Intellectual Property

Recent Posts

Bundle Up – Litigation Can Be Chilly
Posted on 13 Nov 2013 by Ashlee Froese

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... Read More

Andrew Gold on Sponsored Linking and the Scope of Injunctive Relief
Posted on 16 Apr 2008 by Andrew M. Gold

A plaintiff obtains an injunction to prohibit a business competitor from using a trademark confusingly similar to plaintiff’s mark. In response, defendant changes its mark, but continues to purchase "sponsored links" on such... Read More

LaFrance on the Unlicensed Merchandising of University Trademarks
Posted on 13 May 2009 by Mary LaFrance

In Bd. of Supervisors for La. State Univ. Agric. & Mech. College v. Smack Apparel Co , 550 F.3d 465 (5th Cir. La. 2008) , an apparel company manufactured and sold t-shirts displaying university names, initials, and color schemes. Four universities... Read More

Gold on Personal Jurisdiction for the Internet: Minimum Contacts for a Website
Posted on 9 Sep 2009 by Andrew M. Gold

In Andy's Music, Inc. v. Andy's Music, Inc. , 607 F. Supp. 2d 1281 (S.D. Ala. 2009) , an Alabama plaintiff unsuccessfully argued that the mere fact that the defendant had a website accessible via the internet in Alabama was sufficient to establish... Read More

Anne Gilson LaLonde on the Doctrine of Inevitable Confusion and Forgivable Misstatements to the USPTO: Angel Flight of Georgia, Inc. v. Angel Flight America, Inc.
Posted on 12 May 2008 by Anne Gilson LaLonde

Things are not always as they seem in trademark law. A party can acquiesce to another's use of a similar trademark, yet be granted an injunction. And a party can make a misstatement in a trademark application, yet be spared from a finding of fraud... Read More

Gilson LaLonde on Rhoades v. Avon Products, Inc., 504 F.3d 1151 (9th Cir. 2007)
Posted on 25 Mar 2008 by Anne Gilson LaLonde

In the trademark infringement case, Rhoades v. Avon Products, Inc ., 504 F.3d 1151 (9th Cir. 2007), the Ninth Circuit discusses what constitutes a real and reasonable apprehension of suit sufficient to create a justiciable case or controversy for declaratory... Read More

Andrew Gold on Laches, Common Law Trademark Rights, and Anti-Cybersquatting Safe Harbors
Posted on 16 Apr 2008 by Andrew M. Gold

Two bands have shared a common name, the "Wailers," for many years. One band is famous, one is not. The un-famous band (Plaintiffs) has been using the name since 1959. The famous band has been using variants on the name since as early as 1964... Read More

Andrew M. Gold on the Difference Between the Scope of Validity of a Trademark and the Scope of Relief for Infringement of a Trademark
Posted on 3 Apr 2008 by Andrew M. Gold

Plaintiff Applied Information Sciences Corp. ("AIS") holds a federally registered trademark in the term "SmartSearch" for certain computer related functions. Defendant, the internet auction website company eBay, Inc., uses the term... Read More

Gold on Remedies and Damages under Anti-Cybersquatting Consumer Protection Act
Posted on 9 Sep 2009 by Andrew M. Gold

Under the Anti-Cybersquatting Consumer Protection Act, 15 USCS § 1125 , a plaintiff may elect either actual damages and profits or statutory damages. But can a plaintiff pursue both theories and wait to see which award is larger before making an... Read More

Andrew M. Gold on Reverse Confusion, "Weak" Arbitrary Marks, and the Difference Between Actual Confusion and Likelihood of Confusion
Posted on 27 Apr 2008 by Andrew M. Gold

Why would a start up on-line magazine focused on women’s shoes choose as a trademark the famous nickname of a male "tough guy" film star? Having made such an odd choice, why would the start-up seek to enjoin a company from using the film... Read More

Gilson LaLonde: The Latest from the TTAB on the Doctrine of Foreign Equivalents
Posted on 14 May 2008 by Anne Gilson LaLonde

Do any of your clients use a foreign language trademark? If so, you need to understand the doctrine of foreign equivalents. The Trademark Trial and Appeal Board (TTAB) has published a number of precedential opinions developing the doctrine, under which... Read More

Opting for Statutory Damages in a Counterfeiting Case May Prevent Your Client From Receiving Attorneys' Fees
Posted on 25 Mar 2008 by Anne Gilson LaLonde

After successful prosecution of a counterfeiting case, a plaintiff may choose between trebled actual damages and statutory damages. The Ninth Circuit has interpreted the Lanham Act damages provision (15 U.S.C. § 1117) to preclude an award of attorneys'... Read More

Andrew J. Reitz on The Use of a Trademark in Metatags in a Descriptive Manner
Posted on 25 Mar 2008 by Andrew J. Reitz

The United States District Court for the District of Minnesota recently denied a party's motion for injunctive relief concerning the use of a party's registered trademark and trade name, noting that Plaintiff's changes to his website comport... Read More

Can Hall & Oates Stop “Haulin’ Oats”?
Posted on 10 Mar 2015 by David N. Feldman

I admit I just love these things. What’s in a name? Well for many, a brand. And in the case of the huge rock duo Hall & Oates, they just can’t seem to “go for that” as a Brooklyn company is peddling hipster granola called “Haulin’... Read More

Anne Gilson LaLonde on Handling Trademark Problems Posed by Fan-Created Content
Posted on 4 May 2009 by Anne Gilson LaLonde

In the internet age, a tension has arisen between products and fans who express their product enthusiasm in various forms to the population as a whole. Such enthusiasm begs the question: Does fan fidelity boost the popularity of a trademark or does it... Read More