Fashion Law in New York City – February 10, 2017

I’ll be participating in the 2017 Federal Bar Association Fashion Law Seminar in New York on February 10th at the New School. My panel will surely rock: Litigating a Brand: The Dual Perspective of In-House and Outside Counsel Panelists will highlight the latest trademark cases that impact fashion brands, both from a federal courts perspective and from the Trademark Trial and Appeal Board (TTAB).  Panelists will provide insight into litigation strategies and management of outside counsel by a brand’s in house counsel.  Moderator: Olivera Medenica, Medenica Law PLLC Rita Odin, Vice President and Senior Trademark Counsel, The Estee Lauder Companies Inc….

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Vintage PTO “fraud”?

Originally posted 2014-07-09 21:49:45. Republished by Blog Post PromoterThe TTABlog® almost breathlessly — and, quite understandably, considering — links to Seattle Trademark Lawyer, who reports on a case,  One True Vine, LLC v. The Wine Group LLC, just now being uncorked in a California District Court that could well answer a lot of the questions about application of the new “fraud on the PTO” legal standards to an old, familiar fact pattern: This factual situation looks a lot like the facts in Medinol v. Neuro Vasx: two listed items in the identification of goods, use on only one of the two,... Read more


And once again, resistance to Eriq Gardner is futile — his piece, linked to in the tweet embedded below, tells the whole story with his characteristically lucid prose and complete grasp of the legal issues in this hot decision out of the Central District of California: Resistance is futile. Paramount v. Axanar Star Trek copyright case heads to jury; judge rejects fair use defense — Mike Madison (@profmadison) January 4, 2017 But fair use still lives here!  So while you have to read Eriq’s piece to really get this story about a would-be fan-fiction “prequel” that seems pretty clearly to have gone... Read more

Trademark rights in interdigitization

Originally posted 2012-04-09 17:37:17. Republished by Blog Post PromoterNick Daly drops me a note to the effect that one Jay-Z, gazillionaire rhyming scatologist, has been sued by a professional perspirer and leaping stage goon called Diamond Dallas Page — ach! my kingdom for a stage name! — for the former’s “Roc-A-Fella Hand Gesture,” also known as the “Diamond Cutter” hand gesture. Evidently Mr. Z uses the former, Mr. Page the latter of these nicknames for the clever manipulation of the human carpal, metacarpal and phalange bones in a distinctive diamond-shaped pattern in association with the services provided by the respective performers.... Read more

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