The Third Circuit affirmed the cancellation of plaintiff PIM Brands, Inc.’s (“PIM”) trademark for “the shape of a wedge for candy, with an upper green section with white speckles, followed by a narrow middle white section and followed by a lower red section with white speckles” because “the whole trade dress of the red-white-and-green wedge … Continue reading
Home Chef continues to lose the battle to stop Grubhub from using, what they assert, is a confusingly similar logo for food-related services. Home Chef began using its HC Home Mark and Home Chef Home Logo (collectively, the “HC Marks”) in 2014 in connection with meal preparation kits. Grubhub, a popular food-ordering and delivery service, merged … Continue reading
The Fifth Circuit upheld a preliminary injunction last week prohibiting Chinese company Shenzhen Sanlida Electrical Technology Co. Ltd. and Shenzhen Sanlida Electrical Technology Co., Ltd. (collectively “Shenzhen”) from selling stand mixers that allegedly infringe Whirlpool Corp.’s (“Whirlpool”) famous KITCHENAID trademarks and trade dress. In January 2022, Whirlpool sued Shenzhen alleging trademark infringement and dilution, trade … Continue reading
The trademark dispute that has been steadily escalating between Illinois-based Citizens Equity First Credit Union (“Citizens”) and California-based San Diego County Credit Union (“SDCCU”) could be headed to the Supreme Court. SDCC filed a Petition for Writ of Certiorari asking the Supreme Court to clarify when courts have jurisdiction to hear invalidity claims in trademark … Continue reading
** This article was drafted by Logan Woodward, a Summer Associate in NRF’s Minneapolis Office. Logan is supervised by attorneys who are licensed in the State of Texas. After a two-year feud, Mars Wrigley (“Wrigley”), the maker of the popular rainbow-colored Skittles candies, recently settled its lawsuit with Terphogz LLC (“Terphogz”) regarding its use of … Continue reading
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
The United States Supreme Court issued its decision in a years-long 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, 599 U.S. ____ (2023). The Court’s opinion focused on … Continue reading
Almost everyone has probably heard of “Taco Tuesday.” Ads, local restaurants, celebrities—they use this popular slogan to refer to the idea that it is fun to eat tacos on Tuesdays. But although this phrase is used by many, two restaurant companies actually own TACO TUESDAY trademark registrations that they can assert as conclusive evidence of … Continue reading
In a precedential decision, the Trademark Trial and Appeal Board (“TTAB”) found a likelihood of confusion between the applied-for marks sought by Applicant, Michael P. Chisena, and the common law rights owned by Opposers, Major League Baseball Players Association (“MLBPA”) and Aaron Judge (“Judge”). Major League Baseball Players Ass’n v. Chisena, 2023 U.S.P.Q.2D 444, 2023 … Continue reading
On April 4, in Bertini v. Apple Inc., the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) clarified the limitations of tacking and its application in establishing priority in trademark disputes. This case sets an important precedent for tacking use of a mark in the trademark registration context and highlights the limitations of … 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
In a precedential decision, the Trademark Trial and Appeal Board (the “Board”) reversed two refusals to register Grammy-winning singer Lizzo’s 100% THAT BITCH trademarks. Lizzo’s company, Lizzo LLC, applied for two word trademarks in June 2019 for 100% THAT BITCH for various types of clothing after she popularized the phrase in her 2017 hit single … Continue reading
The Trademark Trial and Appeal Board (“TTAB”) refused registration of the mark “ZHIMA” because the applicant, Advanced New Technologies Co., Ltd., did not submit a translation of ZHIMA into English. In re Advanced New Techs. Co., 2023 TTAB LEXIS 2, 2023 WL 181172 (TTAB Jan. 12, 2023). In the original refusal, the Examining Attorney determined … Continue reading
Terminal Moraine Inc. (“Applicant” or “Terminal Moraine”) sought registration on the Principal Register of the mark: for the following goods and services: Mystery Ranch, Ltd. (“Mystery Ranch” or “Opposer”) opposed registration of the DANA DESIGN mark based on an alleged false suggestion of a connection with Mystery Ranch and Dana Gleason, Mystery Ranch’s co-owner, under … Continue reading
The dispute between Jack Daniel’s and VIP Products LLC (“VIP”) over a parody dog toy continues and will finally proceed to the Supreme Court. The case centers around a parody dog toy sold by VIP that mimics the label of a Jack Daniel’s whisky bottle. The toy replaces the text “Jack Daniel’s Old No. 7” … 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
It is well-established that a shape or colour alone can function as a trade mark, that is, a badge of origin indicating to consumers the source of the relevant goods or services. However, in practice, achieving the level of ubiquity required to be granted such a trade mark registration can be difficult.[1] It is also … 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
In September 2019, the Shanghai Pudong District People’s Court awarded triple punitive damages to Balanced Body Inc., which according to the Shanghai government news report was the first such award for a Shanghai Court to a foreign plaintiff. Background Balanced Body is a provider of Pilates equipment and education and holds PRC trade mark registrations … Continue reading
On February 10, 2020, the Seventh Circuit federal appeals court ruled that an Illinois-based seller of dietary supplements could maintain a federal Lanham Act and Illinois state law claims against a California-based competitor that had only an online presence, and no physical presence in Illinois. (Curry v. Revolution Laboratories, LLC, 949 F,3d 385 (7th Cir. … Continue reading
2018 marked the publication of the first Australian Trademarks Law Review from the Law Review series. The Law Review collates cross-border legal insights and analysis across a range of practice areas and is a useful resource for in-house counsel of global organizations. Following the publishing of the first edition of the Australian chapter of 2018 … Continue reading
On October 22, 2018, a federal trial court in Manhattan granted web services conglomerate Alibaba Group Holding Limited’s request for a preliminary injunction against several defendants that were offering cryptocurrency for sale, under the name “AlibabaCoin.” (Alibaba Group Holding Ltd. v. Alibabacoin Foundation, No. 18-CV-2897 (JPO) (S.D.N.Y. Oct. 22, 2018) Although neither Alibaba nor any … Continue reading
On 24 August 2018, the creatively named Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 quietly received Royal Assent, with some parts of the new Act entering into force the following day. As the name indicates, the primary focus of the new legislation is to implement the recommendations made … Continue reading