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Category Archives: Trademark

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District Courts Adopting Middle Ground in Fashioning Statutory Damages Awards in Trademark Counterfeiting Cases

Posted in Trademark, Trademark Counterfeiting
Two recent opinions, one from the Northern District of Illinois and another from the Southern District of New York, offer guidance to those electing statutory damages in lieu of actual damages and profits in trademark counterfeiting cases. The takeaway for litigators is that courts appear to be taking a middle ground in statutory damages awards, awarding $1 million per mark/good combination instead of the $2 million statutory maximum.… Continue Reading

Claims by Brand Owners Against Alibaba Defendants are Reasserted in S.D.N.Y.

Posted in E-Commerce, Trademark, Trademark Counterfeiting
A group of brand owners has filed another complaint against eleven Alibaba and Taobao entities for claims including direct and contributory trademark counterfeiting and violations of the RICO statute. At issue is when and to what extent a service provider can be held liable for alleged trademark counterfeiting taking place on an online platform.… Continue Reading

The Hurdles to Register a Scent as a Mark

Posted in Trademark
Registrations of non-traditional trademarks are uncommon, and often discussed only among legal scholars and in academic papers. A recent Wall Street Journal article, however, called attention to a growing trend in trademark law: registration of scents and fragrances. The article describes the efforts of CESI Chemical, Inc., a producer of solvents for the fracking industry, which filed an application to register the orange scent imbued in its chemical additives for its hydraulic fracturing fluid.… Continue Reading

Case Highlight: California District Court Refuses to Stay Civil Case Pending Resolution of Potential Criminal Prosecution

Posted in Trademark, Trademark Counterfeiting
In Sanrio, Inc. v. Ronnie Home Textile Inc., the U.S. District Court for the Central District of California recently refused to stay a civil case pending completion of a parallel criminal counterfeiting investigation. In Sanrio, the plaintiffs sued a corporation and two alleged principals for trademark infringement and other claims. The case was filed after law enforcement seized allegedly counterfeit goods offered for sale by the defendants and related evidence. The defendants argued that the civil case should be stayed because the seizure left them without means to substantively defend themselves. They further argued that allowing the civil case to go forward would implicate the individual defendants’ Fifth Amendment rights, though criminal charges had not been brought against them.… Continue Reading

Recent Damages Award for Wrongful Seizure Under the Lanham Act

Posted in Trademark, Trademark Counterfeiting
Judge Preska of the United States District Court for the Southern District of New York recently awarded attorneys' fees, damages, and prejudgment interest on damages, but not fees to defendants, in a trademark counterfeiting case. In Prince of Peace Enterprises, Inc. v. Top Quality Food Market, LLC, Judge Preska adopted in part a report and recommendation of Magistrate Judge Maas, ending an eight-year litigation surrounding ex parte seizures of herbal supplements which took place in 2007.… Continue Reading

In Trademark Infringement Matters, Think Twice Before Waiting. Laches May Run from the Date of the Product Announcement, Before the Initial Sales

Posted in Trademark
Fitbit and Fitbug are makers of activity trackers, which are wearable tracking devices that connect to the internet and provide users with feedback about their fitness, quality of sleep, and other personal metrics. Fitbug’s U.S. trademark rights to FITBUG date back to 2004, when the British device maker filed an intent to use application with the United States Patent and Trademark Office, which registered in 2009. Fitbug began selling its products in United States commerce since at least as early as 2005. Fitbit, on the other hand, filed a trademark application for FITBIT in August 2008 and announced its product launch the following month. However, Fitbit did not begin shipping its products using the trademark FITBIT until September 2009. … Continue Reading

Hana Financial, Inc. v. Hana Bank: Tacking Priority of Earlier Trademarks

Posted in Trademark, USPTO
The U.S. Supreme Court does not get to tackle trademark law issues very often. The decision in Hana Financial, Inc. v. Hana Bank, (No. 13-1211; January 21, 2015) is the first pronouncement of the highest Court on trademark matters in more than a decade, and it deals with the issue known as tacking. Trademarks often experience changes in appearance and overall look in the course of many years. These changes can take various forms, such as a modification in lettering style, a rearrangement in the order of words, the dropping of a background design, or the addition of new stylized elements. The tacking doctrine allows a party to claim the earlier priority date of an old mark for a new trademark, if the later involves slight changes over the prior version. The U.S. Supreme Court’s decision in Hana Financial addresses narrowly the question as to whether tacking is a matter of law reserved to a judge, or a matter of fact decided by a jury.… Continue Reading

Keep Your Eyes Open: Protecting Trademarks Through Active Litigation

Posted in Trademark
Industry-specific trade shows offer manufacturers the opportunity to market their products and keep tabs on trends in their industry. However, these shows also provide an opportunity for manufacturers to identify counterfeit models of its products offered on the market. Bond Manufacturing (“Bond”), which produces outdoor heating units, arrived at the 2013 National Hardware Show in Las Vegas and discovered counterfeit versions of its products being exhibited at a nearby booth. Bond’s president was assisting with setting up the company’s booth when he noticed goods bearing Bond’s trademark at an exhibition booth operated by Bond’s previous business partner, Xiamen Hwaart Composite Material. The counterfeit goods included various products, including patio heaters, fire pits, and fireplaces. Combating counterfeiters is part of the daily routine for manufacturers like Bond, but identifying the sources of counterfeit products is typically challenging in the age of Internet commerce as counterfeiters are rarely bold enough to market their ersatz products out in the open in the light of day, particularly when the counterfeiter is your former business partner.… Continue Reading

Blurred Lines: Third Circuit’s Lanham Act Attorneys’ Fees Analysis Follows Recent Supreme Court Ruling in Patent Case

Posted in Patent, Trademark
The Court of Appeals for the Third Circuit recently decided that the U.S. Supreme Court’s April decision on attorneys’ fees in a patent case, Octane Fitness, LLC v. Icon Health & Fitness, Inc., should also be applied in trademark cases under the Lanham Act. See Fair Wind Sailing, Inc. v. Dempster, Nos. 13-3305 & 14-1572 (3d Cir. Sept. 4, 2014). Defendant Dempster had successfully moved to dismiss the action under Rule 12(b)(6) of the Federal Rules of Civil Procedure and was awarded its attorneys’ fees under § 35(a) of the Lanham Act and the Virgin Islands Code. Plaintiff Fair Wind Sailing appealed the fee award. The Third Circuit ultimately vacated the District Court’s fee award and remanded, instructing the court below to utilize an inquiry consistent with the Supreme Court’s decision in Octane Fitness.… Continue Reading

Washington Redskins Seek Reversal of TTAB Decision Canceling its Trademark Registrations

Posted in Trademark
On August 14, 2014, Pro-Football, Inc. (“Pro-Football”) appealed the Trademark Trial and Appeal Board’s (“TTAB”) June 18, 2014 decision to cancel its registrations for six REDSKIN-formative trademarks. As we previously reported, the TTAB’s 2-1 decision found that those trademarks were not entitled to be registered on the basis that a “substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with [the football team’s] services” during the time period when registration was sought.… Continue Reading

New Guidance on How to Calculate Statutory Damages Awards in Counterfeiting Cases

Posted in Trademark, Trademark Counterfeiting
Judge Koeltl of the United States District Court for the Southern District of New York recently adopted a recommended statutory damages award of $6.6 million dollars in a case involving trademark counterfeiting. Richemont Int’l S.A. et. al. v. Montesol Ou, et. al., 2014 WL 3732919, at *1 (S.D.N.Y. July 28, 2014). The plaintiff sellers of luxury goods had initially sought $78 million or $2 million per counterfeit mark per type of good counterfeited in connection with 88 domain names operated by the defendants. Richemont Int’l S.A. et. al. v. Montesol Ou, et. al., 2014 WL 3732887, at *4 (S.D.N.Y. May 13, 2014). But Magistrate Judge Pitman recommended instead an award of $6.6 million, including $6.3 million under the Trademark Act and $300,000 under the Anticybersquatting Consumer Protection Act.… Continue Reading

McDonald’s Triumphs over BioMcDiesel

Posted in Trademark, USPTO
On July 14, 2014, the United States Trademark Trial and Appeal Board (TTAB) found the trademark “BioMcDiesel” for biodiesel fuel likely to cause confusion with McDonald’s Corporation’s (“McDonald’s”) famous family of MC-formative trademarks. McDonald’s Corporation v. Joel D. Joseph, Opposition No. 91194117 (July 14, 2014) [not precedential]. The applicant, Joel Joseph, appeared pro se to defend his application, which was based on intent to use. McDonald’s challenged the application on three bases under the Lanham Act, namely, likelihood of confusion under Section 2(d), dilution under Sections 13 and 43(c), and on the basis that Mr. Joseph filed the application in bad faith, in that he lacked a bona fide intent to use the mark and solely filed the application for the purpose of selling or licensing the mark to McDonald’s. The TTAB’s decision addressed only the likelihood of confusion claim, and found the “BioMcDiesel” mark was not entitled to registration.… Continue Reading

USPTO Cancels Washington Redskins’ Trademark Registrations

Posted in Trademark
Earlier today, six trademark registrations for the Washington Redskins football team were cancelled on the basis that they are disparaging. In the long-awaited decision of Blackhorse v. Pro-Football, Inc., the Trademark Trial and Appeal Board (“TTAB”) found that the petitioners had shown “by a preponderance of the evidence that a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with [the football team’s] services” during the time period when registration was sought.… Continue Reading

Omaha! Feds Tackle Counterfeiters of NFL® Merchandise in Lead Up to the Big Game

Posted in Customs, Trademark
On Thursday, multiple federal law enforcement agencies announced that they have seized infringing knock off NFL® merchandise and Super Bowl® tickets valued at more than $20 million. Agents from both the U.S. Immigration and Customs Enforcement and the Department of Homeland Security, in cooperation with NFL® officials, conducted perhaps the largest Super Bowl® counterfeiting sting ever in what has become an annual tradition.… Continue Reading

Lontex and Oakley to “Sweat it Out” in Trademark Dispute

Posted in Trademark
Last Friday in Lontex Corp. v. Oakley, Inc., 1:13-cv-05459 (DNJ), Lontex sued Oakley in the U.S. District Court for the District of New Jersey for trademark infringement, counterfeiting and unfair competition relating to Lontex's federally registered mark, SWEAT IT OUT, for sweatbands, headbands and other athletic apparel.… Continue Reading

Coach Loses Design Mark Battle Against E&D Trading, Inc.

Posted in Trademark
Coach Services, Inc., of the design house offering handbags, footwear and other luxury goods, recently lost a design mark battle challenging registerability of E&D Trading, Inc.'s ("E&D") mark for DP in stylized format (the "Challenged Mark") on the basis that it is likely to cause confusion with Coach's federally registered "Signature C Design" marks. The parties' marks both cover eyewear, among other goods. Coach's protest was lodged with the Trademark Trial and Appeal Board ("TTAB"), an administrative body that is part of the Trademark Office and has authority to rule on challenges to registerability of marks, among other issues. TTAB proceedings and procedure are governed by the Federal Rules of Civil Procedure, as well as the detailed rules set forth in the TTAB's Manual of Procedure ("TBMP").… Continue Reading

NFL Scores Big Win Against Websites Offering Counterfeit Merchandise

Posted in Trademark
On June 28th, U.S. District Judge Lorna G. Schofield of the Southern District of New York entered a default judgment in favor of the National Football League® ("NFL®") against operators of more than 1,997 websites utilizing 1,223 infringing domain names, all of which were offering counterfeit NFL merchandise. In doing so, the District Court awarded the NFL a $273 million judgment against the website operators and injunctive relief.… Continue Reading

Free Speech May Allow Disparagement, but the Trademark Office Does Not: TTAB Affirms Refusal to Register STOP THE ISLAMISATION OF AMERICA

Posted in Trademark
On February 7, 2013, the Trademark Trial and Appeal Board affirmed the refusal to register the mark, STOP THE ISLAMISATION OF AMERICA, for "providing information regarding understanding and preventing terrorism" on the basis that the mark "may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols." The registration of disparaging marks is explicitly prohibited by Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a).… Continue Reading

The Trademark Rush Continues: HARBOWL and KAEPERNICK ….

Posted in Trademark
The upcoming Super Bowl, pitting San Francisco 49ers Head Coach Jim Harbaugh against his older brother, Baltimore Ravens Head Coach John Harbaugh, has been dubbed "Harbowl" by some. An individual in Rockville, Maryland is attempting to take this name to a new level, by filing a federal trademark application for use of the mark "HarBowl" on athletic apparel.… Continue Reading

Supreme Court Finds Covenant Not to Sue Sufficiently Broad

Posted in Trademark
Trademark holders no longer have to worry about not being able to dismiss a case by entering into a properly drafted covenant not to sue. In Already, LLC, dba Yums v. Nike, Inc., the Supreme Court unanimously affirmed the Second Circuit's opinion by ruling that Nike's covenant not to sue Yums for trademark infringement was sufficiently broad to render moot Yums' challenge to the validity of Nike's asserted registration. Yums had no reasonable apprehension of litigation and Nike met its burden of showing that Yums could not be sued later. Chief Justice Roberts delivered the opinion, which required a high standard for parties issuing the covenant, as they bear a "formidable burden" to establish that it is "absolutely clear" that the allegedly wrongful conduct cannot reasonably be expected to reoccur. Remand was not necessary under the circumstances, because the Court found that it "cannot conceive" of any shoe that Yums could make "that would potentially infringe Nike's trademark and yet not fall under the Covenant." Arguably, the Court construed the covenant so broadly as to exclude a claim of infringement based on Yums' sale of the exact shoe covered by Nike's challenged registration.… Continue Reading

Supreme Court Hears Oral Argument in Already LLC v. Nike, Inc.

Posted in Litigation, Trademark
On Wednesday, the Supreme Court heard oral argument in the case of Already, LLC d/b/a Yums v. Nike, Inc. As we reported previously, that case arose from an appeal of the Second Circuit's decision affirming the Southern District of New York's holding that a covenant not to sue entered in a trademark dispute ended the case and controversy between the parties. We enclose the full transcript of the oral argument.… Continue Reading

Tim Tebow Time in the Trademark Office . . . .

Posted in Trademark
The U.S. Patent and Trademark Office ("PTO") recently published for opposition the mark TIM TEBOW. The applicant for the mark in these various goods and services is XV Enterprises LLC of Denver, Colorado, who has indicated that Tim Tebow, the two-time Heisman Trophy winner and New York Jets quarterback (formerly with the Denver Broncos), has consented to the applications.… Continue Reading

Declaratory Judgment Suit Over ROHAN Trademark

Posted in Trademark
D'Artagnan Trademarks LLC, ("DT") recently sued the Saul Zaentz Company ("SZ") in the District of New Jersey regarding the trademark ROHAN. In December 2011, DT filed a trademark application for ROHAN in connection with the sale of poultry, namely, duck. The PTO approved the application and SZ opposed its registration when it published for opposition in late March. SZ alleged that it has exclusive rights to certain trademarks (the "Marks") derived from the trilogy of books known as "The Lord of the Rings," by J.R.R. Tolkien. Readers might recall that in the books, "Rohan" is a fictional realm within the fantasy world of the stories. SZ alleges it owns federal trademark registrations for ROHAN, RIDERS OF ROHAN and ROHAN NUTRITION, relating to animal feed and feed supplements for horses, plastic figurines for use with table top hobby battle games, and website services about computer games. SZ has a number of licensees using these marks.… Continue Reading
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