Category Archives: Trademarks and Trade Dress

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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

Using Charity Names in Sales Campaigns

Well-meaning marketers sometime structure branded licensing campaigns around charitable causes. These kinds of campaigns are built around a core concept: sell products or services that benefit, in whole or in part, a charity of the marketer’s choosing. Campaigns of this nature offer manufacturers and retailers a possible tri-fecta win- increased sales, positive public relations, and the satisfaction of … Continue Reading

Ninth Circuit Declines to Expand Aesthetic Functionality Doctrine

The Ninth Circuit recently rejected efforts to expand the doctrine of aesthetic functionality to cover logos, as such an expansion would do away with trademark protection, according to the court. Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc. et al., Case No. 04-16174, ___ F.3d _____, 2006 WL 2325105 (9th Cir. August 11, 2006). The Ninth Circuit … Continue Reading

Football Fans Take Note

A group of six Native American tribal leaders have filed a petition to cancel the REDSKINS® trademark registration, a moniker used by the Redskins professional football team since it first changed its name to the Boston Redskins in 1933. According to some accounts, the team was so named to honor its first coach who was … Continue Reading

Making A “Lasting Impression” Without Violating Trademark Rights

The Meaning and Scope of the Trademark Fair Use Defense Most intellectual property practitioners are familiar with the concept of a "fair use" defense in the context of copyright infringement actions. But the decision by the United States Supreme Court in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) devoted quality … Continue Reading

WHOIS Changes on the Horizon?

Several attorneys from Sheppard Mullin attended the International Trademark Association Annual Meeting from May 7 through May 10, 2006 in Toronto, Canada. This year’s meeting focused on cross-border protection, licensing, and registration of trademarks and service marks, with particular attention on the unique challenges trademark owners face with cross border protection.… Continue Reading

The Cost Of Non-Compliance

Today, more than ever, companies are confronted with a broad array of electronic document issues, including data retention policies and e-discovery during litigation. Failing to comply with rules regarding such electronic data can cost millions of dollars. For instance, in United States Securities and Exchange Commission v. Morgan Stanley & Co., Inc., No. 06 0882 … Continue Reading

What’s In A Name?

Last week the California Senate voted to give California wines a naming system similar to that protected so vigorously by the French. If passed, bill SB 1380 will allow wines to be named by region as well as by grape and label. This bill applies to wines grown in the regions of Sonoma, Mendocino, Monterey, … Continue Reading

Trademark Dilution Revision Act of 2005

In response to the Supreme Court’s decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003), the Senate Judiciary Committee has unanimously approved revisions to the dilution provisions of the Lanham Act which adopt a standard of likely dilution rather than actual dilution. The following changes were also made to the dilution provisions:… Continue Reading

“Surfviving” Summary Judgment In Trademark Infringement Actions

Welcome to Sheppard Mullin's Intellectual Property Blog. The purpose of our blog is to cover developments in the laws relating to patents, trademarks, copyrights, trade secrets and other matters of importance in the protection of your most valuable business asset - your intellectual property. We hope that our blog will be a valuable and informative resource.… Continue Reading

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