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Seventh Circuit reverses trademark damages award in default judgment because wrong standard applied

The Seventh Circuit recently reversed the amount of damages in a district court's entry of default judgment in a trademark infringement dispute. At issue was whether the Plaintiff was entitled to additional relief on the grounds that the district court applied the wrong standard to its claim for an accounting of profits. The district court […]

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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 […]

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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 […]

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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 […]

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Third Circuit: Evidence of secondary meaning must correspond to the asserted mark

In a decision Wednesday, the Third Circuit affirmed a district court's grant of summary judgment in a trademark case, finding the asserted mark not protectible as a matter of law.The district court granted summary judgment that the mark was generic. On appeal, the Third Circuit held there was a genuine issue of fact as to […]

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Tenth Circuit: MedImmune declaratory judgment jurisdiction test applies in trademark cases

In a decision last week, the Tenth Circuit reversed a district court's decision that Article III jurisdiction did not exist over a declaratory judgment action in a trademark case. At issue was whether a triable case or controversy within the meaning of Article III existed in declaratory judgment action regarding trademark infringement. The district court, […]

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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 […]

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Eleventh Circuit: Unsolicited proposals insufficient to show intent to resume use of trademark

In a decision Friday, the Eleventh Circuit affirmed a district court's grant of summary judgment in favor of the defendant, finding the plaintiff had abandoned its trademarks. Although the complaint consisted of both federal and state common law claims, the analysis ultimately came down to whether a valid Lanham Act claim existed, as the remaining […]

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USPTO publishes two new proposed rules packages for trademark cases

Today's Federal Register brings with it two sets of proposed rule changes from the USPTO, both dealing with prosecution of trademark cases. The first, entitled "Changes in Requirements for Signature of Documents, Recognition of Representatives, and Establishing and Changing the Correspondence Address in Trademark Cases," addresses the requirements for powers of attorney and similar documents […]

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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, […]

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