by On May 6, 2010, the Ninth Circuit issued its opinion in the case Au-Tomotive Gold Inc. v. Volkswagen of America, Inc., et al. in which it decided the issue of whether the sale of marquee license plates bearing Volkswagen badges that Au-Tomotive Gold (“Auto Gold”) had purchased from a Volkswagen dealer constituted trademark infringement or whether the sale of the plates was protected by the “first sale” doctrine. Continue Reading Auto Gold: Trademark Infringement and the “First Sale” Doctrine
Patent Minefield Now a Risk for Trademark Owners
by Matt Massari
Patent lawyers have understood the consequences of sending a cease and desist letter to a potential infringer since the Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). After MedImmune, a party contemplating sending such a letter risks that the recipient may file for a declaratory judgment in their own jurisdiction. This may require the sender to appear in a distant court, at their own expense. Thus, the patent owner must be very careful when communicating with possible infringers. Several recent decisions have applied the MedImmune standard for declaratory judgment jurisdiction to trademark controversies, making it difficult for trademark lawyers to avoid exposure to a declaratory judgment action after contacting a potential infringer. Continue Reading Patent Minefield Now a Risk for Trademark Owners
Tiffany v. eBay, Revisited
by The United States Court of Appeals for the Second Circuit issued an opinion on April 1, 2010 that provides a compass for companies like eBay to navigate the murky waters of trademark infringement in the e-commerce marketplace. Tiffany & Co. v. eBay Inc., No. 08- 3947 (2d Cir. April 1, 2010)Continue Reading Tiffany v. eBay, Revisited
Is “ML” Confusingly Similar To “ML”?
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Mighty Leaf Tea sought to register the mark “ML” in standard character form to market, not tea, but rather personal care products and skin care products, including skin soap, body wash, foam bath, body lotion, body scrub, bath salts, massage oils, potpourri, and incense. It filed its application with the United States Patent and Trademark Office on July 2, 2007, claiming first use in November of 2004. The USPTO denied the application, however, because it found a likelihood of confusion with the mark “ML MARK LEES,” which had previously been registered for “skin care products, namely skin cleanser, skin toner, skin cream, skin lotion, skin mask gel, make-up foundation, powder and blush.” Continue Reading Is “ML” Confusingly Similar To “ML”?
Establishing Trademark Rights Before Using Your Mark In Commerce
by United States trademark law provides for the filing of trademark applications to protect (or reserve) trademarks which are not yet actually in use in commerce. The law will allow for filing of a trademark application, with the benefit of constructive use and priority, based upon the
Applicant’s “bona fide intent to use” a mark. The question then becomes what constitutes “bona fide intent to use a mark?”Continue Reading Establishing Trademark Rights Before Using Your Mark In Commerce