Trademarks & Unfair Competition Committee

Overview

The Trademarks & Unfair Competition Committee focuses on current trademark issues of interest to in-house counsel and law firm practitioners, including developments in the law, significant court decisions, and best practices. Recently, the Committee has discussed trends in keyword advertising, the viability of color marks, and top-level domain name registration. Committee meetings are a forum for members to exchange ideas, examine litigation strategies, and address topics relevant to the trademark bar.

Semi-Annual Report

Semi-Annual Report, March 2014 (PDF)
A Summary of Recent Case Law Developments July 2013 (PDF)

Chairs

Reports

News & Media

Of Interest

Trademark News & Noteworthy Cases

The U.S. District Court, N.D. Tex., granted summary judgment as to liability in favor of plaintiff Choice Hotels International, Inc., finding that Dallas hotelier Goldmark Hospitality, LLC had used Choice’s “Quality Suites” marks. The court denied the motion as to remedies. Decision here.
Topics: Lanham Act Section 32 (Infringement); Lanham Act Section 43 (False Designation of Origin); Lanham Act Section 45 (“use in commerce”).
The U.S. District Court, S.D. Fl., denied a motion to dismiss counterclaims asserted by Abercrombie & Fitch to cancel a trademark issued to Island Company LLC, a small clothing company based in Florida. Decision here.
Topics: Pleading fraud under FRCP 9(b); Pleading “intent to deceive” in claim for cancellation based on fraud; Pleading inability to function as a trademark.
In a precedential decision, the TTAB denied a motion by respondent Masimo Corporation to dismiss a petition filed by Covidien LP for partial cancellation or restriction of Masimo’s registration for a color trademark on the Supplemental Register (January 2014). Decision here.
Summary: Starbucks Episode VI: The Second Circuit’s Latest Decision in the CHARBUCKS Battle (PDF) - December 2013
The TTAB upheld the New York Yankees’ opposition to an application to register BASEBALLS EVIL EMPIRE for clothing. Decision here.
Topics: Lanham Act Section 2(d) Likelihood of Confusion; 2(a) Disparagement; 2(a) False Association
The Supreme Court ruled that Nike’s covenant not to sue mooted competitor’s challenge to trademark validity. Decision here.
Topics: Article III Case or Controversy; Lanham Act Section 43 Infringement; Lanham Act Section 37 Counterclaim

Reference

21st Century TM Basics from the Trademarks and Unfair Competition Committee
United States Patent and Trademark Office
Lanham Act from Legal Information Institute
The TTABlog

Semi-Annual Report

Semi-Annual Report, March 2014 (PDF)
A Summary of Recent Case Law Developments July 2013 (PDF)

Trademark News & Noteworthy Cases

The U.S. District Court, N.D. Tex., granted summary judgment as to liability in favor of plaintiff Choice Hotels International, Inc., finding that Dallas hotelier Goldmark Hospitality, LLC had used Choice’s “Quality Suites” marks. The court denied the motion as to remedies. Decision here.
Topics: Lanham Act Section 32 (Infringement); Lanham Act Section 43 (False Designation of Origin); Lanham Act Section 45 (“use in commerce”).
The U.S. District Court, S.D. Fl., denied a motion to dismiss counterclaims asserted by Abercrombie & Fitch to cancel a trademark issued to Island Company LLC, a small clothing company based in Florida. Decision here.
Topics: Pleading fraud under FRCP 9(b); Pleading “intent to deceive” in claim for cancellation based on fraud; Pleading inability to function as a trademark.
In a precedential decision, the TTAB denied a motion by respondent Masimo Corporation to dismiss a petition filed by Covidien LP for partial cancellation or restriction of Masimo’s registration for a color trademark on the Supplemental Register (January 2014). Decision here.
Summary: Starbucks Episode VI: The Second Circuit’s Latest Decision in the CHARBUCKS Battle (PDF) - December 2013
The TTAB upheld the New York Yankees’ opposition to an application to register BASEBALLS EVIL EMPIRE for clothing. Decision here.
Topics: Lanham Act Section 2(d) Likelihood of Confusion; 2(a) Disparagement; 2(a) False Association
The Supreme Court ruled that Nike’s covenant not to sue mooted competitor’s challenge to trademark validity. Decision here.
Topics: Article III Case or Controversy; Lanham Act Section 43 Infringement; Lanham Act Section 37 Counterclaim

Reference

21st Century TM Basics from the Trademarks and Unfair Competition Committee
United States Patent and Trademark Office
Lanham Act from Legal Information Institute
The TTABlog

Trademarks & Unfair Competition Committee

Semi-Annual Report

Trademark News & Noteworthy Cases

Reference

Trademark FAQs

What is a trademark?

What is a service mark?

What are “common law” rights?

Do I have to register my trademark?

What are the benefits of federal trademark registration?

When can I use of the designations "TM" or "SM" or ®?

Where can I conduct a trademark search for pending applications and federal registrations?

How long does a trademark registration last?

Is a federal registration valid outside of the United States?

Trademarks & Unfair Competition Committee

Semi-Annual Report

Trademark News & Noteworthy Cases

Reference

Trademark FAQs

What is a trademark?

What is a service mark?

What are “common law” rights?

Do I have to register my trademark?

What are the benefits of federal trademark registration?

When can I use of the designations "TM" or "SM" or ®?

Where can I conduct a trademark search for pending applications and federal registrations?

How long does a trademark registration last?

Is a federal registration valid outside of the United States?

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