Posts Tagged: "trademark litigation"

On October 5, 2016, a jury in Tiffany and Co. v. Costco Wholesale Corp. – litigated before Judge Swain of the Southern District Court of New York – awarded Tiffany & Co. (Tiffany) $8.25 million in punitive damages for willful and bad faith infringement of their trademark by defendant Costco Wholesale Corp. (Costco). This award, in combination with an earlier award of $5.5 million in profits and statutory damages, brings the total damages owed by Costco to $13.75 million. The case is particularly notable for several reasons, but specifically because punitive damages were awarded.

On November 18, 2016, Paypal Inc. filed an objection at the Indian Trademark Office accusing Paytm, an Indian mobile wallet company, of trademark infringement. The objection comes at the heels of the recent windfall made by the latter on account of a cash-strapped nation moving rapidly towards a cashless normal. For six years, Paytm had been steadily becoming a household name in middle-class India – until it really hit the jackpot on November 8, 2016 when the Indian Prime Minister Narendra Modi announced demonetization of currency notes of Rs. 500 and Rs. 1000 – invalidating overnight 80% of the country’s cash in circulation.

According to the complaint, when the 2015 arose the defendant gave written representations that they had indeed infringed on the trademarks and trade dress of WRB, that the trademarks and trade dress were valid and enforceable, that they would cease any further use of the trademarks or trade dress, and that they promised to pay costs and attorneys’ fees in addition to any remedies available under the law. Unfortunately, the willful trademark infringement did not stop there according to WRB.

The Federal Circuit reversed the cancellation of two trademarks by the Trademark Trial and Appeal Board (“Board”) and remanded for further consideration… “Use in commerce” under the Lanham Act encompasses any activity that falls under Congress’s Commerce Clause power, including in-state sales to an out-of-state resident. Activities that are within such regulatory authority are unlikely to be disqualified as merely “de minimis,” e.g. in economic impact.

Although the studio construction itself seems to be carrying on apace, Valhalla Studios has gotten itself into legal trouble over its chosen name. On October 19th, the studio was named as a defendant in a trademark infringement suit filed by Valhalla Motion Pictures, a California video production company, which is best known for developing and producing the hit television show The Walking Dead. The trademark infringement suit is filed in the U.S. District Court for the Northern District of Georgia (N.D. Ga.).

The $41.4 million settlement ends a legal clash that had previously led to the largest damages award for corrective advertising ever. The jury verdict was entered in the U.S. District Court for the Middle District of Florida (M.D. Fla.) and the settlement ends an appeal filed by U-Haul in the U.S. Court of Appeals for the Eleventh Circuit (11th Cir.).

There has not been a single quarter in which more than 82 lawsuits involving allegations of infringing at least one design patent have been filed in U.S. district court going back to the first quarter of 2011… From the start of 2012 through the third quarter of 2016, a full 36.4 percent of design patent actions also include a claim of trademark infringement. In other patent cases, there is only a 2 percent overlap between patent and trademark claims in the same case.

The report indicates that IP litigation in U.S. district courts is declining across the board. During 2016’s third quarter, U.S. district courts received a total of 1,127 new patent infringement suits. This was greater than the 960 patent infringement cases filed in the first quarter of this year but it was also the third smallest docket in a single quarter going back to the fourth quarter of 2011, before the terms of the America Invents Act (AIA) of 2011 went into effect. The third quarter of 2015 saw 1,114 patent litigation filed in U.S. courts, so three of the lowest quarters in terms of patent infringement filings since the AIA have come over the past 15 months.

The Olympic Games will draw the attention of the world under a banner of honest competition and camaraderie. However, many have accused the International Olympic Committee (IOC) and the United States Olympic Committee (USOC) of conduct not in keeping with the open spirit of the Olympic Games. In the run-up to the Olympics, companies have reported receiving cease and desist letters from the USOC. These letters claim that use of the USOC’s trademarks in social media posts infringe on the USOC’s federal rights.

During 2016’s second quarter, plaintiffs filed a total of 1,282 patent infringement cases in U.S. district court. This is a 33 percent increase in the 958 patent cases filed during the first quarter but data suggests that the second quarter tends to see the highest level of infringement cases over all other quarters according to Lex Machina data scientists Brian Howard. “We would expect a jump up from the first quarter,” he said. The first quarter was also a trough for patent infringement cases after last November’s massive number of 847 patent cases, just more than 100 cases less than the entire docket for this year’s first quarter. “The rise we’ve seen puts this year on track with 2011 or 2012 rather than the last two years,” Howard said.

The Lumbee Tribe’s lawsuit alleges trademark infringement, unfair competition, and deceptive trade practices for Anheuser-Busch’s use of the tribe’s HERITAGE, PRIDE & STRENGTH slogan and related logo design. According to the Complaint, Budweiser allegedly began using the tribe’s logo as early as 2004 and the HERITAGE, PRIDE & STRENGTH mark in 2015.

When looking at damages awarded in trademark infringement cases filed since 2005 and terminating between 2009 and 2016, fashion brands have taken in the highest award totals. The top spot here belongs to Parisian fashion brand Chanel, which has been awarded nearly $1 billion dollars from 160 infringement cases resulting in awards out of the 330 cases filed by Chanel. That’s almost double the $523 million awarded to Burberry Limited but its sibling Burberry Limited UK was awarded $416.6 million and those totals were awarded over the course of a combined 12 infringement cases. In terms of damage totals, there’s another steep drop to Gucci of Florence, Italy, which was awarded $207.7 million over the course of 26 cases.

As the world continues to grow and international trade on a multi-continent level has become the norm, protecting a company’s name is one of the most important things a company can do, regardless of their size or international standing. Due to what has become almost “organic” international growth for most companies, the use of trademarks owned by U.S. Companies within Europe has grown exponentially in the last 5 years. Consequently, the use of distribution licenses across Europe has also expanded massively.

The Federal Circuit affirmed. Undertaking an extensive analysis of the legislative history of Lanham Act damages, the Court attempted to explain a 1999 amendment inserting language regarding willfulness. Because the “willful violation” language appears to modify violations of § 1125(c) regarding dilution, Romag argued that the amendment negated any preexisting willfulness requirement for causes of action other than dilution. Relying heavily on Second Circuit precedent, which governed the district court decision, the Court disagreed.

Chicken Soup for the Soul Day is on November 12th. This is a day to sip on a nice piping hot bowl of soup and feel inspired. However, it’s also an opportunity to learn a little lesson on trademark infringement. In October 2012, Campbell Soup Company filed a trademark suit against Chicken Soup for the Soul Publishing LLC in New Jersey federal court for “willful trademark and trade dress infringement, false designation of origin, trade dress dilution, deceptive acts and practices, and unfair competition.” Campbell Soup Co. and Chicken Soup for the Soul Publishing LLC settled their trademark dispute, but the dispute provides a lesson for on how businesses can avoid trademark infringement issues.