Eleventh Circuit: Website in Tennessee using Floridian’s trademark sufficient for jurisdiction In a decision last week, the Eleventh Circuit reversed a district court's dismissal of a trademark infringement case for lack of personal jurisdiction. The district court held that the allegedly infringing conduct, operating a website, was insufficient to warrant jurisdiction in the plaintiff's home state of Florida. Here, the plaintiff was an individual, and the […] Continue Reading →
USPTO announces trademark consistency pilot program In a notice today, the USPTO announced a new trademark consistency initiative. Under the new initiative, applicants who believe a substantive or procedural issue has been addressed in a "significantly different manner" in two applications may raise the issue for consistency review. This is subject to four requirements: the request is based on co-pending applications […] Continue Reading →
Second Circuit: MLB collective trademark licensing does not violate Sherman Act In a recent decision, the Second Circuit affirmed a district court's summary judgment to the defendant in an antitrust case regarding trademark licensing. The case involved the collective licensing setup of Major League Baseball Properties ("MLBP"). The plaintiff was a licensee of MLBP. The court held the centralized licensing agent for all Major League Baseball […] Continue Reading →
Second Circuit: If you want a court to order the USPTO, ask in your pleadings, not after you win In a recent decision, the Second Circuit affirmed a district court's decision in a trademark case not to enter an order pursuant to 15 U.S.C. § 1119. § 1119 permits a court to enter an order regarding registrability and cancellation of marks at the USPTO. The prevailing defendant asked the district court to order the […] Continue Reading →
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 […] Continue Reading →
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 →
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 […] Continue Reading →
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, […] Continue Reading →