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Electing Statutory Damages in a Counterfeiting Case May Bar an Award of Attorneys Fees in the Ninth Circuit

The Ninth Circuit's recent interpretation of the Lanham Act's damages provisions surely surprised many trademark practitioners. It held that, when a plaintiff chooses to receive statutory damages in a counterfeiting case instead of opting for actual damages, it may also be barred from recovering...

LaFrance on Trademark Infringement for Removal of Product Codes from Packaging

In Zino Davidoff SA v. CVS Corp. , 571 F.3d 238 (2d Cir. N.Y. 2009) , the Second Circuit held that gray market goods are materially different, and thus, infringing under the Lanham Act, when the packaging has been altered. These holdings mark a significant broadening of the concept of material differences...

TubcuT Manufacturer Claims Trademark Infringement

Access Designs, Inc., a company that manufactures TubcuT®, a product that alters regular bathtubs to convert them into walk-in showers, has filed a trademark-infringement suit against The BathWorks Company in federal district court in Charlottesville, Virginia. According to the allegations...

FREE DOWNLOAD: Complaint - Coach, INC., et al. v. City of Chicago, d/b/a New Maxwell Street Mark, et al., Case 1:10-cv-03108 (N.D. Ill.)

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - : COACH, INC. and COACH SERVICES...

FREE DOWNLOAD: Complaint - Coach, INC., et al. v. Montana Charlie's of Illinois, INC. d/b/a Montana Charlie's Flea Market, et al., Case 1:10-cv-03751, (N.D. Ill.)

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION COACH, INC. and COACH SERVICES, INC., Plaintiffs, Case No. v. MONTANA CHARLIE'S OF ILLINOIS, INC. d/b/a MONTANA CHARLIE'S FLEA MARKET, SAI YUJ CHEN, GING FANG CHEN...

FREE DOWNLOAD: Complaint - Coach, INC., et al. v. The Buyer's Market, Inc., an Illinois Corporation, d/b/a Buyer's Flea Market, et al., Case 1:10-cv-03781 (N.D. Ill.)

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION COACH, INC. and COACH SERVICES, INC., Plaintiffs, Case No. v. THE BUYER'S MARKET, INC., AN ILLINOIS CORPORATION, d/b/a BUYER'S FLEA MARKET, and DOES 1 through100, Defendants...

15-Second Advertising Law Alert: 7th Circuit Cuts Through Lanham Act Attorneys' Fees "Jungle"

Bad cases may make bad law, but they also can result in the prevailing party being awarded attorneys' fees under the Lanham Act's "exceptional cases" provision - whatever that means these days. The Seventh Circuit Court of Appeals now "offers a pathway through the semantic jungle"...

States entitled to sovereign immunity on Lanham Act claims for trademark infringement and false designation of origin - Univ. of Wis. v. Phoenix Int'l Software (7th Cir., Dec. 28, 2010)

Recently, the Seventh Circuit answered the following question in the negative: Is the Trademark Remedy Clarification Act (TRCA) a valid exercise of Congress's Fourteenth Amendment power to regulate state behavior? In Bd. of Regents of the Univ. of Wis. Sys. v. Phoenix Int'l Software, Inc. ...

Rebooting Trademarks for the Twenty-First Century

By Doris Estelle Long Professor of Law and Chair of the Intellectual Property, Information Technology and Privacy Group at The John Marshall Law School, in Chicago, Illinois. Excerpt from On Intellectual Property Law: Rebooting Trademarks for the Twenty-First Century , 49 U. Louisville L. Rev. 517...

Keller and Heckman LLP: FDCA and FDA REGS Preempt Lanham Act; Cal. Ad Law Clarified

The Ninth Circuit today [May 17] issued its long-awaited opinion in Pom Wonderful LLC v. The Coca Cola Co [ enhanced version available to lexis.com subscribers ].* BACKGROUND Pom marketed a pomegranate-blueberry juice blend. Coca Cola marketed a juice blend named and labeled as "Pomegranate...

False Advertising Standing Argued at Supreme Court

WASHINGTON, D.C. — (Mealey’s) The proper analytical framework for assessing standing in Lanham Act false advertising cases is the same for assessing standing in an antitrust action, counsel for Lexmark International Inc. told the U.S. Supreme Court Dec. 3 ( Lexmark International Inc. v. Static...

LaFrance on Standing to Bring False Advertising Claims under Section 43(a) of the Lanham Act

Lexmark Int'l Inc. v. Static Control Components, Inc., 697 F.3d 387 (6th Cir. 2012) Excerpt: In the never-ending toner wars, ink will once again be spilled as the Supreme Court considers a false advertising dispute in Lexmark Int'l Inc. v. Static Control Components ., 697 F.3d 387 (6th...

Supreme Court Affirms: False Advertising Counterclaimant Has Standing

WASHINGTON, D.C. — (Mealey’s) In a unanimous decision, the U.S. Supreme Court today ruled that “to come within the zone of interests in a suit for false advertising under” Section 1125(a) of the Lanham Act, “a plaintiff must allege an injury to a commercial interest in reputation...

Supreme Court: Food Label Challenges Are Allowable Under Lanham Act

WASHINGTON, D.C. — (Mealey’s) The Ninth Circuit U.S. Court of Appeals erred in holding that a private party cannot allege Lanham Act false advertising in connection with a product label regulated under the Food, Drug and Cosmetic Act (FDCA), the U.S. Supreme Court unanimously ruled today...

LaFrance on Standing to Bring False Advertising Claims under the Lanham Act: Lexmark Int'l, Inc. v. Static Control Components, Inc.

Excerpt: Who has standing to bring a false advertising claim under the Lanham Act? In Lexmark Int'l, Inc. v. Static Control Components, 2014 US LEXIS 2214 (Mar. 25, 2014), the Supreme Court ended a three-way circuit split, and held that standing is not limited to direct competitors [an enhanced...

LaFrance on Federal False Advertising Claims Arising From FDA-Compliant Labels: POM Wonderful LLC v. Coca-Cola Co.

Excerpt: In its second false advertising case this term, in POM Wonderful LLC v. Coca-Cola Co., 2014 U.S. LEXIS 4165 (June 12, 2014), the Supreme Court held that a misleading food or beverage label may be actionable under the false advertising provisions of the Lanham Act even if the label satisfies...