In February this year a dispute between the law firm FOCUS Advokater (“FOCUS Lawyers” in English) and the accounting firm Beierholm was decided by the Danish Maritime and Commercial High Court (BS-40894/2019 SHR). The case concerned the use of the name BEIERHOLM FOKUS which FOCUS Advokater found to be an infringement of their trademark rights…

“What the FACK just happened?!”, some thought, when the CJEU delivered its judgment on the registrability of the trademark FACK JU GÖHTE on 27 February 2020. In case you are unfamiliar with the case, FACK JU is a phonetic transcription in German of “fuck you” and GÖHTE alludes to the late German writer Goethe. Following…

Interactive website’s option allowing customers to select Illinois as “ship-to” destination for defendant’s supplement products was among factors cited in reversal of district court’s dismissal of trademark infringement claims. The U.S. Court of Appeals in Chicago has reversed the dismissal of Lanham Act and state law claims for lack of personal jurisdiction, finding that defendant…

Refusal of THE JOINT trademark application was affirmed on the grounds that the mark was merely descriptive of the applicant’s hospitality business services and acquired distinctiveness was not demonstrated. A hospitality services’ applications to register the mark “THE JOINT” for two different classes of services were properly refused because the mark was merely descriptive of…

An exclusive licensee that did not own the mark outright when the suit began lacked standing to sue for infringement. An exclusive licensee of a trademark when a trademark infringement suit began—which only became the owner of the mark mid-litigation—lacked standing to bring a trademark infringement action, the U.S. Court of Appeals in New Orleans…

A district court should not have applied the doctrine of claims preclusion in the primary dispute over the mark IDHAYAM, based on a prior TTAB proceeding, but the mark owner waived its claims as to two other trademarks. Infringement claims by V.V.V. & Sons Edible Oils (“VVV”) over a competing company’s use of the mark…

“Reverse trademark confusion” infringement theory suffices for liability but does not support recovery of infringer’s profits. The U.S. Court of Appeals in Chicago has affirmed a Wisconsin federal jury’s verdict finding that defendant JFTCO, Inc. (“JFTCO”) infringed the registered FABICK trademark owned by plaintiff Fabick, Inc. (“FI”). The court also affirmed two district court rulings…

There was no evidence that the firm’s marks achieved secondary meaning, and the same marks were being used as trademarks as well as service marks in the advertising space. Plaintiffs and Appellants Engage Healthcare Communications, L.L.C., Greenhill Healthcare Communications, L.L.C. and Center of Excellence Media, L.L.C. (“Engage”) lost their appeal of an order granting summary…

The attorney was unable to show that the USPTO’s decision was arbitrary or capricious. The U.S. Court of Appeals for the Federal Circuit affirmed a decision to dismiss an attorney’s challenge of his bar license suspension as the attorney’s procedural and substantive challenges to the United States Patent and Trademark Office’s disciplinary proceeding were rejected…