The Ninth Circuit Court of Appeals issued an opinion last week that, while not necessarily controversial or new, serves as a good reminder for trademark litigators: There must be actual infringement to prevail in a trademark infringement lawsuit. While this would seem to be obvious, the Ninth Circuit thought it was an important enough reminder to actually publish the decision, and even more surprisingly, issued their unanimous opinion just over a month after oral argument.Continue Reading Disparage At Will, Just Don’t Infringe – The Message From The Ninth Circuit In Freecycle
Experts and Summary Judgment
Intellectual property litigation relies heavily upon the use of expert testimony. The Ninth Circuit Court of Appeals recently analyzed the intersection of Federal Rules of Evidence, Rule 702 and the ruling in Daubert v. Merrill Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993) (“Daubert”) concerning the admissibility of expert testimony and Federal Rules of Civil Procedure, Rule 56 for summary judgment. Stillwell v. Smith & Nephew, Inc., 482 F.3d 1187 (9th Cir. 2007). Admissibility of expert testimony must be carefully evaluated for reliability and helpfulness, but that is different than the analysis for whether a triable issue of fact is established.
Act Now! – Or Lose Your Trade Dress Infringement Claim
In Magic Kitchen LLC v. Good Things International Ltd., et al., the California Court of Appeal (Second App. Dist., July 30, 2007) was confronted with the issue of whether to apply the statute of limitations or the equitable doctrine of laches to determine whether plaintiffs’ claims for trade dress infringement were barred as a matter of law. The Court held that it was unnecessary to address the split of authority on the issue because it found that plaintiffs’ claims for trade dress infringement were barred by the doctrine of laches. The Court affirmed the trial court’s entry of a directed verdict against plaintiffs as to these claims. Continue Reading Act Now! – Or Lose Your Trade Dress Infringement Claim
Host A Website And Get Sued For Trademark Infringement – Possible Under California’s Model Trademark Law.
By Scott Hervey
According to the Department of Commerce, losses to U.S. businesses from the counterfeiting of trademarked consumer products are estimated at $200 billion a year. A model trademark law proposed by the International Trademark Association and currently winding its way through the legislative process in California includes a provision which appears to be an attempt to slow this ever growing enterprise.
The proposed new trademark law provides that the owner of a state registered mark may bring an action for infringement against any persons that “knowingly facilitate, enable, or otherwise assist a person to manufacture, use, distribute, display, or sell any goods or services bearing any reproduction, counterfeit, copy, or colorable imitation of a mark registered under this chapter, without the consent of the registrant.” Under the new trademark law, a person is presumed to have acted knowingly if that person continues to engage in the complained of activity following delivery and receipt of a cease and desist demand letter containing certain language and information. Continue Reading Host A Website And Get Sued For Trademark Infringement – Possible Under California’s Model Trademark Law.
Trademark Infringement: Factors Considered in Consumer Confusion
By 
Jeff Pietsch
Earlier this month, the shoe company Skechers defeated a preliminary injunction brought by the shoe company ASICS. The injunction against Skechers sought to prevent Skechers from making and selling their shoes. ASICS brought this action against Skechers for trademark infringement claiming that Skechers hijacked the ASICS brand image and goodwill by using a similar stripe mark that ASICS has used on its shoes over its 40 year history. The two shoes both use a stripe mark, but the ASICS shoe uses two horizontal stripes while the Skecher shoe has only one stripe. The court found that the design of these shoes were dissimilar and would not likely create consumer confusion. Since ASICS was not likely to succeed in its trademark infringement action, the court denied the injunction against Skechers. This case is just a sampling of the many trademark infringement claims that are brought in court each month. The purpose of this article is to examine the test that courts use to determine if trademark infringement exists.Continue Reading Trademark Infringement: Factors Considered in Consumer Confusion