Category Archives: Trademarks and Trade Dress

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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 … 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

A Slam Dunk For Trademarking Sports Catchphrases

By Ryan Hilbert Following on the heels of New York Jets quarterback Tim Tebow’s attempt to register the trademark "Tebowing," Baltimore Ravens linebacker Terrell Suggs’ attempt to register the trademark "Ball So Hard University," and New York Knicks phenom Jeremy Lin’s attempt to register the trademark "Linsanity," it appears that another high-profile athlete, former University … Continue Reading

Louis Vuitton Achieves Genuine Victory Over Flea Market’s Phony Sales

Luxury brand titan Louis Vuitton recently achieved a significant victory over counterfeiting of its designer products. In an action brought in the U.S. District Court for the Western District of Texas, Louis Vuitton sued the Eisenhauer Road Flea Market, its owner, Bruce L. Gore, and its manager, Patricia D. Walker, for contributory trademark infringement, alleging … Continue Reading

Trademarks In The Veldt: Do Virtual Lawyers Dream Of Electric Trademarks?

In Neal Stephenson’s 1992 science fiction novel, Snow Crash, humans interact as avatars in the “Metaverse,” the collective product of online shared three-dimensional space.[1] As imagined by Stephenson, this “Metaverse” has been created by all virtual worlds[2] – it is an augmented and enhanced physical reality, a physically persistent virtual space.[3] The novel is set … Continue Reading

Adjusting the Inequitable Conduct Doctrine: Federal Circuit Hears Oral Arguments En Banc in Therasense

By Gray M. Buccigross On November 9, 2010, the Federal Circuit, sitting en banc, heard oral arguments in Therasense, Inc. v. Becton, Dickinson & Co., regarding the legal tests to be applied in determining whether a patent is unenforceable due to inequitable conduct. This has been a controversial issue over the last several years among … Continue Reading

Gucci’s Attempt to Extend Trademark Infringement Liability to Credit Card Merchant Service Providers Survives Motion to Dismiss

Judge Harold Baer in Gucci America, Inc. v. Frontline Processing Corp., No. 09 Civ. 6925 (HB), 2010 WL 2541367 (S.D.N.Y. June 23, 2010), ruled that Gucci had sufficiently alleged facts to defeat a motion to dismiss in a suit brought against three defendant credit card merchant service providers for trademark infringement. The litigation stems out … Continue Reading

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
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