Tag: Trademark

Intellectual Property

Drawing the Line in Between Separate Corporations: Supreme Court Vacates a $43M Trademark Disgorgement Ruling

Written by Franklin F. Franco On February 26, 2025, the U.S. Supreme Court issued a unanimous decision in Dewberry Group Inc. v. Dewberry Engineers Inc. that reaffirms a key limitation in trademark remedies: courts cannot order disgorgement of profits from a defendant’s corporate affiliates unless those entities are expressly named as defendants. In a unanimous ruling, the Court held that the Lanham Act’s provision for … Continue reading Drawing the Line in Between Separate Corporations: Supreme Court Vacates a $43M Trademark Disgorgement Ruling

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Intellectual Property

Watered Down Whisky: Bad Spaniels Dilutes Trademarks But Does Not Infringe

Written by Ian Logan After more than a decade of litigation, which included U.S. Supreme Court review, VIP Products LLC v. Jack Daniel’s Properties Inc., No. CV-14-02057 returned to the United States District Court for the District of Arizona for yet another ruling on remand.  On January 21, 2025, U.S. District Judge Stephen M. McNamee ruled that although the “Bad Spaniels” dog toy, shaped like … Continue reading Watered Down Whisky: Bad Spaniels Dilutes Trademarks But Does Not Infringe

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Intellectual Property

U.S. Trademark Office Fees Increasing Significantly on January 18, 2025: What It Means for You

Written by Eleanor M. Lackman The new year is bringing with it some major fee increases from the U.S. Patent & Trademark Office (USPTO) for certain key aspects for trademark filings and other trademark prosecution. Nearly all go into effect on January 18, 2025. Here are some major changes to know, and how they may affect your filing strategy in the United States: These changes … Continue reading U.S. Trademark Office Fees Increasing Significantly on January 18, 2025: What It Means for You

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Intellectual Property

“Conquesting” Lawsuit Is No Conquest for Trademark Plaintiff

Written by Skyler M. Terrebonne On October 22, 2024, the U.S. Court of Appeals for the Ninth Circuit Court delivered the latest word on whether the practice of “keyword advertising,” and in particular the strategy of “conquesting,” constitutes trademark infringement. Keyword advertising is an advertising strategy wherein a company bids on a Google Ads keyword, so that an advertisement for its business will appear near the top … Continue reading “Conquesting” Lawsuit Is No Conquest for Trademark Plaintiff

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Intellectual Property

Punchbowl, Inc. v. AJ Press: A Trademark Defendant Prevails Post-Jack Daniel’s

Written by Constance Kang Punchbowl, Inc. v. AJ Press is one of the first rulings to grapple with an infringement case following the U.S. Supreme Court’s recent limitation of the applicability of a First Amendment-based defense in Jack Daniel’s Properties v. VIP Products LLC.  The opinion, issued in the case last week upon remand after the Ninth Circuit’s reading of Jack Daniel’s, not only held … Continue reading Punchbowl, Inc. v. AJ Press: A Trademark Defendant Prevails Post-Jack Daniel’s

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Intellectual Property

Analogous Use Saves the Day for Comic Book Character Trademark

Written by Eleanor M. Lackman and Bryse K. Thornwell In Cosmic Crusaders LLC v. Andrusiek, No. 23-1150 (Fed. Cir. Oct. 19, 2023), a case involving comic book characters and trademark rights, the U.S. Court of Appeals for the Federal Circuit explored the application of the “prior use” element of a trademark likelihood of confusion claim under Section 2(d) of the Lanham Act. The court placed … Continue reading Analogous Use Saves the Day for Comic Book Character Trademark

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Intellectual Property

Better Call Saul Receives ‘Sweet Liberty’ From Trademark Suit

Written by Ian Logan On September 25, 2023, the U.S. District Court for the Southern District of New York issued an opinion and order in JTH Tax LLC v. AMC Networks Inc., et al., Case No. 22-cv-06526, ECF No. 44 (S.D.N.Y. Sept. 25, 2023), granting Defendants AMC Networks Inc. (“AMC”) and Sony Pictures Television Inc.’s (“Sony”) motion to dismiss. Applying the test originally set forth … Continue reading Better Call Saul Receives ‘Sweet Liberty’ From Trademark Suit

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Intellectual Property

SCOTUS Holds That Federal Trademark Law Does Not Reach Infringing Conduct That Occurs Abroad

Written by Marissa B. Lewis and Brandon E. Hughes On June 29, 2023, the U.S. Supreme Court issued its decision in Abitron Austria GmbH, et al. v. Hetronic International, Inc., No. 21-1043, holding that federal trademark law extends only to claims where the alleged infringing “use in commerce” occurs in the U.S.  The ruling overturns a $96 million in damages awarded for infringing conduct that … Continue reading SCOTUS Holds That Federal Trademark Law Does Not Reach Infringing Conduct That Occurs Abroad

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Intellectual Property

Are Virtual Goods Still Goods for Trademark Purposes?

Written by Bryse K. Thornwell In Yuga Labs, Inc. v. Ripps, et al, No. 2:22-CV-04355  (C. D. Cal. Apr. 21, 2023), Judge John F. Walter explored the use of trademarks in the world of non-fungible tokens (“NFTs”), which are tokenized assets that have been recorded on a blockchain. As intellectual property disputes continue to arise in the world of NFTs, the key issues that the … Continue reading Are Virtual Goods Still Goods for Trademark Purposes?

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Intellectual Property

The Eleventh Circuit Rules in Favor of Floribama Shore Creators and Opines on the Future of the “Title-Versus-Title Exception” to the Rogers v. Grimaldi Defense

Written by Lindsay R. Edelstein and Marissa B. Lewis The Eleventh Circuit recently affirmed the Northern District of Florida’s summary judgment decision in MGFB Props., Inc., et al. v. Viacom, Inc., holding that use of the name MTV Floribama Shore for a reality show spin-off of Jersey Shore is protected by the First Amendment and does not infringe the trademark of a well-known bar called Flora-Bama Lounge.  … Continue reading The Eleventh Circuit Rules in Favor of Floribama Shore Creators and Opines on the Future of the “Title-Versus-Title Exception” to the Rogers v. Grimaldi Defense

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