Pernod Ricard USA LLC v. Bacardi U.S.A., Inc.: More on the the HAVANA CLUB saga

Issued April 6, 2010, this opinion is the latest installment of the HAVANA CLUB saga. Here, Pernod Ricard USA brought a false advertising claim against Bacardi U.S.A., alleging that Bacardi's use of the HAVANA CLUB trademark on its rum bottle deceives consumers into believing that Bacardi's...

Challenges For Brand Owners and Marketplace Sites in the Wake of Tiffany v. eBay

The Second Circuit's April 1, 2010 opinion in Tiffany v. eBay , both affirmed and remanded portions of the decision of the U.S. District Court for the Southern District of New York that addressed whether the online marketplace site eBay may be liable under theories of trademark infringement or...

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...

From Dungarees to Haute Couture: Premium Denim, LLC. v. Paige Hamilton et al. - FREE DOWNLOAD/Complaint

Jeans, once worn exclusively by cowboys and farmers, have been given a whole new status by famous designers and celebrities. As denim design reaches new heights and prices for jeans get well into the hundreds and even thousands of dollars, denim companies are becoming increasingly protective of...

Secondhand Goods - FREE DOWNLOAD: Complaint, Cartier, et al. v. Hautelook, INC., 10-cv-05845 (SDNY)

Last Tuesday, Cartier commenced litigation against HauteLook, Inc. for false advertising and unfair competition, trademark infringement and dilution, and related claims arising under New York State and common law. Cartier seeks injunctive relief and monetary relief. HauteLook, a newly established...

Sixth Circuit upholds Seventh-day Adventism’s trademark and rejects Free Exercise and Religious Freedom Restoration Act claims: General Conf. Corp. v. McGill (August 10, 2010)

Plaintiffs Seventh-day Adventists sued Walter McGill, a pastor, for trademark infringement based on McGill's use of their protected marks in advertising and promoting his breakaway church. McGill brought a motion to dismiss based on the Free Exercise Clause and the Religious Freedom Restoration Act...

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. ...

Beware the Fog of Giving: When Similar Charities Collide

The Wounded Warrior Project's (WWP) $1.7 million judgment against a similar charity, the Wounded Warriors Family Support, Inc. (WWFS), was recently affirmed by the Eighth Circuit. WWP had alleged that WWFS sowed confusion on the Internet by using a website to solicit donations intended for WWP...

Forever 21 Threatens Suit against Blogger

Rachel Kane, owner of WTForever21.com, recently received a cease-and-desist letter from clothing retailer Forever 21 . Apparently, the retailer is not amused by Kane's sartorial criticism and has accused her of engaging in "trademark infringement, copyright infringement, unfair competition and...

Ninth Circuit Provides Important Guidance for Analyzing Internet Keyword Trademark Infringement

By Jeffrey A. Simmons ( jsimmons@foley.com ) In March 2011, the U.S. Court of Appeals for the Ninth Circuit issued an important decision addressing the circumstances in which the use of keywords for Internet searches can constitute trademark infringement. The court's opinion in Network Automation...

INTA Issues Statement Regarding Its Amicus Brief in Louboutin S.A. v. Yves Saint Laurent Red Sole Mark Case

To ensure that courts give proper recognition to rights conferred by trademark registrations under U.S. law and follow precedent protecting trademarks that also have aesthetic attributes, the International Trademark Association (INTA) filed an amicus brief on November 14, 2011 in a widely-watched...

Sands Anderson: Beyond the Hammer: Thoughtful Approaches to Trademark Infringement

By: Donna Ray Berkelhammer Obtaining a federal or state trademark is merely the first step in protecting your brand and reputation. If you don't actively root out and address infringement, you could be abandoning your mark. Many people equate " policing " a trademark with sending stern...

Weak Mark, Lack of Confusion Leads to Summary Judgment for Defendant

Judge Leonie M. Brinkema was not impressed with the trademark infringement case filed by Wag'N Enterprises, a pet-safety company based in Herndon, Virginia, against a California nonprofit known as Redrover. Entering summary judgment in favor of Redrover, she essentially found that no reasonable jury...

No Trademark for WAGGIN' STRIPS

Midwestern Pet Foods, Inc. (Midwestern) applied for a trademark on its dog treat product, WAGGIN' STRIPS. The Societe des Produits Nestle S.A. (Nestle), which holds the trademark on a similar dog treat, BEGGIN' STRIPS, challenged the application, claiming Midwestern's proposed mark would...

Duty to Defend Trademark Suit Not Included within Insurance Proviso Covering Title/Slogan Infringement

The Eighth Circuit recently determined that an infringement lawsuit involving the trademark, "Nature's Own," did not invoke an insurer's duty to defend under an "Advertiser Advantage" insurance policy. The policy excluded claims "for or arising from infringement or...

Controversy Requirement Debated Before Supreme Court In Trademark Case

WASHINGTON, D.C. - ( Mealeys ) The Second Circuit U.S. Court of Appeals properly found standing lacking in a trademark infringement case by virtue of a covenant not to sue, an attorney for Nike Inc. told the U.S. Supreme Court yesterday ( Already LLC d/b/a YUMS v. Nike Inc. , No. 11-982, U.S. Sup...

Supreme Court Affirms: Trademark Case Mooted By Covenant Not To Sue

WASHINGTON, D.C. - ( Mealey's ) The Second Circuit U.S. Court of Appeals properly rejected trademark counterclaims levied against Nike Inc. where a covenant not to sue entered into by the counterclaimant extinguished any justiciable controversy between the two, the U.S. Supreme Court held today...

Fourth Circuit Holds Trademark Infringement Defendant Threw in the [Paper] Towel with Respect to Preclusion Defenses

by Stan Hammer In its second published opinion vacating the judgment of the district court, the Fourth Circuit recently ordered that a jury's verdict awarding Georgia-Pacific nearly $800,000 in damages for trademark infringement be reinstated. Georgia-Pacific Consumer Prods., LP v. Von Drehle...

Tenth Circuit Rejects Infringement Claim Against Use of Competitor’s Trademark as Search Engine Keyword

The practice of using a competitor’s trademark as a keyword to trigger sponsored links in Internet search engines received a boost this week from the U.S. Court of Appeals for the Tenth Circuit. In 1-800 Contacts, Inc. v. Lens.com, Inc. , the Court rejected 1-800 Contacts’s claim that the...

Bundle Up – Litigation Can Be Chilly

A potentially big Canadian fashion law dispute caught our attention last week and we couldn’t wait to tell you all about it. Canada Goose is taking on Sears Canada over Sears’ sale of allegedly infringing jackets. Below is a summary of Canada Goose’s claims against Sears: - Canada...

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...

EDVA Rejects Argument That a Common Law Trade Dress Infringement Claim Is Subsumed by a Trademark Infringement Claim

by Julia Bishop Judge Liam O’Grady upheld a unanimous jury verdict in favor of Reynolds Consumer Products, Inc. in the U.S. District Court for Eastern District of Virginia. The jury found that Handi-Foil Corporation willfully infringed on Reynolds’ trade dress rights. See Reynolds Consumer...

Supreme Court Hears Arguments in Dispute Over Effect of TTAB Rulings

WASHINGTON, D.C. — (Mealey’s) The preclusive effect of findings by the Trademark Trial and Appeal Board that confusion between two trademarks is likely was debated today before the U.S. Supreme Court ( B&B Hardware Inc. v. Hargis Industries Inc. , No. 13-352, U.S. Sup.; See 10/6/14, Page...