Posts Tagged: "trademark infringement"

On September 23, the office of the U.S. Solicitor General filed a brief with the U.S. Supreme Court on the issues at play in Abitron Austria GmbH v. Hetronic International, Inc., a trademark case in which the U.S. Court of Appeals for the Tenth Circuit affirmed a $90 million damages award for trademark infringement based on infringement occurring almost entirely outside of the United States. The Solicitor General’s brief asks the nation’s highest court to grant cert on Abitron Austria’s appeal in order to properly limit the application of the Lanham Act so that damages are only awarded when the alleged infringement has a likelihood of causing confusion among U.S. consumers.

There are not many trademark cases that are of equal interest to high fashion, the art world and cutting-edge tech. The ongoing “MetaBirkin” lawsuit is unusual, however, in that it involves a designer brand and two of the latest, trending topics – non-fungible tokens (NFTs) and the metaverse. In a case that has bagged global attention, luxury design house Hermès is suing artist Mason Rothschild in New York for trademark infringement and dilution, misappropriation of its BIRKIN trademark, cybersquatting, false designation of origin and description, and injury to business reputation.

The United States Patent and Trademark Office (USPTO) announced last week that it will terminate engagement with the Russian IP Office (Rospatent) as well as the Eurasian Patent Organization (EAPO) and the IP Office of Belarus, which has been cooperating with Russia in the lead-up to and during the Russian invasion of Ukraine. The USPTO also said on Wednesday that, effective March 11, it is no longer granting requests to participate in the Global Patent Prosecution Highway (GPPH) at the USPTO when those requests are based on work performed by Rospatent as an Office of Earlier Examination. And, in pending cases where the Office granted special status under the GPPH to applications based on work performed by Rospatent, “the USPTO will remove that status and return those applications to the regular processing and examination queue, meaning that they will no longer be treated as GPPH applications at the USPTO,” said a USPTO statement. “Like so many, we are deeply saddened by the events unfolding in Ukraine,” said the USPTO. “We hope for the restoration of peace and human dignity.”

The U.S. District Court for the Eastern District of New York yesterday unsealed documents in an anticounterfeiting suit filed last year by Gilead Sciences, Inc. against a slew of defendants who Gilead alleges sold, marketed, and distributed counterfeits of its HIV medications. Gilead’s complaint seeks immediate monetary and injunctive relief, including seizure at certain of the defendants’ premises, as well as relief for trademark and trade dress infringement and trademark dilution, among other alleged violations…. According to the unsealed complaint and motion for relief, the accused companies sold “authentic-looking bottles of Gilead HIV and other medication to distributors and pharmacies throughout the United States, including in New York City, who in turn dispensed them to patients.”

When an influencer is paid to promote a brand – and the brand’s name is trademark-infringing – can the influencer be on the hook for the infringement? A federal district court just said yes. The result could widely expand trademark litigation against influencers – and could reshape how companies and their influencers relate to one another contractually.

What comes to mind when you read these city/year combinations: London 2012. Sochi 2014. Sydney 2000. Did you immediately think of the Olympics? The United States Patent and Trademark Office (USPTO) and its Trademark Trial and Appeal Board (TTAB) believe you did. In 1999, the Board held that the primary significance of “Sydney 2000” is a reference to the Olympics held in Sydney, Australia in 2000 and affirmed the USPTO’s refusal to register a Sydney 2000 mark because the mark falsely suggested a connection with the Olympics. In re Urbano, 51 U.S.P.Q.2d 1776 (T.T.A.B. 1999). Thus, the mark violated Section 2(a) of the Lanham Act, 15 U.S.C. §1052(a), and was not registrable. More than two decades later, the same question is before a federal district court in Colorado, home to the U.S. Olympic and Paralympic Committee (USOPC). The sports apparel and equipment company PUMA SE filed applications in the USPTO to register trademarks consisting of its PUMA mark combined with cities and years for which Olympic Games will be held: PUMA TOKYO 2021, PUMA BEIJING 2022 and PUMA PARIS 2024, for bags, clothing and sports equipment. When the USPTO refused registration of each application based on likelihood of confusion and false connection with the USOPC’s TOKYO 2020, BEIJING 2022 and PARIS 2024 marks, PUMA initiated cancellation proceedings against the USOPC’s trademarks.

With brick-and-mortar stores closing at rapid paces and online sales surging, marketers are developing new models to facilitate sales through innovative online platforms. One of those new business models is Redbubble’s hybrid “print-on-demand” service. Two recent Court of Appeals decisions – from the Sixth and Ninth Circuits – consider important questions about when these new approaches to online sales gives rise to liability for trademark infringement, trademark counterfeiting, and right of publicity violations.

Trademark law has seen substantial developments in 2019 and 2020, with four major cases in the United States and Europe rising to the top. The U.S. Supreme Court (SCOTUS) issued two of those decisions, the most recent being especially significant because the court has not opined on the topic of trademark genericism in nearly 100 years. The other SCOTUS case dealt with the hotly contested topic of awarding profits obtained through innocent (unknowing) trademark infringement.

On August 17, the United States Court of Appeals for the Second Circuit vacated and remanded a decision of the district court in Tiffany & Co. v. Costco Wholesale Corp. In particular, the Circuit Court held that the district court’s determination that Costco was liable for trademark infringement and counterfeiting was inappropriate at the summary judgment stage. In November 2012, a customer alerted Tiffany that Costco was selling diamond engagement rings that she believed were being advertised as Tiffany & Co. rings. Costco admitted to selling rings with identifying signs using the phrases “Tiffany setting,” “Tiffany set,” or “Tiffany style,” and in some instances using only the word “Tiffany” for identifying the setting style of the ring. The rings identified by the customer were accompanied by signs reading “Platinum Tiffany.”

On June 25, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Blumenthal Distributing v. Herman Miller, Inc. in which the appellate court reversed some parts of a Central District of California ruling on trade dress and trademark infringement claims related to office chairs sold by Herman Miller, and affirmed others. The Ninth Circuit’s decision discusses at length the issue of functionality, an area of trademark law which is undefined by statute and is notable for overturning parts of the district court decision because of an erroneous jury instruction based upon the Ninth Circuit’s own model rules. The decision also includes a partial dissent by Circuit Judge Michelle Friedland on the issue of dilution, with Judge Friedland arguing that Herman Miller hadn’t proven the requisite fame to prevail on its trademark dilution claims.

On April 10, multinational corporation 3M filed a lawsuit alleging trademark infringement claims  against N95 respirator distributor Performance Supply, LLC, in the Southern District of New York. Central to 3M’s suit is the company’s desire to eliminate what it calls a false and deceptive price-gouging scheme being perpetrated by entities operating outside of 3M’s authorized supply chain and taking advantage of increased respirator demand caused by the COVID-19 crisis.

The U.S. Court of Appeals for the Ninth Circuit held that a squeaking dog toy resembling a bottle of Jack Daniel’s whiskey is an expressive work entitled to First Amendment protection.  VIP Prods. LLC v. Jack Daniel’s Properties, Inc., No. 18-16012 (9th Cir. Mar. 31, 2020).  The court  reversed a bench trial verdict that the toy infringed and diluted the JACK DANIEL’S trade dress and remanded for further reconsideration by the district court.  Before the district court may find that the toy infringed Jack Daniel’s famous trade dress, the Ninth Circuit held that the district court must first apply the Second Circuit’s Rogers test, which will require it to consider whether VIP’s use of the trade dress was artistically relevant to the toy’s expressive character, and whether VIP’s use of the trade dress explicitly misleads consumers as to the source of the toy.  The Rogerstest, though, has only been applied to expressive works such as books, songs, video games and movies; it has never been applied to consumer products like handbags and perfume, even if those products were intended as parodies.  The Ninth Circuit’s decision expands the scope of First Amendment protection far beyond traditionally expressive works, and risks exposing a wide variety of brand owners to infringements based on alleged parody.

On January 24, 2020, the United States Space Force logo hit the news — and the photon torpedoes began to fly. Almost instantly, those familiar with the Star Trek Starfleet Command insignia called out a striking similarity, and even George Takei (who played USS Enterprise helmsman Hikaru Sulu) tweeted “Ahem. We are expecting some royalties from this…” Putting aside the actual origin of the Space Force insignia (derived from the Air Force Space Command emblem), could someone actually claim that the Space Force emblem constitutes trademark infringement on the Star Trek logo?

On Tuesday, the Supreme Court heard oral arguments in Romag Fasteners v. Fossil, Inc., Fossil Stores, I. Inc., Macy’s Inc, and Macy’s Retail Holdings, Inc. to decide whether a successful trademark plaintiff must establish that infringement was willful as a hard prerequisite to an award of the infringer’s profits, rather than being just one of multiple factors to be weighed when determining entitlement to a profits award. Under the latter scheme, profits may be awardable even if the infringement was not willful. Taking the Justices’ comments at face value, it seems likely that Romag will prevail and profits may be disgorged for less-than willful infringement.

In November, 2019, amendments to the Customs Code of Ukraine regarding the protection of intellectual property rights when moving goods across the customs border came into force. The principle of international exhaustion of rights was officially introduced into Ukrainian legislation with this Law.