Market Insight

Updates from an international team of correspondents who report on recent developments in trademark law and practice in their home jurisdictions, as well as strategic issues and those relating to brand protection, portfolio management and value creation.

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16 NOVEMBER 2023

Federal Circuit rules that fraud after registration is not a basis for cancellation

The TTAB’s power to dismiss registered trademarks under Section 14 of the Lanham Act has been called into question in a dispute over fraudulently obtained registrations.

09 NOVEMBER 2023

Fifth Circuit finds that gun manufacturer lawsuit did not toll prescriptive period

A recent spat between two competing gun manufacturers over the trademarked appearance of a barrel has highlighted timing issues relating to the statute of limitations, as well as restrictions and complications of involving a sister company.

02 NOVEMBER 2023

Sixth Circuit sheds light on degree of similarity necessary for competing marks

A recent dispute between two competing children’s clothing companies has shed light on how similar trademarks must be for infringement claims to proceed.

26 OCTOBER 2023

Tenth Circuit rules no likelihood of confusion in Jägermeister dispute

In a trademark suit against Jägermeister, the court affirmed the decision that no infringement had taken place. While the word at issue was being used in advertising by both parties, the difference between the products was sufficient for the claim to be dismissed.

19 OCTOBER 2023

Grubhub relishes victory against preliminary injunction

Consumer confusion theory functioned in favour of food-delivery service Grubhub, acquired by Just Eat in 2021, in a trademark infringement dispute over logo similarity.

12 OCTOBER 2023

Impossible Burger spat highlights issues of personal jurisdiction

Jurisdiction can be challenging to navigate in cases that involve multiple locations. The Ninth Circuit has now shed helpful light on the criteria that must be met for a court to establish jurisdiction over a non-resident defendant in a trademark infringement case.

05 OCTOBER 2023

Third Circuit deems candy shape and colour functional and unprotectable

Well-known sweet manufacturer Haribo has prevailed in an infringement dispute, relying on consumer common sense. The case sheds light on the role of functionality in trademark ownership and how two products can be found not to encroach on one another’s marks despite great similarity between them.


Fifth Circuit holds that notice alone is sufficient for preliminary injunction

In a deep dive into the intricate area of preliminary injunctions, the Fifth Circuit has shed valuable light on the details of proper jurisdiction to issue such a motion. The finding is the latest twist in a trademark dispute involving the manufacturer of the well-known KitchenAid.


Appeal court finds prior settlement does not impact future trademark licensees

The 11th Circuit has allowed a trademark licensee to bring a claim for unfair competition, despite a lack of authorisation in the licensing agreement. The court held that a previous agreement not to sue did not restrict the future licensees’ ability to take legal action against one another.


Nothing lost in translation: book’s Spanish version is not a different creative work

Douglas Wood’s bid to register the titles of his English life guide and its Spanish translation has been rejected by the TTAB. The board maintained that the book and its translation were versions of the same work, not a series – and thus ineligible for trademark protection.


Fourth Circuit affirms that disgorgement of profits is an appropriate remedy for breach of contract

Addressing the breach of a confidential settlement agreement, the Fourth Circuit has upheld a district court’s summary judgment rulings in a real estate trademark dispute, agreeing on all six likelihood-of-confusion factors.

31 AUGUST 2023

Sixth Circuit defines criteria for assessing profits awards in restaurant dispute

In analysing a profits award, the Sixth Circuit held that several key factors should be considered, such as the defendant’s intent to deceive, whether sales were diverted and palming off, among many others. In light of such criteria, it upheld the district court’s award of profits, costs and attorneys’ fees.

24 AUGUST 2023

Covenant not to sue leads to Fifth Circuit reversal of district court invalidity finding

Explaining that the onus was on the plaintiff to show that it engaged in activities not covered by the covenant not to sue, the Fifth Circuit has found that the district court committed two errors in its summary judgment grant in a case involving a trademark invalidation claim and vacated its final judgment.

17 AUGUST 2023

Brandy Melville fails to secure permanent injunction in Ninth Circuit’s first ever contributory infringement ruling

Parties looking to sue online marketplaces for contributory trademark infringement should be prepared to demonstrate that marketplace’s knowledge of specific instances of infringement.

10 AUGUST 2023

Appeal court ruling outlines how to prove substantial differences between markets

In an education dispute, the 10th Circuit emphasised that establishing separate markets and detailing specific services for rights holders utilising a mark that closely resembles another in the same industry is critical.

03 AUGUST 2023

Federal Circuit ruling emphasises influence of DuPont factors when evaluating similar marks

In reversing and remanding a TTAB decision, an appeal court has reaffirmed that carefully and accurately applying DuPont factors is critical in disputes involving similar registered and unregistered trademarks.

27 JULY 2023

Ninth Circuit defines personal jurisdiction in interactive website dispute

In Herbal Brands, the Court of Appeals held that if a defendant sells a physical product via an interactive website and causes that product to be delivered to the forum, the exercise of personal jurisdiction may be appropriate.

20 JULY 2023

Fourth Circuit vacates district court’s injunctive relief ruling due to FRCP misapplication

The Federal Court of Appeals has reinforced the importance of properly applying criteria from the Federal Rules of Civil Procedure when reviewing a party’s request for injunctive relief.

13 JULY 2023

Ninth Circuit rulings separate subjective opinions from verifiably false statements under Lanham Act

Following a complex series of decisions in a cybersecurity dispute, a federal court of appeals has unpicked the differences between subjectivity and objectivity in advertising.

06 JULY 2023

TTAB rules unique building designs can acquire trade dress protection

The tribunal has highlighted the importance of proving a design’s inherent distinctiveness with concrete evidence when pursuing protected trade dress status.

29 JUNE 2023

TRUMP TOO SMALL heads to Supreme Court for free speech review

The Supreme Court is to take a closer look at whether the USPTO’s refusal to register a mark related to the former president under the Lanham Act violates the First Amendment.

22 JUNE 2023

Copyright infringers could be held liable under the Lanham Act following furniture dispute

The Ninth Circuit’s appeal court has confirmed that liability under the Copyright Act and Lanham Act are not mutually exclusive, which is particularly pertinent in regard to trade dress damages.

08 JUNE 2023

Sixth Circuit ruling emphasises impact of alternative designs on assessing trade dress functionality

In reversing and remanding a district court’s decision, an appeal court has highlighted the critical role that an alternative design can play in helping a rights holder prove that its trade dress is non-functional and thus entitled to protection from infringers.

25 MAY 2023

Federal Circuit ruling demonstrates Dupont factors’ impact on evaluation of similar marks

In affirming a TTAB refusal, an appeal court has promoted the application of the 13 Dupont factors in cases involving substantial similarity between registered and unregistered marks.

11 MAY 2023

Successful MLBPA trademark suit shines spotlight on priority of use and likelihood of confusion

In its ruling on MLBPA trademark oppositions made on behalf of New York Yankees star player Aaron Judge, the TTAB has analysed key factors establishing priority of use and employed the Dupont factors to assess the likelihood of confusion caused by the relevant marks.

27 APRIL 2023

Federal Circuit ruling against Apple demonstrates limits of trademark tacking

In its reversal of a TTAB decision, an appeal court has reaffirmed the need for rights holders to demonstrate that their pre-existing mark covers all services specified in their new application in order to tack the latter’s use to the former’s earlier priority date.

20 APRIL 2023

TTAB clarifies test to meet “goods in trade” registration requirement in New York Times case

In reversing an examining attorney’s refusal of trademark registrations by the New York Times, the TTAB has promoted the three-factor test as the gold standard for registrability.

06 APRIL 2023

Fifth Circuit ruling proves charter schools are not immune from trademark suits

In its judgment of a trademark infringement appeal, an appeal court has leaned on the pre-established Clark factors to clarify charter schools’ access to sovereign immunity and the IP protections it traditionally provides public schools.

30 MARCH 2023

Fourth Circuit provides welcome clarity on certification marks in Gruyere ruling

While the applicants for GRUYERE believed that the term should be used only to label cheese produced in the Gruyère region, the court held that it is a generic term for consumers and encouraged the USPTO and courts to look to FDA regulations as evidence in future disputes.

16 MARCH 2023

How the metaverse and NFTs might impact IP protection in 2023

Pivotal cases involving major international brands such as Hermès and Nike are coinciding with evolving USPTO enforcement strategies to shake up the IP landscape for US brand owners in the metaverse and NFT spaces.

09 MARCH 2023

Key trademark and copyright developments shape 2023 US outlook

Several key updates in 2022 are helping the USPTO and the US Copyright Office to make great strides in their joint mission to clear the path to IP protection – particularly with regard to taking actions against fraudulent filings and shortening the application process.

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