LexisNexis® Legal Newsroom
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...

Hot Dog Maker Gets Steamed At Competitor, Sues Him

CHICAGO - (AP) This is a dog fight Chicago will relish. Vienna Beef, one of the world's most famous hot dog makers, is suing the owner of a rival hot dog company, accusing him of either stealing Vienna's 118-year-old recipe or lying to customers by claiming that he's using it. Full version...

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...

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...

Controversy Requirement Debated Before Supreme Court In Trademark Case

WASHINGTON, D.C. - (Mealey's) 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 Nov. 7 ( 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...

Joe Canada!

When innovation meets the law, the results are often surprising. We in Seattle are confronting this as ride services like Lyft compete with a regulated taxi industry . Now consider Pirate Joe's , a business located in the upscale Kitsilano neighborhood of Vancouver, B.C.. I will let them describe...

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...

Counterfeit Super Bowl Tickets? Prosecutors Bring Charges

Two men have been charged with running a counterfeit production and distribution operation in Queens, New York, and elsewhere in which blocks of high quality tickets to sought-after post-season football games – including the 2014 AFC championship in Boston, the NFC Wild Card game in Philadelphia...

VPN and Pizza: The Right Way To Deal with Food Claims

An article in Thursday's Wall Street Journal reminded me of a point I’ve been trying to make for years but didn’t have a good hook to do so. Now that this idea is in print, I do, so here goes. The article concerns a group called Associazione Verace Pizza Napoletana , which gives pizzerias...

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...

POM Wonderful’s Belated Christmas Gift

On December 30, the Ninth Circuit Court of Appeals handed POM Wonderful a belated Christmas gift, and an unusual one at that. It reversed the denial of a preliminary injunction in a case it had brought against PUR Beverages, a d/b/a of Robert G. Hubbard, Jr., and the marketer of a beverage called “pŏm”...

Can Hall & Oates Stop “Haulin’ Oats”?

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’ Oats.” Daryl and John have...

Pizzas and Trademark Infringement

It is easy to forget that there is a North Carolina Trademark Registration Act. It is in Chapter 80 of the General Statutes . The Business Court's mandatory jurisdiction extends to cases brought under Chapter 80 per N.C. Gen. Stat. §7A-45.4(a)(4), so you might expect that Court to be a hotbed...

Summary of Recent Precedential Trademark Trial and Appeal Board Decisions

by Paul Bost From June through August 2015, the Trademark Trial & Appeal Board issued eleven precedential decisions. Over the course of the upcoming weeks, we are briefly summarizing each opinion and a “take away” for brand owners and practitioners. We continue our series with a summary...

EARNHARDT: It’s All in a Name

Famous NASCAR driver Dale Earnhardt died in 2001, but litigation relating to his death continues to this day. In a case before the United States Patent and Trademark Office, the Trademark Trial and Appeal Board (Board), the former racing super star’s widow filed an opposition when the racer’s...