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Eric Ball

is a Litigation Partner at Fenwick & West, and focuses his practice on trademark litigation and Trademark Trial and Appeal Board disputes. He also has substantial experience in trade secret, copyright and complex commercial litigation matters. In trademark matters, Eric has successfully defended and prosecuted multiple trademark litigations and Trademark Trial and Appeal Board proceedings with a particular emphasis on priority disputes and matters asserting reverse confusion. Eric also has significant international trademark experience including in the EU and key Asian and Latin American markets. With this experience he has successfully defended multiple gaming and social media companies—both startups and established companies—in international trademark disputes allowing for their international expansion.

For more information or to contact Eric, please visit his Firm Profile Page.

Recent Articles by Eric Ball

The Ninth Circuit Writes the Script on Pleading and Proving Reverse Confusion Claims

The Ninth Circuit clarified the requirements for pleading and establishing a trademark infringement claim under a reverse confusion theory in Marketquest Group v. BIC, Case No. 15-55755 (9th Cir. July 7, 2017). The court relieved plaintiffs from having to specifically plead reverse confusion if it is compatible with the theory of infringement alleged in the complaint, and supported a more malleable standard for proving intent in reverse confusion cases. The court also held that good faith is an element—not just a factor—of a fair use defense, and that the fair use defense may only be raised after a likelihood of confusion is established. Marketquest further reinforces courts’ reluctance to decide trademark cases on summary judgment, and makes it more difficult for defendants to dispose of reverse confusion claims through pretrial motions. 

Ninth Circuit Confirms Willfulness is Required to Award Profits in Trademark Cases

As Stone Creek deepens the divide among circuits, the issue of whether willfulness is required for disgorgement of a defendant’s profits in trademark cases is ripe for Supreme Court review… The Stone Creek decision solidifies the Ninth Circuit’s position that willfulness is required for a recovery of profits in trademark cases. This approach is consistent with equitable principles because disgorgement is generally used to deter culpable behavior and deterrence would not be necessary, and would not work, for an innocent infringer. Depending on the facts of a case, trademark law provides sufficient remedies to prevent a likelihood of confusion and compensate a plaintiff for its losses—beyond a defendant’s profits—like an injunction, actual damages and/or corrective advertising. An award of profits can be reserved for willful infringers, without depriving a plaintiff of remedies for non-willful infringement.

Supreme Court Rocks the Trademark Office in ‘Slants’ Case

After a streak of six patent decisions uniformly overruling the Federal Circuit, and for the first time all term, the Supreme Court finally handed the Federal Circuit a win this week. In its landmark ruling in Matal v. Tam (formerly Lee v. Tam), the U.S. Supreme Court struck down the restriction on the registration of marks that “disparage” under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). Justice Samuel A. Alito Jr. wrote unanimously for the eight justices in holding that Section 2(a)’s prohibition on disparaging registrations violates “a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

Almost Famous: Many Trademark Owners Find Dilution Claims Out of Reach

In a dilution claim, a trademark owner asserts that their famous mark is entitled to protection from use that causes harm to the mark’s reputation or distinctiveness. In effect, the trademark owner is saying that the mark is so famous that even use in connection with unrelated goods or services would result in an affiliation with its business and a resulting decrease in the value of the mark. For example, you are inviting a dilution claim if you begin selling McDonalds Cars or Chevy Hamburgers. But recent dismissals of trademark dilution claims at the motion to dismiss stage highlight that plaintiffs must be prepared to show early on that their mark is a “household name” before they can pursue their claims. These decisions also show that defendants are more often turning to this early path to attack an exaggerated claim to fame.