Tag archives: Lanham Act

RAPUNZEL, RAPUNZEL – Mere Consumers Have No Standing to Oppose

By Meg Tierney (US) on May 16, 2023 Posted in Trademark

An opposition that has been making its way through the Trademark Trial and Appeal Board (“TTAB”) for several years appears to have finally reached its not-so-fairytale ending. In May 2023, the TTAB overturned a 2018 TTAB ruling in the same case that allowed a consumer to oppose trademark applications based on the consumer’s interest to … Continue reading

Jack Daniels Finally Has its Day Before the Supreme Court

By Felicia Boyd (US) on March 27, 2023 Posted in Trademark

The United States Supreme Court held oral arguments in connection with a dispute between Jack Daniel’s and VIP Products LLC (“VIP”) over a humorous dog toy which is intended to mimic the label of a Jack Daniel’s whisky bottle. Jack Daniel’s Properties, Inc. v. VIP Products LLC, (22-148) (March 22, 2023). The toy replaces the … Continue reading

Supreme Court Considers the Reach of the Lanham Act Outside of United States

By Felicia Boyd (US) on March 23, 2023 Posted in Trademark

The United States Supreme Court heard arguments on Tuesday, March 21, 2023, on the international limitations, if any, of the Lanham Act. In Abitron Austria GmbH, et al., v. Hetronic International, Inc. (No. 21-1043), the Court heard arguments not only from counsel for the parties, but also the Biden administration, on whether the Lanham Act … Continue reading

Supreme Court to Examine the Reach of the Lanham Act to Impose Liability on Conduct Outside of the United States

By Felicia Boyd (US) and Tim Kenny (US) on November 29, 2022 Posted in Intellectual Property, Trademark

Sections 32(1)(a) and 43(a)(1)(A) of the Lanham Act impose civil liability on any person who “use[s] in commerce” a trademark in a manner that “is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. 1114(1)(a); 15 U.S.C. 1125(a)(1). Notably, the Lanham Act defines commerce broadly as “all commerce which may lawfully … Continue reading

(Mis)Interpretation of Standard Did Not Support False Advertising Liability

By Andre Hanson (US), Leaf Dilts McGregor (US) and Saul Perloff (US) on July 6, 2020 Posted in Advertising

The Eleventh Circuit just ruled that a standard-setting-body’s interpretation of its own standards is an opinion that cannot support Lanham Act false advertising liability. Warren Technology, Inc. v. UL LLC, __ F.3d __, No. 18-14976, 2020 WL 3406585 (11th Cir. Jun. 22, 2020). Plaintiff Warren Technology and defendant Tutco, LLC competed in the field of … Continue reading

Outlaw Labs Can’t Charge Ahead In Suit Against Rhino Sellers

By Andre Hanson (US), Leaf Dilts McGregor (US) and Saul Perloff (US) on July 1, 2020 Posted in Advertising

Another chapter in the Outlaw Laboratories litigation drama has ended with another defeat for Outlaw. In 2018 the FDA warned consumers that some “Rhino” products—supplements that compete with Outlaw’s own “male enhancement” supplements—were adulterated with the active ingredients found in prescription drugs like Viagra and Cialis. Outlaw launched a series of false advertising suits against … Continue reading

Willfulness not required for profits awards in trademark infringement suits

By Tim Kenny (US), Felicia Boyd (US) and Joy Wang (US) on April 24, 2020 Posted in Trademark

A trademark infringement suit is not required to show willful infringement as a precondition to a disgorgement of the infringers’ profits.… Continue reading

The Slants Win: SCOTUS rules “Disparaging” trademark provision unconstitutional

By Andrea Shannon (US), Saul Perloff (US) and Andre Hanson (US) on June 20, 2017 Posted in Trademark

On June 19, 2017, the United States Supreme Court issued a much-anticipated decision, holding that the so-called “disparagement clause” of the Lanham Act is an impermissible restriction on free speech under the First Amendment. The ruling is the culmination of years of litigation, and clears the way for Simon Shiao Tam and the Slants to … Continue reading

Update: INTA files amicus brief with SCOTUS in Slants case

By Andrea Shannon (US) and Saul Perloff (US) on December 21, 2016 Posted in Trademark

On December 16, 2016, the International Trademark Association (“INTA”) filed an amicus brief with the U.S. Supreme Court in support of Simon Tam, founder of the Slants. Lee v. Tam, No. 15-1293, Br. Of Amicus Curiae Int’l Trademark Assoc. INTA—a global association comprising more than 7,000 trademark owners and legal practitioners—urged the Court to uphold … Continue reading

Update: 2d Circuit denies split in Church & Dwight and Apotex rulings

By Andre Hanson (US) on December 19, 2016 Posted in Advertising

On December 2, 2016, the United States Court of Appeals for the Second Circuit denied rehearing by the Panel and rehearing en banc. On December 5, 2016, the Court withdrew its previous opinion, which was to have been published with the reporter cite 836 F.3d 153, and directed that it will be republished as an … Continue reading

Second Circuit may address apparent Apotex/Church & Dwight split

By Andre Hanson (US), Robert Rouder (US) and Saul Perloff (US) on November 2, 2016 Posted in Advertising

In our September 28, 2016 blog post, and subsequent Law360 Article, we reported that an internal Second-Circuit split had arisen regarding the deference owed to allegedly false and misleading pharmaceutical/medical device advertising where the FDA had considered and approved similar claims for labeling. The earlier decision involved in the split, Apotex, Inc. v. Acorda Therapeutics, Inc. 823 F.3d 51 (2d … Continue reading

Houston College of Law enjoined from using name

By Andrea Shannon (US) on October 17, 2016 Posted in Trademark

On Friday, October 14, 2016, a federal judged ruled that Houston College of Law must change its name, at least for the duration of pending trademark litigation. The temporary injunction stems from a trademark infringement suit the University of Houston brought against Houston College of Law, a private law school which until June had been … Continue reading

Redskins won’t join Slants’ trademark case at SCOTUS

By Mayura Noordyke (US) on October 3, 2016 Posted in Trademark

The Supreme Court has refused the Washington Redskins’ request to join The Slants’ case challenging the Lanham Act’s ban on the registration of offensive trademarks. Pro-Football, Inc. v. Blackhorse, Case No. 15-1311 (U.S. Supreme Court’s Order List at 58, Oct. 3, 2016). Last week, the Supreme Court agreed to review The Slants’ case regarding whether … Continue reading

Intra-Circuit split should give advertisers pause

By Robert Rouder (US), Andre Hanson (US) and Saul Perloff (US) on September 28, 2016 Posted in Advertising

While advertising off-label claims for medical devices and pharmaceuticals may be like sailing into stormy waters, companies might assume that advertising their products based on FDA-vetted labeling is, if not a safe harbor, at least a reasonably sheltered cove. The recent Second Circuit decision in Church & Dwight Co. Inc., v. SPD Swiss Precision Diagnostics, … Continue reading

“Sue me already” – Analyzing Kanye’s (In)Famous Video (Part III)

By Saul Perloff (US) on July 12, 2016 Posted in Trademark

Over the past week, the Brand Protection Blog has reviewed the different legal claims unwitting stars of Kanye West’s “Famous” video might assert the rap artist. In Part I, we analyzed claims for Trademark Infringement. In Part II, we took a look at claims for False Endorsement. Today, we consider whether the “Famous” video violates celebrities’ rights … Continue reading

“Sue me already” – Analyzing Kanye’s (In)Famous Video (Part II)

By Lauren Valkenaar (US) and Saul Perloff (US) on July 7, 2016 Posted in Trademark

In our 3-part series, the Brand Protection Blog is reviewing the different legal claims unwitting stars of Kanye West’s “Famous” video might assert. In Part I, we analyzed claims for Trademark Infringement. Today we will cover False Endorsement. False Endorsement Some legal commentators have suggested that the celebrities featured in Mr. West’s video could bring a … Continue reading

Long legal battle ends with jury victory for Coca-Cola in pomegranate juice dispute

By Lauren Valkenaar (US) and Saul Perloff (US) on April 5, 2016 Posted in Advertising

A California jury recently ended an eight-year legal battle between POM Wonderful (“POM”) and The Coca-Cola Company (“Coca-Cola”) finding that Coca-Cola’s Pomegranate-Blueberry juice labeling did not mislead customers, even though the juice contained less than 1% Pomegranate and Blueberry juices combined. Procedural History We have been following the critical twists and turns of this litigation which began in 2008 … Continue reading