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: Famous marks doctrine doesn’t support NY unfair competition claim In a recent decision, the Second Circuit decided the one outstanding issue from a case it had previously decided in March 2007 (previously blogged here), namely whether the "famous marks" doctrine the court held Congress has not yet incorporated into federal trademark law might support a New York common law claim for unfair competition. The […] 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: Operating agreement permitted license of marks, so no trademark infringement In its second trademark decision Friday, the Seventh Circuit clarified what is required for a party to be authorized to use another entity's trademarks. In this case, the plaintiff—one of four founders of two LLC's designed to manage and control a restaurant in Chicago—alleged trademark infringement against the three other co-founders based on the co-founders' […] 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 →
Seizure of goods with counterfeit marks not an “embargo,” so no CIT jurisdiction to challenge fine In a decision this week, the Federal Circuit vacated the decision of the Court of International Trade (CIT) and remanded with instructions to dismiss the plaintiff's complaint for lack of subject matter jurisdiction.The case arose out of a civil fine levied against the plaintiff for importation of counterfeit goods. The plaintiff brought suit in the […] Continue Reading →
Second Circuit: Sales pitch of slogan to credit card companies not use in commerce In a decision Monday, the Second Circuit affirmed a district court's summary judgment in a trademark case involving the slogan "My Life. My Card." An individual threatened to sue American Express for use of the slogan, alleging that he had superior rights in the mark based on efforts to license the phrase to various credit […] Continue Reading →