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Ninth Circuit clarifies differences between proof of protectable trademark and proof of infringement

In a decision Friday, the Ninth Circuit clarified the differences in use requirements to prove the existence of a protectable trademark as compared to trademark infringement. The plaintiff and defendant both used the same mark, but in connection with different services. The defendant successfully argued at the district court that because the plaintiff did not […]

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Ninth Circuit: Attorney fees only available for trademark counterfeiting when actual damages sought

In a decision Tuesday, the Ninth Circuit reversed a district court's decision awarding $100,000 in attorney's fees for trademark counterfeiting under 15 U.S.C. § 1117(c). The court reached this decision based on the language of § 1117: While § 1117(b), the provision allowing attorney's fees, states that they shall be awarded when damages are assessed […]

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Seventh Circuit: $70,000 in attorney fees affirmed for copyright and trademark appeal

Back in March, we wrote about a copyright and trademark case involving a novelty doll, "Pull My Finger Fred." In the case's previous trip to the Seventh Circuit, the court affirmed a verdict of copyright and trademark infringement, $291,000 in damages, and $575,000 in attorneys' fees. Now the parties are back, this time disputing the […]

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Eleventh Circuit: Insufficient evidence of likely confusion dooms 43(a) claim

In a decision last week, the Eleventh Circuit affirmed a district court's decision granting summary judgment of no trademark infringement and no unfair competition. The plaintiff and defendant had entered into a contract for the plaintiff to design a water meter reading system. After the plaintiff allegedly breached the contract, the defendant engaged different companies […]

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Fourth Circuit: Chewy Vuiton not likely to be confused with or dilute Louis Vuitton trademarks

The Fourth Circuit Tuesday affirmed a district court's grant of summary judgment of no trademark infringement or dilution. At issue were dog toys that parodied the trademarks and trade dress of Louis Vuitton. The Fourth Circuit agreed that the successful parody resulted in no trademark infringement. On the trademark dilution claim, the court rejected the […]

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Fourth Circuit holds law prohibiting federal registration of Montana state nickname valid

In a decision Wednesday, the Fourth Circuit reversed a district court's decision finding a portion of a 2006 law invalid. The portion, a rider attached to an appropriations bill, prohibited any trademark registrations of a nickname of the state of Montana, "The Last Best Place." The Fourth Circuit reversed, holding that the law valid and […]

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Dramatic change in UK trademark policy; Australia eliminates obligation to disclose search reports

There have been two interesting changes in foreign IP practice over the past month. Effective October 1, 2007, the UK Trade Marks Office changed its policy such that it will no longer raise objections to applications based on prior existing applications/registrations. Instead, it will be the policy to write to owners of earlier potentially conflicting […]

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Ninth Circuit: DJ dismissal reversed; concurrent TTAB proceedings, Rule 408 don’t warrant dismissal

On Monday, the Ninth Circuit addressed the issue of a federal court's subject matter jurisdiction over a trademark declaratory relief action when an infringement action has not been brought and proceedings related to the trademark are pending at the Trademark Trial and Appeal Board (TTAB). The district court dismissed the case as not presenting a […]

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Sixth Circuit: No likelihood of confusion between competing wines using same geographic term

In a decision last week, the Sixth Circuit affirmed a district court ruling that use of the mark "Chateau de Leelanau Vineyard and Winery" did not create a likelihood of confusion among consumers with the plaintiff's "Leelanau Cellars" federally-registered mark. "Leelanau" in both marks is a reference to a peninsula in Michigan where the wine […]

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Trademark licensing hall of shame: why trademark owners need to monitor their licensees

Owners of trademarks should take care that they control how licensees use their marks. This should be common knowledge for most trademark owners, as inconsistent or unauthorized use of a trademark can dilute its distinctiveness, and in extreme cases, cause loss of rights. The owners of one of the most famous trademark brands, the New […]

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