On June 29, the Supreme Court issued its much-anticipated decision in Abitron Austria GmbH, et al., v. Hetronic International, Inc. (No. 21-1043). We wrote about the case history previously here. Briefly, the 10th Circuit had upheld a $90 million jury verdict against Abitron—a former distributor of Hetronic—based in large part on Abitron’s conduct in Europe, … Continue reading
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
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
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
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
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
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
A trademark infringement suit is not required to show willful infringement as a precondition to a disgorgement of the infringers’ profits.… Continue reading
On June 14, 2018, a federal trial court in New York issued a decision relating to a restaurant owner’s claim that the restaurant manager was using the owner’s trademarks on social media in violation of the federal trademark law known as the Lanham Act. The trial court denied the owner’s claim, in a ruling that … Continue reading
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
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
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
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
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
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
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
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
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
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