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  • Fourth Circuit Affirms Decision Denying Timberland Trade Dress Registration For Its Signature Boot

    On April 15, 2024, the United States Court of Appeals for the Fourth Circuit affirmed a decision by the Eastern District of Virginia finding that (i) a trademark applicant’s applied-for design was functional and therefore unregistrable and (ii) applicant failed to establish the acquired distinctiveness required for trade dress registrability. TBL Licensing, LLC v. Vidal, No. 23-1150, 2024 WL 1609096 (4th Cir. Apr. 15, 2024).

    Category : Trademark
  • Federal Circuit Reverses Fees Award For Failure To Meet The Threshold For Exceptional Case

    On June 8, 2020, the Court of Appeals for the Federal Circuit (CAFC) reversed an order of the United States District Court for the Central District of California (CDCA) awarding fees under 35 U.S.C. § 285 and 15 U.S.C. § 1117(a).  Munchkin, Inc. v. Luv N’ Care, Ltd., No. 2019-1454, __ F.3d __ (Fed. Cir. Jun. 8, 2020).  The CAFC found that the CDCA abused its discretion because the facts relied upon by the movant did not support a determination that plaintiff acted unreasonably in bringing and maintaining its case.
  • Federal Circuit Construes “Use In Commerce” Requirement Of Federal Trademark Infringement

    On April 19, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a decision of the U.S. District Court for the District of Oregon.  Versatop Support Sys. v. Georgia Expo, Inc., —F.3d—, (Fed. Cir. April 19, 2019).  The CAFC ruled that the district court had incorrectly found no infringement based on the “use in commerce” requirement of the Lanham Act.
    Category : Trademark
  • Federal Circuit Vacates And Remands Trademark Trial And Appeal Board Likelihood-Of-Confusion Ruling For Failure To Consider Relevant Evidence And Argument Concerning DuPont Factor 8

    On Monday, January 14, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding a decision by the Trademark Trial and Appeal Board (“TTAB”) refusing to register a design mark based on likelihood of confusion.   In re Guild Mortgage Co., —F.3—, (Fed. Cir. January 14, 2019).  The CAFC ruled that the TTAB failed to consider the relevant evidence and argument directed to DuPont factor 8.
  • Federal Circuit Clarifies Secondary Meaning And Infringement Tests For Trade Dress

    On October 30, 2018, the Court of Appeals for the Federal Circuit issued an opinion vacating an earlier decision from the International Trade Commission (“ITC”) regarding a shoe company’s (the “Company”) trademark in its All Star shoes trade dress.  Converse, Inc. v. Int’l Trade Comm’n, —F.3d—, (Fed. Cir. October 20, 2018).  The Court held that the presumption of secondary meaning that applies to registered marks does not apply before the registration.  The Court also clarified the considerations to be assessed in determining whether a mark has acquired secondary meaning. 
    Categories : ITCPTABTrademark
  • District Court Dismisses Trade-Dress Complaint On Multiple Grounds 

    ​On February 22, 2018, the United States District Court for the Eastern District of New York dismissed a trade-dress complaint with prejudice on the grounds that the complaint failed to identify the features of the claimed trade dress, failed to plead that any features are non-functional, and failed to plead a likelihood of confusion.  Eliya Inc. v. Steve Madden, Ltd., No. 2:15-CV-1272 (E.D.N.Y. Feb. 22, 2018).  In its already-amended complaint, plaintiff Eliya asserted product-configuration-type trade-dress rights under the Lanham Act in features of three of its shoe models, and claimed that defendant Steve Madden had infringed on those rights. Steve Madden moved to dismiss the complaint for failure to state a claim; a magistrate judge entered a report and recommendation to grant the motion; and the district judge adopted the recommendation, dismissing the complaint with prejudice.   The opinion illustrates the importance of making a detailed, fully articulated pleading when asserting product-configuration trade-dress rights.

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