Paul Bost

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U.S. Supreme Court Rules that Profits Available Even from Non-Willful Trademark Infringers

The U.S. Supreme Court unanimously held today (April 23, 2020) that a brand owner is not required to prove a defendant’s trademark infringement was willful as a precondition to an award of the defendant’s profits. The Court’s decision – Romag Fasteners, Inc. v. Fossil Group, Inc.[1] – vacated the decision of the Federal Circuit, which … Continue Reading

The Federal Circuit Reconsiders the Inherent Distinctiveness of Color Marks in In re Forney

On April 8, 2020, in In re: Forney Industries, Inc.,[1] the Federal Circuit reversed the Trademark Trial and Appeal Board’s finding that a color mark can never be inherently distinctive.  By so holding, the Federal Circuit controverts what had become conventional wisdom since the Supreme Court’s decisions in Qualitex Co. v. Jacobson Prod. Co., 514 … Continue Reading

Cesari S.R.L. v. Peju Province Winery L.P.: Relying on Supreme Court Precedent, District Court Holds that Trademark Trial & Appeal Board Finding of Likelihood of Confusion has Preclusive Effect

Federal district courts continue to apply the Supreme Court’s ruling in B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S.Ct. (2015) with unpredictable results. The latest such example comes from the Southern District of New York, where Judge Buchman, in reliance on B&B Hardware, precluded the defendant from contesting likelihood of confusion. Cesari S.R.L. v. … Continue Reading

Summary of Recent Precedential Trademark Trial and Appeal Board Decisions

From June through August 2015, the Trademark Trial & Appeal Board issued eleven precedential decisions.  Over the course of the upcoming weeks, we are briefly summarizing each opinion and a “take away” for brand owners and practitioners.  We continue our series with summaries of UVeritech, Inc. v. Amax Lighting, Inc. and In re Driven Innovations, … Continue Reading

Summary of Recent Precedential Trademark Trial and Appeal Board Decisions

From June through August 2015, the Trademark Trial & Appeal Board issued eleven precedential decisions. Over the course of the upcoming weeks, we will briefly summarize each opinion and a “take away” for brand owners and practitioner. We begin with the first two opinions (in chronological order): The Board of Trustees of The University of … Continue Reading

Are Circuit Courts of Appeals Split as to the Preclusive Impact Accorded to Prior Trademark Trial and Appeal Board Decisions?

Battles between brand owners are frequently fought in the United States in two forums:  the Trademark Trial and Appeal Board and federal district court.  While the TTAB is limited to determining a party’s right to register its trademark, district courts may adjudicate rights to registration and use of a mark.  When prosecuting or defending an … Continue Reading

Kraft v. Cracker Barrel: A Summary of Judge Posner’s Opinion and an Alternative Reverse Confusion Theory of Liability

In a unanimous opinion authored by Judge Posner, the Seventh Circuit recently upheld the district judge’s granting of plaintiff Kraft Foods Group Brands LLC’s motion to preliminarily enjoin defendant Cracker Barrel Old Country Store, Inc.’s sale of food products to grocery stores under the CRACKER BARREL trademark.  The opinion is worth examining given the commercial … Continue Reading
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