Seventh Circuit: Several likelihood of confusion factors favored plaintiff, no summary judgment The Seventh Circuit recently reversed a district court's summary judgment for the defendant in a trademark infringement case. The district court held no reasonable fact finder could find the marks likely to be confused.On appeal, the Seventh Circuit reminded us that the test for likelihood of confusion is not simply whether consumers will confuse two […] Continue Reading →
Tenth Circuit: District court’s internally inconsistent findings lead to remand In a decision last week, the Tenth Circuit reversed a district court's ruling of no trademark infringement. The district court, applying the Tenth Circuit's six likelihood of confusion factors, initially stated that three factors favored the plaintiffs, two were neutral, and one favored the defendants, but in its conclusion, stated that only one factor favored […] Continue Reading →
First Circuit: Don’t expect to win on appeal if you admit 7 of 8 likelihood of confusion factors In a decision Friday, the First Circuit affirmed a district court's summary judgment of trademark infringement and an associated award of the defendant's profits and attorney fees to the plaintiff. The defendant used the plaintiff's registered marks in both the metatags of its website as well as in white text on a white background in […] Continue Reading →
First Circuit: District court’s determination that “duck tour” is nongeneric doesn’t hold water In a lengthy decision last week, the First Circuit held a district court erred in finding the term "duck tour" nongeneric in the context of sightseeing tours on amphibious vehicles. The district court, based largely on the nongenericness of this aspect of the parties' marks, found the plaintiff was likely to succeed in its infringement […] Continue Reading →
Tenth Circuit: No trademark infringement, unfair competition, or cybersquatting by parody sites In a decision last week, the Tenth Circuit affirmed a district court's grant of summary judgment finding no trademark infringement, no unfair competition, and no cybersquatting. The district court held, and the Tenth Circuit affirmed, that none of the three elements of a trademark infringement action was proven, namely that the mark was not protectable, […] Continue Reading →
Fifth Circuit passes on eBay’s applicability in trademark cases In a decision last week, the Fifth Circuit affirmed a district court's conclusion it had subject matter jurisdiction over a trademark case, as well as its grant of a preliminary injunction. While the activities giving rise to the claim of trademark infringement took place in Mexico, they had a "substantial effect" on United States commerce, […] Continue Reading →
Eleventh Circuit: eBay may eliminate presumption of irreparable harm in trademark cases In a recent decision, the Eleventh Circuit vacated a district court's injunction against the use of a competitor's trademarks in the meta tags of a defendant's website. The court held that while the plaintiffs had shown likelihood of success on both their trademark infringement and false advertising claims, because the district court relied on a […] Continue Reading →
Second Circuit: Statements made in settlement discussions admissible to prove estoppel In a decision yesterday, the Second Circuit affirmed a jury's findings in a trademark infringement case between Polo Ralph Lauren and the U.S. Polo Association. The jury found that one of the USPA's four marks was likely to cause confusion. The two parties had been involved in a previous lawsuit in the early 1980s, and […] Continue Reading →
Fifth Circuit affirms injunction against trademark infringement in Saudi Arabia In a recent decision, the Fifth Circuit affirmed a district court's finding of infringement and disgorgement of profits, but increased the amount of profits awarded because the defendant failed to provide evidence of its costs to reduce the award. Interestingly, the infringement took place entirely outside the United States, namely in Saudi Arabia. Even though […] Continue Reading →
Seventh Circuit: Sanction of no damages for improper witness contact too severe compared to harm In a decision Friday, the Seventh Circuit affirmed a jury verdict of trademark infringement, but reversed the district court's ruling holding the plaintiff had forfeited damages because of improper conduct towards a prospective witness. The court dealt with whether the burden of proof for the sanction was by clear and convincing evidence or as the […] Continue Reading →