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 held that, under Second Circuit law, an award of profits could not be sustained for Romag’s failure to establish Fossil’s infringement was willful.[2] The Court’s decision resolves a Circuit split regarding the interpretation of Section 1117(a) of the Lanham Act, which states in pertinent part:
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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 U.S. 159 (1995) and Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000).
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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. Peju Province Winery L.P., 1:17-cv-00873-NRB (S.D.N.Y. Dec. 11, 2017).
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Warren Distribution, Inc. v. Royal Purple, LLC – What’s in a Name?
In this matter, the Trademark Trial and Appeal Board dismissed an opposition without prejudice in this precedential opinion because the party that filed the opposition was different from the party that sought and obtained an extension of time to file the opposition.
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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 a summary of Wonderbread 5 v. Gilles.
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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, Inc.
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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 Alabama v. Pitts, Jr. and In re Aquamar.
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Summary of Recent Precedential Trademark Trial and Appeal Board Decisions
In the past two months, the Trademark Trial and Appeal Board has issued three opinions citable as Board precedent. The following is a brief summary of each opinion and its precedential impact.
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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 inter partes challenge to registration before the TTAB, brand owners are wise to consider the possible preclusive impact of the TTAB’s decision in a later-filed or concurrently pending district court action. In its recent petition for a writ of certiorari, B&B Hardware, Inc. argues that Circuit Courts of Appeals are incurably split as to whether district courts are collaterally estopped from relitigating issues decided by the TTAB. In its opposition, respondent Hargis Industries, Inc. argues that any alleged Circuit split is illusory. B&B’s petition is still pending, and the Court recently invited the Solicitor General to file a brief expressing the view of the government.
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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 prominence of the litigants and the always interesting insights of Judge Posner. Additionally, at the conclusion of this short article, I will posit an alternative theory of reverse consumer confusion potentially applicable to the facts of this dispute.
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