Trademarks, Vacated

Unbranded Brandy: COGNAC Certification Mark Matters, Even in Hip-Hop

McDermott Will & Emery on 8/15/2024

The US Court of Appeals for the Federal Circuit vacated a ruling from the Trademark Trial & Appeal Board, disagreeing with the Board’s dismissal of Bureau National Interprofessionnel du Cognac’s opposition to a trademark...more

David-Versus-Goliath Trademark Victory Isn’t “Exceptional”

McDermott Will & Emery on 7/26/2024

The US Court of Appeals for the Third Circuit vacated an award of attorneys’ fees for reanalysis, explaining that the district court’s finding that the case was “exceptional” under the Lanham Act was based on policy...more

What’s Trending in Trademarks, March 2024: Chanel Reseller Found Liable for Trademark Infringement, False Advertising; Federal...

Erise IP on 3/25/2024

Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about: Chanel...more

Trademark Trial & Appeal Board Gets a DuPont 101 Lesson

McDermott Will & Emery on 2/22/2024

Addressing errors in the Trademark Trial & Appeal Board’s likelihood of confusion analysis in a cancellation action, the US Court of Appeals for the Federal Circuit vacated and remanded, holding that the Board erred by...more

New York Court Sides with PepsiCo on Remand in Ongoing Rise Brewing Dispute

Ladas & Parry LLP on 9/26/2023

In Riseandshine Corporation v PepsiCo Inc (SDNY-1-21-cv-06324), plaintiff Riseandshine Corporation, doing business as Rise Brewing, brought three federal and two state claims relating to trademark infringement and unfair...more

Burst That Bubble: Specific Knowledge Necessary to Prove Contributory Trademark Infringement

McDermott Will & Emery on 8/3/2023

The US Court of Appeals for the Ninth Circuit addressed contributory trademark infringement for the first time, finding that specific knowledge is required for liability to attach. Y.Y.G.M. SA, DBA Brandy Melville v....more

MarkIt to Market® - June 2023

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 6/30/2023

Thank you for reading the June 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we begin a three-part series that closely examines ways to lose trademark rights; share an article that examines the...more

Supreme Court Vacates and Remands 10th Circuit's Decision in "Abitron"

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 6/30/2023

The US Supreme Court ruled today in the closely watched Abitron Austria GmbH v. Hetronic International, Inc. case, which considered whether a party could recover in US courts for trademark infringement that occurred outside...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

Don’t Dew It: Second Circuit Cans Likelihood of Confusion Argument

McDermott Will & Emery on 8/11/2022

The US Court of Appeals for the Second Circuit reversed and vacated a district court’s preliminary injunction grant because the district court erred in assessing the strength of a trademark. RiseandShine Corporation v....more

First Sale Defense Bars Trademark Infringement Where Trademarked Component Is Adequately Disclosed

McDermott Will & Emery on 4/14/2022

A US Court of Appeals for the Ninth Circuit panel vacated a grant of summary judgment in favor of the plaintiff, holding that the first sale doctrine applies when a trademarked product is incorporated into a new product....more

#Blessed? Preliminary Injunction Related to Social Media Accounts Vacated

McDermott Will & Emery on 2/3/2022

Addressing a dispute between a bridal designer and her former employer regarding the use of the designer’s name and control of various social media accounts, the US Court of Appeals for the Second Circuit affirmed the...more

Third Circuit Vacates $10.6 Million Trademark Infringement Award, Clarifying Several Standards to Be Applied by Trial Courts

Saiber LLC on 9/14/2021

In a recent precedential opinion, Kars 4 Kids Inc. v. America Can!, __ F.4th __ (3d Cir. 2021) (publication pending), the United States Court of Appeals for the Third Circuit vacated a $10.6 million trademark infringement...more

The Briefing by the IP Law Blog: Trademark Infringement - Tiffany & Co. Versus Costco

Weintraub Tobin on 2/26/2021

Josh and Scott discuss the case where Tiffany & Co. sued Costco for selling other rings and using the word Tiffany on nearby signage to describe those rings, claiming trademark infringement and unfair business practices. The...more

Agreement to One Is Not Consent to All

McDermott Will & Emery on 2/25/2021

Addressing a myriad of issues involving unauthorized use of professional models’ photographs for gentlemen’s clubs’ promotional materials, the US Court of Appeals for the Second Circuit held that the district court erred in...more

Diamonds to Dust? Too Many Factual Disputes Precludes Summary Judgment

McDermott Will & Emery on 8/27/2020

The US Court of Appeals for the Second Circuit vacated a district court’s summary judgment grant in favor of a fine jewelry producer for trademark infringement, counterfeiting and unfair competition because factual disputes...more

Diamonds are Forever, but Tiffany’s $21M Trademark Win is Not

Troutman Pepper on 8/25/2020

A federal appeals court issued its opinion on August 17th in Tiffany & Co. v. Costco Wholesale Corp., vacating a $21 million judgment against Costco Wholesale Corp. Costco had marketed unbranded diamond engagement rings...more

Supreme Court Unanimously Rules That Willfulness Is Not Required to Recover Profits

International Lawyers Network on 8/20/2020

The U.S. Supreme Court resolved a circuit split on April 23, 2020, by unanimously holding in Romag Fasteners, Inc. v. Fossil Group, Inc., et al. that a brand owner is not required to prove that a trademark infringer acted...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

Supreme Court Helps Trademark Owners: Proof of “Willfulness” Is Not Required To Recover Infringer’s Profits

Burns & Levinson LLP on 6/23/2020

In April 2020, the U.S. Supreme Court ruled that trademark infringers can be required to hand over their profits to a brand owner even if their conduct was not “willful.” The case was Romag Fasteners v. Fossil Group, Inc.,...more

Trademark Infringement Remedies Just Got Snappier? United States Supreme Court Says Proving Willfulness Is Not Required For...

Sunstein LLP on 6/11/2020

In U.S. trademark litigation, the focus is typically on injunctive relief: The plaintiff wants the defendant to cease use of the infringing mark before the plaintiff’s reputation is harmed or the strength of the mark is...more

Supreme Court Unanimously Holds that Willfulness is Not a Prerequisite for an Award Disgorging Trademark Infringer’s Profits

Greenberg Glusker LLP on 5/26/2020

On April 23, 2020, the United States Supreme Court unanimously held that the Lanham Act does not require a showing of willful infringement to justify an award of defendant’s profits to the plaintiff. Romag Fasteners, Inc. v....more

Marcel Fashions Group did not “get lucky” with the doctrine of defense preclusion

Eversheds Sutherland (US) LLP on 5/19/2020

On May 14, 2020, in a unanimous opinion authored by Justice Sotomayor, the US Supreme Court overturned the “defense preclusion” doctrine proposed by the Second Circuit, upholding the requirement that preclusion of a defense...more

The Supreme Court - May 14, 2020

Dorsey & Whitney LLP on 5/18/2020

Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc., No. 18-1086: Petitioner Lucky Brand Dungarees and respondent Marcel Fashions Group have been engaged in three separate rounds of trademark-related litigation over a...more

Romag Fasteners: SCOTUS Holds That Plaintiffs in Trademark Suits Need Not Show "Willful Intent" of Infringement to Recover Damages...

Lowenstein Sandler LLP on 5/18/2020

In a recent unanimous decision in Romag Fasteners, Inc. v. Fossil, Inc., the U.S. Supreme Court brought some welcome clarity to the question of whether willfulness is required in order to recover an infringer’s profits under...more

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