Trademarks, Standing

EDVA Judge Trims Down Claims in Trademark Dispute Arising From Business Sale

Troutman Pepper on 7/2/2024

A pending EDVA case shows how the failure to address intellectual property rights in an asset sale can mushroom into multinational litigation, including a dispute over trademark rights in the United States....more

The Supreme Court Update - June 14, 2024

Dorsey & Whitney LLP on 6/17/2024

On Thursday, June 13, the Supreme Court of the United States issued three decisions: FDA v. Alliance for Hippocratic Medicine, No. 23-235: This case involves an attempt to rescind the Food and Drug Administration’s...more

Sour Grapes: Winery Minority Ownership Insufficient for Statutory Standing at Trademark Board

McDermott Will & Emery on 6/3/2024

The US Court of Appeals for the Federal Circuit affirmed the dismissal of a petition seeking to cancel the registered marks of two wineries, finding the petitioner (a trust owning an interest in a competitor winery) lacked...more

Back to the Future: Prior Third-Party Settlement Doesn’t Impact Future Trademark Licensees

McDermott Will & Emery on 9/7/2023

The US Court of Appeals for the Eleventh Circuit ruled that under certain circumstances a trademark licensee can bring a claim against a third party for unfair competition under the Lanham Act even if the licensing agreement...more

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

McDermott Will & Emery on 8/10/2023

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

Hairy Situation: Trademark Act Doesn’t Provide Consumer Standing

McDermott Will & Emery on 6/1/2023

The US Patent & Trademark Office Trademark Trial & Appeal Board found that a consumer did not have standing to oppose an application for registration because the consumer failed to establish a commercial interest and injury...more

Strike 1: Priority. Strike 2 :Likelihood of Confusion. Strike 3: You’re Out under Section 2(d).

McDermott Will & Emery on 4/27/2023

The Trademark Trial & Appeal Board affirmed the rejection of three trademark applications, finding that the applied-for marks would cause confusion with a record-setting major league baseball player. Major League Baseball...more

No Standing to Invalidate Trademark without Threat of Infringement Suit

McDermott Will & Emery on 2/24/2023

The US Court of Appeals for the Ninth Circuit concluded that when a party obtains a declaratory relief finding that it does not infringe a trademark, it no longer has Article III standing to pursue invalidation of the mark....more

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

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/8/2023

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

Lack of Standing Flattens Brewery Appeal from TTAB

Fitch, Even, Tabin & Flannery LLP on 11/5/2021

On October 27, in Brooklyn Brewery Corporation v. Brooklyn Brew Shop, LLC, the Federal Circuit held that parties opposing a trademark registration at the Trademark Trial and Appeal Board (TTAB) cannot appeal from an adverse...more

Standing Challenge Brews Trouble in Trademark Dispute

McDermott Will & Emery on 11/4/2021

Addressing for the first time Article III standing in a trademark case, the US Court of Appeals for the Federal Circuit held that hypothetical future injury is insufficient to establish standing to oppose a trademark...more

The Battle of Brooklyn: Lack of Concrete Injury and Prior Collaboration Doom TTAB Actions

Knobbe Martens on 10/28/2021

BROOKLYN BREWERY CORPORATION V. BROOKLYN BREW SHOP, LLC - Before Judges Dyk, O’Malley, and Hughes. Appeal from the Trademark Trial and Appeal Board. Summary: A challenger must demonstrate an injury in fact to have...more

Can't Camouflage Express Trademark Contract Terms

McDermott Will & Emery on 3/18/2021

Addressing a range of trademark licensing issues, including discretionary approval, exculpatory contract clauses and third party beneficiary standing, the US Court of Appeals for the Federal Circuit affirmed a lower court’s...more

The Franchise Memorandum - Issue # 263

Lathrop GPM on 3/11/2021

Illinois Federal Court Excludes Plaintiffs’ Expert Testimony on Certification Motion in Anti-Poaching Class Action - A federal court in Illinois granted Jimmy John’s motion to exclude expert testimony of a putative class...more

The Federal Circuit “OK”s a Questionable Path to Petitioning for Cancellation of a Trademark Registration

Haug Partners LLP on 12/17/2020

In Australian Therapeutic Supplies Pty Ltd. v. Naked TM, LLC, the Federal Circuit recently denied a petition for rehearing en banc of a panel decision finding that a petitioner who contracted away its rights to unregistered...more

Trademark Cancellation Is Appropriate Sanction for Misconduct

McDermott Will & Emery on 11/5/2020

In upholding a grocery store chain’s standing to petition for cancellation of a US trademark registration, the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB’s) express...more

Lexmark Framework to Determine Eligibility to Bring Statutory Causes of Actions Applies to Trademark Cancellation Proceedings

Knobbe Martens on 10/30/2020

CORCAMORE, LLC v. SFM, LLC - Before Reyna, Chen, and Hughes. On appeal from the Trademark Trial and Appeal Board. Summary: Whether a party has satisfied the requirements to bring a petition for trademark cancellation...more

Three Point Shot - Summer 2020

Proskauer Rose LLP on 9/2/2020

Welcome to Three Point Shot, a newsletter brought to you by the Sports Law Group at Proskauer. Three Point Shot brings you the latest in sports law-related news and provides you with links to related materials. In this issue,...more

The Naked Truth About Trademark Cancellation: Only Harm, No Proprietary Interest Required

McDermott Will & Emery on 8/5/2020

The US Court of Appeals for the Federal Circuit determined that a contracting party that contractually abandoned any proprietary interest in a mark may still bring a cancellation action if it can “demonstrate a real interest...more

Proprietary Rights in a Mark Not Required for Standing at the TTAB

Knobbe Martens on 7/30/2020

AUSTRALIAN THERAPEUTIC v. NAKED TM, LLC - Before O’Malley, Reyna, and Wallach. Appeal from the Trademark Trial and Appeal Board - Summary: Standing to Challenge A Registered Mark at the TTAB Does Not Depend on the...more

GOOGLES Wins Right to Sue Google

McDermott Will & Emery on 7/9/2020

The US Court of Appeals for the Second Circuit vacated and remanded a district court’s dismissal of a trademark dispute for lack of subject matter jurisdiction, noting that the dispute arose under contractual standing, which...more

Royal Palm Properties’ Trademark Gets Royal Treatment At The 11th Circuit

Akerman LLP - Marks, Works & Secrets on 3/5/2020

This trademark litigation arises out of a contentious real-estate rivalry in a very wealthy residential community called Royal Palm Yacht & Country Club in Boca Raton, Florida....more

When Abandonment Isn’t Abandonment: Use of an “Abandoned” Mark by a Subsidiary

Akerman LLP - Marks, Works & Secrets on 3/3/2020

The Trademark Trial and Appeal Board (the “Board”) recently held that AT&T Mobility, LLC (“AT&T”) had sufficient interest in its almost completely moribund CINGULAR name to oppose two pending trademark applications filed by...more

MarkIt to Market® - October 2019: Waiting to Exhale - Clarity Around Enforcement of Trademarks for Cannabis Goods is a Pipe Dream

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 11/4/2019

A recent article in Marijuana Business Daily projected that the total economic impact of the cannabis industry will range from $39.2 billion to $48 billion in 2019. Despite this commercial potential, there remains little...more

11th Circuit Decides Dispute on Kardashian’s Beauty Mark

Knobbe Martens on 6/7/2019

The Kardashian sisters were the celebrity endorsers for a cosmetic line previously called “Khroma Beauty” that was created and marketed by Boldface....more

Trademarks › Standing

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