Trademarks and Trade Dress

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One of the foundational principles of United States trademark law, as well as the law of most other countries, is that trademark protection is national in nature and does not extend beyond a country in which the mark is used or registered.  A recent decision by the New York State Court of Appeals demonstrates that in an increasingly global economy, this bedrock principle of trademark law is no longer absolute.  The Court of Appeals decision in ITC Ltd. v. Punchgini, Inc., involved a claim by the owner of the Bukhara restaurant in New Delhi, India, that a restaurant which opened in New York City under the same name was infringing its trademark rights.Continue Reading Court Finds Famous Foreign Trademarks Protectible

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 has, fortunately, engaged in some creative rule bending which provides breathing space for the new realities of the electronic marketplace while remaining faithful to the underpinnings of trademark law – namely, assuring protection only for marks which identify the source of products because of how they are perceived by the relevant purchasing public.Continue Reading When Is A Display “Associated” With E-Commerce Goods? The TTAB Provides An Internet Friendly Answer

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 recite facts sufficient to "plausibly" support the legal claims it sets forth.Continue Reading Supreme Court Heightens Federal Pleading Standard

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 be seen is whether this groundswell will come out of the halls of Congress and into the international marketplace, or whether it will recede into relative oblivion, as when a prior version of IPREA was introduced in 2005.  Continue Reading Coordinated Enforcement

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, Inc., 2007 U.S. App. LEXIS 3372 (2nd Cir. 2007).Continue Reading Second Circuit Decision Expands Famous Trademark Owners’ Rights

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 Federal Trademark Dilution – The Trademark Dilution Revision Act of 2006

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 prove actual confusion.Continue Reading Taking Confusion Past Hearsay Hurdle

On December 1, 2006, several amendments to the Federal Rules of Civil Procedure ("FRCP") will become effective. The changes that deal directly with electronically stored information ("ESI") will likely affect the means, method, and timing of discovery. Selected amendments to the FRCP are discussed below:


Continue Reading Ensuring Compliance With Changes To The FRCP

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 party (a junior user) is likely to lead consumers to mistakenly believe the junior user’s goods emanate from or are associated with the first (or senior) user of the mark.  Such confusion allows the junior user to trade on and benefit from the reputation and goodwill of the senior user, whether intentional or not.  In launching new brands, companies also should keep in mind another form of trademark infringement recognized under the Lanham Act – “reverse confusion.”Continue Reading Reverse Confusion: The “Other” Trademark Infringement