Best of 2011: Ninth Circuit. Keywords. Trademarks. Hike!

Originally posted 2011-12-21 08:40:46. Republished by Blog Post PromoterFirst posted on March 11, 2011. Here’s a roundup of what other people are saying about the decision in Network Automation, Inc. v. Advanced System Concepts, Inc. involving keyword advertising using other folks’ trademarks (a form of the dreaded “diversion“!) and perhaps implicating secondary liability for trademark infringement: Marty Schwimmer:  “‘Forget it Jake, It’s the Ninth Circuit’ – I’m stealing that joke from Prof Tushnet’s critique of the Network Automation keyword case.  I agree with much of her analysis, however I disagree  with her (and this panel’s) view of channels of trade as a LoC…

Read more

Swine of iron

Originally posted 2006-11-17 14:01:11. Republished by Blog Post PromoterIt’s certainly interesting to see what trademarks people are ready to rumble over.  Hat tip to Jaymaster from Dean’s World. Read more

Secondary Trademark Infringement Book

Secondary trademark liability and false advertising

This year’s supplement features the Eleventh Circuit’s decision in Duty Free Americas, Inc. v. Estee Lauder Cos. (DFA)[1], another in a growing body of cases to extend contributory liability doctrine beyond the traditional trademark infringement context. In the years since the Supreme Court decided Inwood Labs.[2], courts have generally been predisposed to consider, if not formally recognize, contributory claims across the spectrum of Lanham Act violations.[3] Their basic reasoning has been that all trademark-based claims lend themselves to contributory causes of action because they derive from common-law torts of unfair competition.[4] In DFA, the court expanded on that reasoning when... Read more

USPTO files application for extension of time for cert in In re Tam (UPDATED)

Originally posted 2016-03-09 17:40:23. Republished by Blog Post PromoterThis post has been updated considerably to reflect related events, which were reported elsewhere, including this thorough rundown at the World Trademark Review, which quotes interesting commentary by our friend and blogger colleague John Welch, who makes the same point at his own TTABlog here concerning the issue of whether an appellate court’s mandate can, upon application by a party, be “recalled.” The original subject matter of this post had been the PTO’s motion for an extension of time to seek a writ of certiorari from the Supreme Court in In re Tam.  For readers’ convenience... Read more

Knock, knock!

Originally posted 2010-06-08 15:23:54. Republished by Blog Post Promoter Knock, knock! Who’s there! Your knockoff! I knockoff who? You knockoff yourself! No, don’t worry — it’s not so bad that LIKELIHOOD OF CONFUSION® is about to invite you to play Mafia Wars.  (Or something like it.)  No, rather, it’s like this, as Susan Scafidi explains: Smart creators, whether in IP-protected fields or not, have a few more tools in the box and tricks up their sleeves, including one that I’ve frequently discussed:  Knock yourself off — before the other guys do! In the fashion industry, those auto-knockoffs are more elegantly... Read more


Originally posted 2014-12-17 14:54:21. Republished by Blog Post Promoter Welcome to Blawg Review.  Cold, rainy, prematurely wintry greetings from metropolitan New York. No exclamation point.  It has been that kind of year, it seems.  Nothing depressing about it, or it shouldn’t be.  That’s just life, and in particular that’s the way life feels at that dreary moment when you’re living it clustered around the winter solstice. And if I were perkily to emit that Hanukkah, the festival of rededication, is “all about” pulling oneself up by one’s bootstraps in the face of dread and gloom, for of course a little light... Read more

Trademark “use in interstate commerce” and the decline of federalism (Best of 2016)

Originally posted December 17, 2016.What’s the use? Trademark use, that is.  Heck, it’s getting harder to figure out what’s not “trademark use” these days, as John Welch reports: The CAFC reversed the TTAB’s decision in adidas AG v. Christian Faith Fellowship Church, Cancellation No. 92053314 (September 14, 2014) [not precedential], ruling that the sale of two hats at the Church’s bookstore to an out-of-state purchaser constituted use in commerce of applicant’s mark ADD A ZERO. The Board had granted the petition of adidas AG for cancellation of two registrations owned by the Christian Faith Fellowship Church for the mark ADD... Read more

More sports rent seeking from the hallowed halls of — oh, heck, it’s Alabama we’re talking about

Originally posted 2006-11-12 19:43:17. Republished by Blog Post Promoter Imagine a university claiming not only trademark rights in all “depictions” of its NCAA paid giant freak entertainment troupe Division IA football team? That would be almost as bad as a threat based on IP infringement to sue over depictions, basically graphic complaints, about another team — in fact, rival Arkansas’s — controversial coach. And imagine if that coach’s name were Houston Nutt? Just to make it interesting. Read more

It’s not a popularity contest (updated)

And the “popular vote” most certainly counts for nothing. Having said that, here’s the raw tally of amicus merits briefs — pro-, con- and meh- — in Lee v. Tam, courtesy of the American Bar Association: For those not keeping score at home, the totals suggested by the above (four supporting the PTO; 14 19 [see below — RDC] supporting Simon Tam and The Slants; and eight assorted varieties of neutral) are the number of briefs, not the number of amici, such as it is.  In other words, some briefs have been filed on behalf of more than one entity or... Read more