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 →
Eleventh Circuit: Trademark licensee liable for infringement when deviating from license In a decision Tuesday, the Eleventh Circuit affirmed a district court's finding of trademark infringement against a trademark licensee. The alleged infringer was actually licensed to use the mark owner's trademark, but did not use the mark as described in the license, instead using an abbreviated form. As a result, the court affirmed the jury's […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →