCOTUS Decision Limiting Ability to Police Against Foreign Trademark Infringement

Seyfarth Shaw LLP on

The U.S. Supreme Court’s end-of-term decision in Abitron v. Hetronic seems to have created more questions than answers about U.S. brand owners’ ability to leverage the federal Lanham Act in global trademark disputes. In the...more

Buckingham, Doolittle & Burroughs, LLC

U.S. Businesses Need Foreign Trademark Registrations in the Wake of Abitron

U.S. businesses selling abroad cannot enforce domestic trademarks against foreign entities selling infringing goods into the United States through strawmen, according to a recent ruling by the U.S. Supreme Court in...more

Fox Rothschild LLP

Jack Daniel's Wins Supreme Court Battle with Dog Toy Seller Who Mocked Iconic Brand

Fox Rothschild LLP on

In a win for brand owners across the country, the U.S. Supreme Court ruled last week that potential infringers as a threshold matter are not automatically shielded from liability by simply claiming their infringement includes...more

Jenner & Block

Supreme Court Hears Oral Argument over Extraterritorial Reach of U.S. Trademark Law

Jenner & Block on

On March 21, the United States Supreme Court heard oral arguments in Abitron Austria GmbH v. Hetronic International, Inc. over whether the infringement provisions of the United States Trademark Act impose liability for...more

Fox Rothschild LLP

PTO Offers Guidance Following The Decision In USPTO v. Booking.com

Fox Rothschild LLP on

Last month, the U.S. Patent and Trademark Office (PTO) issued a guidance document describing how they plan on following the Supreme Court’s recent decision in U.S. Patent and Trademark Office v. Booking.com. This document...more

Mintz - Trademark & Copyright Viewpoints

U.S. Trademark Office Issues Guide on How It Will Apply the Supreme Court’s Booking.com Decision to Examination of Relevant...

As we reported in our July 7, 2020 blog post on the USPTO v. Booking.com B.V decision, the U.S. Supreme Court ruled that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like...more

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

Bring on the Bad Word Brands? What the Supreme Court's Decision in Matal v. Tam Means for Trademark Owners

The Supreme Court’s June 19, 2017 decision in the Matal v. Tam case has been burning-up the news wires all week. The decision struck down a 70-year-old ban on federally registering disparaging trademarks, finding that the...more

Akerman LLP - Marks, Works & Secrets

Caveat Opposer: Preclusion Lurks at the TTAB

Recently, the Trademark Trial and Appeal Board (the “TTAB”) held that an unsuccessful opposer was precluded from later pursuing a cancellation against the same trademark owner, even though the opposer assumed a different...more

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

MarkIt to Market - April 2014

The April issue of Sterne Kessler's MarkIt to MarketTM newsletter contains a cautionary tale regarding use of social media, a clarified test for false advertising standing, updates to Canada's Trade-marks Act, and an updated...more

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