Trademarks and Trade Dress

In BBK Tobacco & Foods LLP v. Cent. Coast Agric., Inc., 97 F.4th 668 (9th Cir. 2024), the Ninth Circuit Court of Appeals held that federal district courts have power to adjudicate trademark applications pursuant to the Lanham Act, 15 U.S.C. § 1119, provided that the litigation involves infringement of a registered trademark.Continue Reading Divided 9th Circuit Says District Court Has Power to Adjudicate TM Applications

The harm caused to brands by counterfeiting goes far beyond loss of sales or profits.  Fake goods jeopardize public health and safety when a brand’s trademark is applied to a sub-standard and potentially harmful product.  This is especially hazardous for counterfeit medical items, mechanical parts, and food products, to name a few.  What is more, the reputational damage inflicted by low-quality products can be devastating.
Continue Reading Practice Tips for Combating Counterfeiters: An Action Plan for Brands, Manufacturers and Retailers

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 of Kentucky basketball standout and consensus No. 1 NBA draft pick Anthony Davis, is now getting into the trademark business.
Continue Reading A Slam Dunk For Trademarking Sports Catchphrases

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 that the defendants had failed to prevent vendors from selling fake Louis Vuitton goods at the flea market. See Louis Vuitton Malletier v. Eisenhauer Road Flea Market, Inc., No. SA-11-CA-124 (W.D. Tex.). Louis Vuitton stated that counterfeit “LV” products were abundant at the flea market and that Louis Vuitton had given Gore and Walker sufficient opportunities to discipline their vendors that engaged in phony sales. Louis Vuitton alleged, notwithstanding this notice, that Gore and Walker chose to be “willfully blind” to such infringing activity. Gore testified that he warned market tenants not to sell counterfeit goods, only to have those vendors nonetheless engage in distribution of bogus items after they said they would not.
Continue Reading Louis Vuitton Achieves Genuine Victory Over Flea Market’s Phony Sales

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 in Los Angeles during the early 21st Century. The federal government of the United States has relinquished its authority to private entrepreneurs and organizations. Franchising, individual sovereignty, and private automobiles reign supreme. Highway companies compete for traffic in the real world while the Metaverse is populated and travelled by user-controlled avatars and system daemons.Continue Reading Trademarks In The Veldt: Do Virtual Lawyers Dream Of Electric Trademarks?

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 practitioners, Federal Circuit judges, and industry groups, particularly Big Pharma. This article assumes some familiarity with the case and the issues. However, for background information on both, please click here.Continue Reading Adjusting the Inequitable Conduct Doctrine: Federal Circuit Hears Oral Arguments En Banc in Therasense

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 of an earlier action, Gucci America, Inc. v. Laurette Co., Inc., No. 08 Civ. 5065 (LAK) (S.D.N.Y. June 3, 2008), in which Gucci successfully sued defendant Laurette for operating a website, "TheBagAddiction.com," which sold counterfeit Gucci designs. Gucci later brought suit against three credit card merchant companies, Durango Merchant Services (a Wyoming corporation), Frontline Processing Corporation (a Nevada corporation principally operating in Montana), and Woodforest National Bank (a Texas corporation), alleging that those companies aided and assisted Laurette and other similar website operators in infringing Gucci’s marks. According to the allegations set forth in Gucci’s complaint, Durango established credit card processing services for web companies like Woodforest and Frontline that sold counterfeit products. Gucci brought trademark infringement and counterfeit claims against Laurette based upon website sales of counterfeit Gucci products. Gucci alleged that the credit card processing services established by the three defendants were essential to Laurette’s sale of counterfeit Gucci products, and, for that reason, Durango, Frontline, and Woodforest were equally responsible for direct, contributory, and vicarious trademark infringement under the Lanham Act and New York state law. The defendants moved to dismiss the action on the grounds that the court lacked personal jurisdiction and that Gucci had failed to state a claim.Continue Reading Gucci’s Attempt to Extend Trademark Infringement Liability to Credit Card Merchant Service Providers Survives Motion to Dismiss

The Del Mar office of Sheppard Mullin recently had the rare honor and privilege of hosting an inventors forum with David Kappos, the Director of the United States Patent and Trademark Office, as the guest of honor. During the event, inventors from the general San Diego area had the unique opportunity to ask Mr. Kappos questions, in-person, regarding the patent office, and discuss issues relating to their dealings with the patent office.Continue Reading USPTO Director Visits Sheppard Mullin

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”). Recent decisions by the Trademark Trial and Appeal Board (“T.T.A.B.”), including Medinol v. Neuro Vasx, Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003), had previously applied a broader objective inquiry into whether the applicant “knew or should have known” with respect to allegations of fraudulent representation, resulting in the cancellation of various trademark registrations. Here, the Court explicitly rejected application of such a standard and affirmatively stated that cancellation is only justified where there is proof of subjective fraudulent intent.Continue Reading Federal Circuit Clarifies Standard For Proving “Fraud” in Trademark Renewals

On June 19, 2009, in Zino Davidoff SA v. CVS Corp., the Second Circuit enjoined CVS, a national retail chain, from removing unique production codes ("UPC") from Davidoff product packaging for its "Cool Water" fragrances on the grounds of trademark infringement.[1]  Davidoff, a high end luxury brand, imprints a unique UPC on every product for quality control purposes and to protect against diversion and counterfeiting.  The code contains basic information about each product unit, including "where and when it was produced, ingredients used, and distribution path."[2]  The UPC code ordinarily is used to track goods that are sold to and by unlicensed distributors.  The Davidoff UPC also allows Davidoff to spot defects easily and swiftly recall or remove products from the market when such defects are noted.  The UPC is used to protect the reputation of the brand and its trademarks.Continue Reading Removal of UPC Codes Constitutes Trademark Infringement

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 and reversed the district court’s decision and remanded the case for proceedings consistent with the Second Circuit’s opinion. This case sets forth important guidelines for fashion designers when entering into agreements regarding personal name trademarks and rights of publicity and privacy.Continue Reading Joseph Abboud Is Back: Personal Name Trademark Controversy Continues