Category Archives: Trademarks and Trade Dress

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Federal Circuit Clarifies Standard For Proving “Fraud” in Trademark Renewals

On August 31, 2009, the United States Court of Appeals for the Federal Circuit issued a decision holding that, in order for a trademark registration to be canceled on the basis of fraud, the party challenging the registration must prove that the registrant had actual intent deceive the United States Patent and Trademark Office (“PTO”). … Continue Reading

Joseph Abboud Is Back: Personal Name Trademark Controversy Continues

On June 10, 2009, the Second Circuit vacated a summary judgment decision that permanently enjoined menswear designer Joseph Abboud from making commercial use of his own name. J.A. Apparel Corp. v. Abboud, No. 08-3181-cv, 2009 U.S.App. LEXIS 12537, at *3 (2d Cir. June 10, 2009). Judge Amalya Kearse authored the decision for the Second Circuit … Continue Reading

Effective Immediately, Trademark Owners Need To Protect Their Trademarks From Registration As Usernames On Facebook

Social network Web site Facebook announced that, beginning this Saturday, June 13, at 12:01 am U.S. EDT, all Facebook users will be allowed to choose a personalized username for their Facebook profiles. This username will replace the numerical string that appears on the URL for each user’s profile page. Facebook users will be able to … Continue Reading

Second Circuit Resolves Split Between the Circuits Regarding Sale of Keywords to Trigger Sponsored Links and “Use in Commerce” Under the Lanham Act

On April 3, 2009, the Second Circuit Court of Appeals handed down its decision in the matter of Rescuecom Corp. v. Google, Inc., reversing the United States District Court for the Northern District of New York’s dismissal of Rescuecom’s complaint on the grounds that it failed to state a valid claim for relief. The Court … Continue Reading

Gibson’s Patent Action Against Activision Hits Wrong Chord With Court In “Guitar Hero” Dispute: Summary Judgment Granted

Activision licensed the Gibson trademark and trade dress in November 2006 in connection with Guitar Hero’s "custom guitar controller peripheral." Activision paid a one-time fixed license fee to cover the term of the license and Gibson agreed to help promote the Guitar Hero product.… Continue Reading

Brave New Web: Trademark Rights in the Expanding Internet

In June 2006, the International Corporation for Assigned Names and Numbers (ICANN) approved a plan that would allow for the creation of hundreds of new domain names.  The Internet as we know it currently operates using 12 generic top-level domain names (gTLDs) to direct traffic.  Some of the more common gTLDs include .com, .net, .edu, … Continue Reading

Summary Judgment in Favor of Fiji Water – “Bottled At the Source” Held Generic

On July 16, 2008, the Northern District of California dismissed on summary judgment a lawsuit brought by the company that manufactures, markets and sells Crystal Geyser bottled water (CG Roxane LLC) against Fiji Water Company LLC, Fiji Water Company Holdings LLC and Paramount International Export, LTD.   The court also granted Fiji’s summary judgment motion for … Continue Reading

Injunctions in Trademark and Copyright Infringement Cases: Trending Against the Irreparable Harm Presumption?

Since the Supreme Court’s decision in eBay v. Merc-Exchange, IP plaintiffs who plan on relying on the presumption of irreparable harm when seeking injunctive relief (whether a TRO, preliminary or permanent) may want to rethink that strategy.  The days of relying on a general "presumption" of irreparable harm, without actual proof of such harm, are … Continue Reading

Consider the Venue: Significant Split Among Circuits In Findings of Liability for Trademark Infringement in Metatags and Keywords

On April 7, 2008, in North American Medical Corp. v. Axiom Worldwide, Inc., the Federal Court of Appeals for the 11th Circuit Court (with jurisdiction over Alabama, Florida and Georgia), ruled that using another’s trademark in metatags infringes the Lanham Trademark Act.  There is a split of authority regarding trademark infringement by the use of … Continue Reading

When Is A Display “Associated” With E-Commerce Goods? The TTAB Provides An Internet Friendly Answer

Traditional legal concepts and e-commerce have not always easily coexisted.  Nowhere is this more apparent than trademarks where the traditional “affixation” requirement flies in the face of how modern internet transactions are proposed and consummated.  Through its decision in In re Valenite Inc., Serial No. 76482852 (July 31, 2007), the Trademark Trial and Appeal Board … Continue Reading

Supreme Court Heightens Federal Pleading Standard

In a case likely to impact intellectual property litigation, the Supreme Court recently issued a ruling that alters the pleading standard necessary to support civil complaints filed in federal court, which governs most IP disputes.  In Bell Atlantic Corp. v. Twombly, 550 U.S. ____ (2007), the Court heightened the pleading standard, requiring that a complaint … Continue Reading

Coordinated Enforcement

There is a groundswell of federal legislative activity aimed at protecting and enforcing the intellectual property rights of United States businesses, authors and artists against international counterfeiting and piracy. This movement is signified most recently by the introduction of Senate Bill 522 on Feb. 7, entitled the "Intellectual Property Rights Enforcement Act." What remains to … Continue Reading

Second Circuit Decision Expands Famous Trademark Owners’ Rights

In a win for owners of famous trademarks, the Second Circuit recently held that the 2006 Federal Trademark Dilution Act ("FTDA"), which amends portions of the federal Lanham Act, applies to pending appeals seeking injunctive relief, even if on appeal from a final judgment entered before the amendments were enacted.  Starbucks Corporation v. Wolfe’s Borough Coffee, … Continue Reading

Federal Trademark Dilution – The Trademark Dilution Revision Act of 2006

On October 6, 2006, President Bush signed the Trademark Dilution Revision Act of 2006 (“TDRA”) into law. The TDRA amends the Federal Trademark Dilution Act of 1995 (“FTDA”) in a number of important respects, both broadening and narrowing the dilution protection afforded to famous marks.  The TDRA does not preempt state anti-dilution law.… Continue Reading

Taking Confusion Past Hearsay Hurdle

Article printed November 22, 2006 for The Los Angeles Daily Journal Evidence of actual confusion, or the lack thereof, is often the dispositive factor in trademark infringement cases. Over the last dozen years, the Central and Northern Districts of California have issued conflicting rulings on the admissibility of testimony concerning conversations with third parties to … Continue Reading

Reverse Confusion: The “Other” Trademark Infringement

In the past year, the Ninth Circuit Court of Appeals appears to have narrowed the application of the reverse confusion doctrine.  Many companies are familiar with the traditional trademark infringement known as “forward confusion.”  See Lanham Act, 15 U.S.C. §§ 1051 et seq.  Forward confusion occurs when the use of a trademark by a second … Continue Reading

Trademark Dilution Revision Act Awaits President Bush’s Approval

On September 25, 2006, the House of Representatives passed the Senate’s version of the Trademark Dilution Revision Act of 2006 (H.R. 683).  The International Trademark Association led the campaign to enact the new U.S. trademark anti-dilution statute as a reaction to the Supreme Court’s decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 … Continue Reading

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