IP Law Alert

IP Law Alert

Practical Perspectives on Intellectual Property Legal Developments

Tag Archives: Trademark Litigation

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

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

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

Color Trademarks Remain in Fashion: Second Circuit Sides with Louboutin

Posted in Trademark
Earlier today, the United States Court of Appeals for the Second Circuit issued its long-awaited decision in Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc.. The Appellate Court decision reversed the lower court's finding that a single color can never serve as a trademark for fashion. It also found that Louboutin's red, lacquered shoe outsole had acquired distinctiveness and is protectable as a trademark. However, the Court went on to state that the trademark is "limited to uses where the red outsole contrasts with the color of the remainder of the shoe." The case has now been remanded to the District Court for further proceedings… Continue Reading

Already v. Nike: Petitioner’s Brief Asserts that Jurisdiction Remains Despite Covenant Not to Sue

Posted in Patent, Trademark
In a prior blog, we reported that the Supreme Court had granted certiorari in Already, LLC dba Yums v. Nike, Inc., No. 11-982, to an appeal from 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… Continue Reading

Supreme Court Visits Jurisdiction and Covenants Not to Sue

Posted in Patent
Yesterday, the Supreme Court granted certiorari in Already, LLC dba Yums v. Nike, Inc., No. 11-982, an appeal from the Second Circuit's decision that affirmed the Southern District's holding that a covenant not to sue entered in a trademark dispute between Nike and Yums ended the case or controversy between the parties. The lower court also dismissed defendant's counterclaims, which the Second Circuit also affirmed. See Nike, Inc. v. Already, LLC, 663 F.3d 89 (2nd Cir. 2011) (Lohier, J.)… Continue Reading

ICANN Releases Listing of gTLD Applications

Posted in Trademark
Today, ICANN, the Internet's domain name registration watch dog, will publish a listing of nearly 1,900 new generic Top-Level Domains ("gTLDs") that may be approved for use as early as March 2013. We previously wrote about ICANN's expansion program and suggested safeguards that companies could implement to protect themselves… Continue Reading

USPTO Offers IP Awareness Assessment

Posted in Patent
Under the joint auspices of the US Patent and Trademark Office the National Institute of Standards and Technology/Manufacturing Extension Partnership, the IP Awareness Assessment is now in the beta stage and available for businesses and inventors to assess their intellectual property awareness. Dubbed "A business and inventor's IP education tool," this web-based offering is designed to assess IP knowledge and provide personalized training resources for businesses and inventors… Continue Reading

Protecting Your Company – Trademark Basics You Need to Know

Posted in Trademark
The Gibbons Women's Initiative is hosting an upcoming program for in-house counsel entitled, "Protecting Your Company - Trademark Basics You Need to Know," on Thursday, March 8 from 8:30 - 10:15 am at Gibbons Newark Office. This program will feature Catherine M. Clayton, a Director in the Gibbons Intellectual Property Department, who leads the firm's trademark practice. Ms. Clayton has a broad range of experience in trademark and copyright law, and her practice encompasses litigation, licensing and prosecution… Continue Reading

The “Linsanity” Continues …..

Posted in Trademark
The New York Knicks' rising superstar point guard, Jeremy Lin, continues to wow fans around the world. Lin's NBA ascent also has prompted a rush to the Trademark Office. Over 20 applications for word marks that bear the letters L-I-N already have been filed. These include LIN-SATIONAL; ALL LIN; LINSPIRATION; I'M A LINNER; LINSOMNIA: LINCREDIBLE; and other derivations using the star's last name. The frenzy began with applications for the seemingly ubiquitous LINSANITY catch phrase, which were filed on February 7 and February 9, as the star's career took off. Most of the applications to date have been filed on an intent to use basis, that is, the applicant has expressed a bona fide intent to use the mark in interstate commerce… Continue Reading

IP Law 2012: A Look Ahead . . . .

Posted in Patent, Pharmaceuticals, Trademark, USPTO
Coming off a year that included the Smith-Leahy "America Invents Act," 2012 portends to have some significant developments in IP law. Decisions for IP practitioners and industry to watch for include: the Supreme Court's decision in Caraco Pharm. Labs. Ltd. v. Novo Nordisk A/S, regarding "use codes" and section viii carve-outs under the Hatch-Waxman Act; the Supreme Court's decision in Mayo v. Prometheus, regarding patentable subject matter, post-Bilski; and the Federal Circuit's upcoming en banc decisions in McKesson and Akamai, regarding joint infringement liability… Continue Reading

In Defense of Color Trademarks: INTA Submits Amicus Brief in Christian Louboutin v. Yves Saint Laurent

Posted in Trademark
On Monday, the International Trademark Association ("INTA") filed an amicus curae brief with the United States Court of Appeals for the Second Circuit in Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc.. In that brief, INTA argued that the lower court's decision should be vacated and remanded on the basis that the court did not properly evaluate Louboutin's federally registered trademark, failed to accord that mark the legal presumption of validity to which it is entitled under federal law, and did not use the appropriate test for aesthetic functionality… Continue Reading

Clock Ticking for Trademark Registrants Seeking to Block Registration of Their Marks on .XXX Domain

Posted in Trademark
As has been widely reported by the mainstream press and most legal publications, the Internet Corporation for Assigned Names and Numbers (ICANN) has approved a new ".XXX" top-level domain expected to be utilized by the adult entertainment industry. Given the connotation of the .XXX domain, companies and individuals around the globe are considering how best to protect their trademarks from the potential harms of registry misuse, including cyber squatters targeting this new domain to register well known trademarks. Although the creation of the .XXX domain will be a boon to those in the adult entertainment industry and domain registrars, it raises serious threats of infringement, brand dilution or tarnishing for trademarks uninvolved in those industries. If they have not already, all trademark owners should be considering the potential impact of the .XXX domain to their marks and determining whether to take the necessary steps to "opt-out" of .XXX domain registration by the October 28, 2011 deadline for doing so… Continue Reading

A Challenge to Color Trademarks in the Field of Fashion: Christian Louboutin v. Yves Saint Laurent America

Posted in Trade dress, Trademark
The U.S. District Court for the Southern District of New York's August 10, 2011 decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., questions whether a single color may serve as a trademark for fashion. That case arises from an action for trademark infringement brought by luxury shoe designer, Christian Louboutin, against Yves Saint Laurent America ("YSL"). Louboutin is well-known for his collection of high end women's shoes, which have bright red glossy soles. He also owns U.S. Trademark Registration No. 3,361,597 for "a lacquered red sole on footwear."… Continue Reading

Gibbons Director Catherine Clayton to Host Roundtable on Internet Privacy and Emerging Issues Relating to Online and New Media Enforcement

Posted in Copyright, E-Commerce, Privacy, Trademark
Gibbons is pleased to announce that Catherine M. Clayton, a Director in the firm's Intellectual Property Department, will host a roundtable on internet privacy and emerging issues relating to on-line and new media enforcement on September 22, 2011 at 12:00 pm. This program is part of the International Trademark Association's (INTA) roundtable series, and will take place at the firm's Newark office… Continue Reading

Revisions to Federal Rule of Civil Procedure 26 – New Untested Protections for Testifying Experts

Posted in Copyright, Litigation, Patent
On December 1, 2010, the latest version of the Federal Rules of Civil Procedure went into effect. As part of the new rules, significant changes were made to Rule 26 regarding the discovery of information from experts retained to provide testimony. As of Wednesday, witnesses who were not previously required to provide a written report must now provide a summary disclosure of their opinion. In addition, draft expert reports and some communications between expert witnesses and counsel will no longer be discoverable, and expert reports will now only need to contain information regarding "facts or data considered by the witness in forming" an opinion… Continue Reading

Farouk Systems Wins $300 Million Damages Award Against On-Line Chinese Counterfeiting Ring

Posted in E-Commerce, Trademark
On October 14, 2010, the U.S. District Court for the Southern District of Texas granted what is reportedly the largest judgment ever awarded in an action involving on-line counterfeiting. In Farouk Systems, Inc. v. Eyou Int'l Trading Co., Judge Kenneth M. Hoyt entered a default judgment and permanent injunction against more than seventy defendants, who were operating an Internet counterfeiting ring out of China. The judgment required that each of the defendants pay Farouk statutory damages of $4 million, resulting in an award of approximately $300 million. In addition to being significant because of the amount of the damages awarded, this decision is noteworthy for the pragmatic approach that the court took to ensure that the relief awarded to the plaintiff would be meaningful… Continue Reading

Supreme Court Denies Certiorari in Trademark Challenge to Washington Redskins Name

Posted in Trademark
On November 16, 2009, the Supreme Court denied a petition for certiorari in the case of Harjo v. Pro-Football, Inc. The underlying action was brought by Native American activists (“Harjo”) who challenged the Washington Redskins’ right to register its team name and logos on the basis that they are scandalous, disparaging and may bring Native … Continue Reading
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