Blog

“The test for determining whether a term is primarily geographically descriptive is whether (1) the primary significance of the term in the mark sought to be registered is the name of a place generally known to the public, (2) the goods or services originate in the place identified in the mark; a...

Under the doctrine of claim preclusion, also known as res judicata, “a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based on the same cause of action.” Acumed LLC v. Stryker Corp., 525 F.3d 1319, 1323 (Fed. Cir. 2008). Under Seventh Circuit...

In Abirton Austria GmbH v. Hetronic Int'l, Inc., No. 21-1043, 600 U.S. ___ (Jun. 29, 2023), the U.S. Supreme Court ruled that 15 U.S.C. §1114(1)(a) and §1125(a)(1) of the Lanham Act “are not extraterritorial and that they extend only to claims where the claimed infringing use in commerce is domes...

To demonstrate that a representation was false or misleading, a plaintiff must show that it was either “literally false, either on its face or by necessary implication” or that it was “literally true but likely to mislead or confuse customers.” Southland Sod Farms v. Stover Seed Co., 108 F.3d 113...

Though a patent specification need not always “describe with particularity how to make and use every single embodiment within a claimed class,” it must nevertheless “enable the full scope of the invention as defined by its claims,” for example by “disclosing [a] general quality” of the class that...

“People may be joint inventors even though they do not physically work on the invention together or at the same time, and even though each does not make the same type or amount of contribution.” Falana v. Kent State Univ., 669 F.3d 1349, 1357 (Fed. Cir. 2012). “The interplay between conception an...

In Jason Scott Collection, Inc. v. Trendily Furniture, LLC, No. 21-16978, — F.4th — (9th Cir. May 30, 2023), the Ninth Circuit recently reiterated that copyright and trademark claims are not mutually exclusive. See, e.g., Wal-Mart Stores v. Samara Bros., 529 U.S. 205, 208 (2000) (involving claims...

The existence of third-party registrations for similar goods or services can bear on a mark's conceptual strength. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1339 (Fed. Cir. 2015). Specifically, third-party registrations containing an element that is common to both the opposer's and...

Sometimes an artist's name may “simply identify the source of the performance contained on the record,” which is not enough to establish that the artist's name functions as a mark for the recording. In re Polar Music Int'l AB, 714 F.2d 1567, 221 USPQ 315, 318 (Fed. Cir. 1983); see also In re Spir...

A trade secret must derive independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use. 18 U.S.C. § 1839(3)(B). Also, a trade secret must be the s...

In a shipment contract, a seller is required to ship goods by carrier, but not required to deliver the goods at a particular destination, and the risk of loss passes to the buyer when the seller duly tenders them to the carrier. UCC § 2-509(1)(a). In a destination contract, however, the seller is...

Whether personal jurisdiction can be established through “test buys” or strawman sales may depend on the district in which those purchases were made. California. In California, a defendant's online sales to a national marketplace do not constitute the kind of California-focused conduct necessary ...

PTAB procedure prohibits incorporating arguments by reference from one document into another during an IPR. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document. Combined motions, oppositions, replies, or other combined documents are...

The “abstraction-filtration-comparison” test determines what “unprotected material should be disregarded when comparing two works” for substantial similarity in copyright infringement. Compulife Software Inc. v. Newman, 959 F.3d 1288, 1303 (11th Cir. 2020); Bateman v. Mnemonics, Inc., 79 F.3d 153...

Section 230 of the Communications Decency Act (the “CDA”), 47 U.S.C. § 230, states that “[n]o provider . . . of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.” 47 U.S.C. § 230(c)(1). Subject to cert...

Under Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), the First Amendment may preclude an infringement claim against an “expressive work” unless the accused use is either (1) not artistically relevant to the underlying work or (2) explicitly misleads consumers as to the source or content of the ...

Hotel building designs are akin to the packaging of what is being rendered and sold inside, namely, hotel services; thus, constituting trade dress for such services. In re Palacio Del Rio, Inc., Ser. Nos. 88412764 and 88437801, __ USPQ2d __ (TTAB May 25, 2023); see also In re Seminole Tribe of Fl...

A product's design is not inherently distinctive, but a product's packaging can be inherently distinctive. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081, 1083 (1992); Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000). In Two Pesos, the U.S. ...

Trademark law prohibits registration of “any matter that, as a whole, is functional.” 15 U.S.C. § 1052(e)(5). “A product design or a product feature is considered functional in a utilitarian sense if: (1) it is ‘essential to the use or purpose of the article,' or (2) it ‘affects the cost or quali...

Evidence of actual confusion is “often the best evidence of a likelihood of confusion.” King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1092 (10th Cir. 1999); Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1265 (9th Cir. 2001). But isolated instances of actual con...

To find a likelihood of confusion, the respective goods and services need not be identical or even competitive. But there still must be evidence in the record that the goods and services are related. Or that they are marketed in a manner that could give rise to the mistaken belief that they emana...

Finding a likelihood of confusion with the registered CLAIM WATCH and Design mark for “Tracking and monitoring the status of insurance claims for business purposes”; the USPTO had refused to register CLAIM WATCHER for “Health benefit plan services, namely, insurance administration services, namel...

The patent “bargain” describes the exchange that takes place when an inventor receives a limited term of “protection from competitive exploitation” in exchange for bringing “new designs and technologies into the public domain through disclosure” for the benefit of all. Bonito Boats, Inc. v. Thund...

In a 7-2 decision, the U.S. Supreme Court affirmed in Andy Warhol Foundation for Visual Arts, Inc. v. Goldsmith, No. 21-869, __ U.S. __ (May 18, 2023), that the first fair use factor, namely, “the purpose and character of the use” under 17 U.S.C. § 107(1), favored the photographer over the artist...

To find a likelihood of confusion, the goods and services need not be identical or even competitive. Rather, the question is whether the goods and services are marketed in a manner that “could give rise to the mistaken belief that [the] goods emanate from the same source.” Coach Services Inc. v. ...