The body of law drawn from the precedents set by earlier decisions.
Evidence supported the finding that marks owned by the operator of the San Diego Comic Convention were not generic, and litigation misconduct by the defendant supported a $3.9 million attorney fee award. In the long-running trademark dispute between the operator of the well-known San Diego Comic Convention and a competitor that ran a similarly named…
Expired utility patent described the advantages of product configuration trade dress for “a beveled scalloped upper edge of a metal fastener.” The federal district court in Chicago properly determined trade dress for the design of conveyer belt fasteners owned by Flexible Steel Lacing Company (Flexco) was invalid as functional and could not be asserted against…
Red Bull GmbH v Big Horn UK Limited & Ors [2020] EWHC 124 (Ch) This case is an interesting commentary on the route that rights holders can pursue in order to challenge lookalike products. Historically, proprietors of well-known brands, particularity in the FMCG market, have found it difficult to succeed in an Article 9(2)(b) claim…
There is no per se rule providing that dismissal without prejudice of claims involving a fee-shifting statute such as the Lanham Act necessarily causes a defendant to suffer legal prejudice from being denied an opportunity to seek attorney fees. Defendants in case brought by a pet toy maker did not suffer legal harm by the…
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…
