Trademark Law Updates

Featured Expert Legal Commentary

Already, LLC v. Nike, Inc.: Supreme Court Affirms that Covenant Not to Sue Can Moot Trademark Case

By Tom Zuber and Jeff Zuber of Zuber Lawler & Del Duca

The Supreme Court recently upheld that a covenant not to sue can moot a trademark case. In Already, LLC v. Nike, Inc., 11-982 (U.S. Jan. 9, 2013), the Court held that a trademark holder’s covenant not to sue extinguished the case or controversy, rendering moot the defendant’s counterclaim of trademark… More...

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Internet Specialties v. Milon-DiGiorgio: Raising the Standard for a Laches Defense in Trademark Cases

Internet Specialties West v. Milon-DiGiorgio Enterprises, Inc.  |  July 9, 2009

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...

In re Spirits Int’l: A Mark Is Geographically Deceptively Misdescriptive Only if Materially Deceptive to a Substantial Portion of the Intended Audience

In re Spirits International  |  June 26, 2009

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...

LSU v. Smack Apparel: Trademark Protection for Color Schemes

Board of Supervisors for Louisiana State University v. Smack Apparel Co., et al.  |  February 6, 2009

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...

Audi v. Shokan Coachworks: Trademark Infringement in Email Signature

Audi AG v. Shokan Coachworks, Inc.  |  January 27, 2009

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...

E.S.S. Entm’t 2000 v. Rock Star Videos: First Amendment Trumps Trademark Rights

E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc.  |  January 6, 2009

In E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008), the 9th Circuit U.S. Court of Appeals confirmed that when trademark rights clash with the First Amendment, the First Amendment usually wins – at least in cases involving artistic or creative endeavors. More...

Tiffany v. eBay: A Trademark Owner Must Police Its Own Marks on the Internet

Tiffany (NJ) Inc., et al. eBay, Inc.  |  September 26, 2008

In its significant opinion in Tiffany v. eBay, ___ F. Supp. 2d ___, 2008 WL 2755787 (No. 04 Civ. 4607) (S.D.N.Y. , July 14, 2008) the Southern District of New York rejected an effort by renowned jeweler Tiffany to expand the reach of contributory trademark infringement. Tiffany’s theory of More...

Burck v. Mars: The Naked Cowboy Shall Ride On

Burck v. Mars, Inc.  |  September 3, 2008

Robert Burck, a.k.a. The Naked Cowboy, an iconic street performer in Times Square, had the foresight to trademark his name and image. When the Mars company developed an ad campaign depicting its famous M&M candies in and around New York City, they chose to dress up one of the candies as The Naked More...

JA Apparel v. Abboud: When a Name Is More Than Just a Name

JA Apparel Corp. v. Joseph Abboud, et al.  |  July 17, 2008

When clothing designer Joseph Abboud had a falling out with the new management of JA Apparel, the clothing company he had founded, he tried to start a competing clothing line called “jaz.” He planned to use his name in jaz promotions, identifying himself as the designer of the new line. One More...

Haute Diggity Dog Court Applies Tests in Determining What a Successful Parody Is

Louis Vuitton Malletier S.A. v. Haute Diggity Dog, L.L.C.  |  February 25, 2008

The case Louis Vuitton Malletier v. Haute Diggity Dog, 507 F.3d 252 (4th Cir. 2007) was the first case an appellate court heard under the Trademark Dilution Revision Act of 2006 (TDRA). Though the TDRA generally favors companies like Louis Vuitton that try to protect their famous trademarks from More...

Custom Manufacturing v. Midway Services Case: No Likelihood of Confusion If There Is No Actual Perception

Custom Manufacturing and Engineering, Inc. v. Midway Services, Inc., et al.  |  December 20, 2007

Component parts manufacturers will want to pay attention to this case. In Custom Mfrg. V. Midway et al, 508 F.3d 641 (2007), the 11th Circuit found that when there is minimal likelihood that a potential customer will see the allegedly infringing product, there is no likelihood of confusion, and More...

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Companies Mentioned

Trademark Law

The following companies are mentioned in Trademark Law Updates:

Tiffany (NJ) Inc.

Tiffany & Co.

eBay, Inc.

Trademark Trial and Appeal Board

Louis Vuitton Malletier S.A.

Google, Inc.

Haute Diggity Dog, LLC

Bose Corp.

Ly U.S.A., Inc.

Wham-O, Inc.

Coco U.S.A. Inc.

Manley Toys, Ltd.

Marco Leather Goods, Ltd.

AW Computer Holdings LLC

JA Apparel Corp.

Wolfe’s Borough Coffee, Inc. d.b.a. Black Bear Micro Roastery

Houndstooth Corp.

Starbucks U.S. Brands, LLC

Harringbone Creative Services, Inc.

Starbucks Corp.

Mars, Inc.

The Crash Dummy Movie, LLC

Chute Gerdeman, Inc.

Mattel, Inc.

Take-Two Interactive Software, Inc.

Rockstar Games, Inc. d.b.a. Play Pen

ESS Entertainment 2000, Inc.e.s.a. Rockstar Games, Inc.

Volkswagen of America, Inc.

Shokan Coachworks, Inc.

Audi AG

University of Southern California

University of Oklahoma

Smack Apparel Company

Ohio State University

Louisiana State University

Collegiate Licensing Company

U.S. Patent and Trademark Office

NTU Electronics, Inc.

Midway Services, Inc.

Spirits International B.V.

MDCO, Inc.

Milon-DiGiorgio Enterprises, Inc.

Custom Manufacturing and Engineering, Inc.

ISPWest

Automated Engineering Corp.

Internet Specialties West, Inc.

Woofies, LLC d.b.a. Woofie’s Pet Boutique

Ace-Web Internet

Rescuecom Corp.

International Trademark Association

Additional Resources

Trademark Law