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If competing trademarks convey the same idea, meaning or commercial impression, then they might be confusingly similar if used on the same goods. See, e.g., Proctor & Gamble Co. v. Conway, 419 F.2d 1332, 164 USPQ 301, 304 (CCPA 1970) (holding MISTER STAIN likely to be confused with MR. CLEAN on c...

“Foreign laws that block the production of discoverable material do not automatically excuse a party from its Rule 26 obligations.” Philips Medical Systems (Cleveland), Inc. v. Buan, No. 19 CV 2648, 2022 WL 602485, at *2 (N.D. Ill. Mar. 1, 2022); see also Société Nationale Industrielle Aérospatia...

In determining whether there is a likelihood of confusion between trademarks, two key factors are the similarity or dissimilarity of the marks and the goods or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); In re E. I. DuPont de Nemours & Co....

The “ordinary observer” test for design-patent infringement is as follows: [I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase o...

By definition, a trade secret is any valuable business information which is not widely known and must be protected to preserve its confidentiality. In business, trade secrets often create a competitive advantage. Unlike copyrights, trademarks, or patents, which are disclosed to the general public...

A preliminary injunction is an extraordinary remedy that requires showing:  a likelihood of success on the merits;  irreparable injury if the injunction is denied;  the threatened injury outweighs the injury the injunction would cause the party to be enjoined; and  the injunction would n...

Many private organizations develop and copyright technical standards for specific industries, and then generate revenue by selling copies. For example, the National Fire Protection Association (NFPA) develops standards addressing the prevention of fire, electrical, and related hazards. One such s...

In Apple Inc. v. Corephotonics Ltd., No. 22-1350, — F.4th — (Fed. Cir. Sept. 11, 2023), the Federal Circuit held that a typo in an expert report should not be case dispositive, especially where no party meaningfully raised the typo as relevant. The single typographical error made by Dr. Sasián...

For determining the obviousness of a claimed invention, qualified prior art is that which a person of ordinary skill in the art would look to if it is “analogous to the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1379 (Fed...

A deceptive trademark cannot be registered on either the Principal or Supplemental registers. 15 U.S.C. § 1052(a); 15 U.S.C. § 1091. Whether a trademark is deceptive is based on the identification of goods and/or services. See In re ALP of S. Beach Inc., 79 USPQ2d 1009, 1019 (TTAB 2006) (“Registr...

Adidas is the “official manufacturer of the jerseys worn on the ice by NHL players.” At least some of the NHL jerseys Adidas manufactures and sells are identified as “authentic.” The Northern District of New York has denied a motion to dismiss a class action under sections 349 and 350 of the New ...

Trade dress protects “the overall look of a product.” Ezaki Glico Kabushiki Kaisha v. Lotte Int'l Am. Corp., 986 F.3d 250, 255 (3d Cir. 2021) (internal quotation marks omitted). But trademark protection is not available for trade dress “that, as a whole, is functional.” 15 U.S.C. § 1052(e)(5). If...

In patent claim construction, the words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en...

There is no strict or bright-line rule against registration of fictious or fanciful characters. See, e.g., In re DC Comics, Inc., 689 F.2d 1042, 215 USPQ 394, 396 (CCPA 1982) (in a case involving drawings of superhero characters for toy dolls, court rejected the proposition that “a picture of a p...

There is no rule that different types of goods for motor vehicles are per se related. In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“The Board must decide each case on its own merits.”); see also H.D. Lee Co., Inc. v. Maidenform, Inc., 87 USPQ2d 1715,1723 (TTAB 2...

Section 407 of the Copyright Act states that “the owner of copyright or of the exclusive right of publication in a work published in the United States shall deposit, within three months after the date of such publication . . . two complete copies of the best edition” of the work. 17 U.S.C. § 407(...

Obviousness-type double patenting (“ODP”) is a judicially-created doctrine that has its roots in 35 U.S.C. § 101, which states that an inventor may obtain “a patent” (i.e., a single patent) for an invention. In re Lonardo, 119 F.3d 960, 965 (Fed. Cir. 1997). ODP “is intended to prevent a patentee...

Product copying can carry significant weight in the obviousness analysis. Objective evidence of nonobviousness for patentability includes: (1) commercial success, (2) copying, (3) industry praise, (4) skepticism, (5) long-felt but unsolved need, and (6) failure of others. See Transocean Offshore ...

Each class in a multi-class trademark application is, in effect, a separate application. Monster Energy Co. v. Tom & Martha LLC, 2021 USPQ2d 1197, at *11 n.15 (TTAB 2021) (“With multiple class applications, the Board treats each class as a single class application, and the claims and evidence are...

Although willfulness is not a necessary condition for awarding an infringer's profits under the Lanham Act for trademark infringement, it nonetheless “is a highly important consideration in determining whether an award of profits is appropriate.” Romag Fasteners, Inc. v. Fossil, Inc., 140 S. Ct. ...

Trademarks registered on the Supplemental Register can be cited by the U.S. Patent and Trademark Office under Section 2(d) to refuse registration of a subsequent mark that is “substantially identical” for goods and services that are “substantially similar.” In re Central Soya Co., Inc., 220 USPQ ...

Obviousness is a question of law based on underlying factual findings. In re NTP, Inc., 654 F.3d 1279, 1297 (Fed. Cir. 2011). On appeal, factual findings are reviewed for substantial evidence, while legal conclusions are reviewed de novo. Gen. Elec. Co. v. Raytheon Techs. Corp., 983 F.3d 1334, 13...

Anticipation requires that all of the limitations of the claim “arranged or combined in the same way as in the claim” is disclosed in the prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369–70 (Fed. Cir. 2008). When a prior art reference describes a genus and the challen...

The title of a single creative work, such as a single-title book, typically is not considered to be a source-identifying trademark. Herbko Int'l Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) (“This court's precedent . . . clearly holds that the title of a single ...

When a trademark licensor fails to supervise its licensee and allows the licensee to depart from the licensor's quality standards, it may be deemed “naked licensing” that results in abandonment of the trademark. Groucho's Franchise Sys., LLC v. Grouchy's Deli, Inc., 683 F. App′x 826, 830 (11th Ci...