By Olivier A. Taillieu and Thomas F. Zuber of Zuber & Taillieu LLP
The Federal Circuit Court affirmed a TTAB decision finding that Mattel successfully rebutted the presumption that it had abandoned a mark it had acquired from Tyco but had not used for at least three years. In Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387 (Fed. Cir. 2010), Mattel… More...
The Second Circuit U.S. Court of Appeals has affirmed that brand owners are ultimately responsible for policing and fighting counterfeits, even when a high volume of infringement occurs in one outlet. In Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93 (2nd Cir. 2010), the Second Circuit held that a More...
The Second Circuit U.S. Court of Appeals held that the Trademark Dilution Revision Act of 2005 (“TDRA”) does not require proof of “substantial similarity” between the marks in question for a trademark owner to establish dilution by blurring. In Starbucks Corp. v. Wolfe’s Borough Coffee, More...
A California district court dismissed a declaratory judgment action brought by a trademark owner, seeking to skip a TTAB proceeding and get the Court to declare that its trademarks had not become generic and thus subject to cancellation.The Court held that in the absence of an actual infringement More...
The Federal Circuit held that trademark fraud can only be found when the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO. The opinion in In re Bose, ___ F.3d ___, No. 2008-1448, 2009 WL 2709312 (Fed. Cir. Aug. 31, 2009), specifically More...
The U.S. Court of Appeals for the Third Circuit determined that “use,” in the context of federal trademark laws, does not require active employment of a counterfeit mark by displaying or offering an item bearing the mark for sale. In United States of America v. Mamadou Diallo, 575 F.3d 252 (3rd More...
The Second Circuit held that Google’s practice of recommending and selling plaintiff’s exact trademark to Google’s advertisers (including plaintiff’s competitors) in order to trigger ads forms a basis for an actionable claim under sections 32 and 43 of the Lanham Act, 15 U.S.C. sections More...
In Internet Specialties West v. Milon-DiGiorgio Enterprises, Inc., 559 F.3d 985 (9thCir. 2009), the U.S. Court of Appeals for the Ninth Circuit upheld the district court's grant of an injunction prohibiting the use of a registered domain name and mark that was determined to be confusingly similar More...
Clarifying the application of the doctrine of foreign equivalents, the Federal Circuit held that a mark is geographically deceptively misdescriptive if a substantial portion of the relevant consumer market is likely to be deceived by the mark. In In re Spirits International, 563 F.3d 1347 (Fed. More...
In Bd. of Supervisors for La. State Univ. v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008), the Fifth Circuit upheld the district court’s finding that a t-shirt maker who used school color schemes in combination with specific facts and indicia about the school infringed on the schools’ More...
In the case Audi AG v. Shokan Coachworks Inc., 2008 WL 4911730, No. 1:07-CV-00173 (N.D.N.Y. 2008), the federal district court grappled with a slew of trademark claims, combining into one opinion many of the issues raised by a number of other previous courts. Specifically, the court could not grant More...
