In BBK Tobacco & Foods LLP v. Cent. Coast Agric., Inc., 97 F.4th 668 (9th Cir. 2024), the Ninth Circuit Court of Appeals held that federal district courts have power to adjudicate trademark applications pursuant to the Lanham Act, 15 U.S.C. § 1119, provided that the litigation involves infringement of a registered trademark.Continue Reading Divided 9th Circuit Says District Court Has Power to Adjudicate TM Applications
In its first opportunity to apply the Supreme Court’s recent decision in Jack Daniel’s Properties v. VIP Products LLC, which held that the First Amendment did not protect infringing works that “use [the complainant’s] mark [ ] as a mark,” the Second Circuit upheld an Eastern District of New York order enjoining art collective MSCHF from offering its “Wavy Baby” sneaker that likely infringed Vans’ marquee “Old Skool” sneaker. See Vans, Inc. v. MSCHF Prod. Studio, Inc., 602 F. Supp. 3d 358 (E.D.N.Y. 2022). The Vans case and appeal had both been stayed pending the outcome of Jack Daniel’s.Continue Reading Second Circuit Finds Art Collective Can’t Use First Amendment to Skate Out of Injunction
The Trademark Modernization Act (TMA) was signed into law on December 27, 2020. The Act introduces significant amendments to the Lanham Act designed to strengthen the rights of legitimate trademark owners. The Act makes it easier for trademark owners to obtain injunctive relief in litigation, provides new mechanisms for challenging trademark applications and registrations on the basis of non-use, codifies the letter of protest procedure, and affords the USPTO greater discretion and flexibility in setting deadlines to respond to office actions.
Continue Reading Trademark Modernization Act Strengthens Rights of Trademark Owners
Sheppard Mullin’s intellectual property group prevailed before the United States Supreme Court in the trademark matter entitled Hana Financial v. Hana Bank. 574 U.S. ___ (2015). Justice Sotomayor, writing for a unanimous court, affirmed a Ninth Circuit ruling that the doctrine of trademark tacking presents a question of fact appropriate for jury determination. 735 F.3d 1158 (9th Cir. 2013). This was the first substantive trademark decision by the U.S. Supreme Court in nearly a decade. Partner Carlo Van den Bosch argued the case before the Supreme Court. With him on the briefs were Bob Rose, Michelle Wisniewski, and Gazal Pour-Moezzi. Karin Vogel and Robert Stumpf from the appellate group also contributed.
Continue Reading Supreme Court Update – Hana Financial v. Hana Bank