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Trademark Litigation

The Trademark Litigation Committee considers the statutes, rules, regulations, and decisional law relating to or arising from litigation in federal and state courts in the United States that involves trademarks, trade names, or unfair competition affecting trade identity, as well as statutes, rules, regulations, and decisional law relating to or arising from such litigation in fora outside the U.S. that may affect U.S. companies, and makes recommendations to the Board of Directors in regard thereto.  The Trademark Litigation Committee also provides tools to trademark litigators. 

 
CASE SUMMARY REPORTS.  In advance of each AIPLA Stated Meeting, this committee publishes a report summarizing recent court decisions concerning issues relevant to trademark practitioners.  These reports are posted to our Committee Documents tab.
 
LEGAL STANDARDS PROJECT.  The Trademark Litigation Committee has also compiled cases from each regional circuit addressing instructional cases on notable legal standards that are often litigated in trademark cases.  To access this compilation, please see our Federal Circuit Map.
 
VOLUNTEERS.  If you want to get involved in the Trademark Litigation Committee, please email us.  We are always happy to have additional committee members participate in our initiatives.
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 Committee Announcements

 
  
Announcement Description
  

​Check out the latest 2017 updates to our Federal Circuit Map of Legal Standards in Trademark Cases!  

This resource provides circuit-specific information and updated case law on numerous topics that arise in trademark cases, including secondary meaning, likelihood of confusion, initial interest confusion, damages, laches, fair use, and much more.

 Kudos to Dean Eyler for coordinating this effort, and thanks to all who helped out by providing the updates​: Dean Eyler, Sean Garrison, Michael Lazzara, Jessica McDonald, Robert Pierce, and Roger Williams.



  

​A big thank you to Josh Partington for preparing a summary of the TTAB's public meeting, held September 25, 2017, to discuss the comments that had been received by the PTO from stakeholders, including AIPLA, regarding the proposed procedures for a streamlined cancellation procedure to address issues of abandonment and non-use.  Josh represented AIPLA at the public meeting and previously led the sub-committee that drafted the comments ultimately approved by the AIPLA Board and submitted to the PTO.  The summary can be viewed in the Committee Documents folder on the Trademark Litigation Committee site.

  

​Dial In Numbers

1-646-417-9965 (U.S.)

1-514-819-0355 (Canada)

+52 55 85261289 (Mexico)

Access Code: 48071985


Agenda


1.  Sub-Committee Updates and Volunteers Needed

          a.  Federal Circuit Map of Legal Standards – Updates  (Dean Eyler – Subcommittee Chair)

          b.  Jury Instructions (Jim Goggin – Subcommittee Chair)

          c.  Amicus Review Subcommittee – (Bart Rankin - Subcommittee Chair)

          d.  In re Tam Legislative Response Working Group (Sean Garrison) 

2.  Possible Joint CLE Program/Session with One or More of the International Committees on Trademark Enforcement in Foreign Jurisdictions (2018 MidWinter and/or Spring)

3.  San Diego – Who’s attending?  

          Reminder: Content and Branding Joint Meeting on Thursday at 3:30 with a panel on Fabric and Fashion and a reception to follow

4.  Open Discussion/Ideas for New Initiatives

5.  Next Committee Call:  Friday, June 9, 3:00 p.m. Eastern Time


  

The dial-in details and meeting agenda are as follows:

 Dial In Numbers

1-646-417-9965 (U.S.)

1-514-819-0355 (Canada)

 Access Code: 48071985

 Agenda

 1.  Sub-Committee Updates and Volunteers Needed

          a.  Federal Circuit Map of Legal Standards – Updates  (Dean Eyler – Subcommittee Chair)

          b.  Jury Instructions (Jim Goggin – Subcommittee Chair)

          c.  Amicus Review Subcommittee – (Bart Rankin - Subcommittee Chair)

          d.  In re Tam Legislative Response (Sean Garrison) – seeking interested volunteers to consider possible legislative and/or regulatory responses to the issue of disparaging marks in anticipation of the Supreme Court’s ruling in In Re Tam

 2.  AIPLA Designs Boot Camp Planning Committee seeking ideas for topics or speakers related to designs (Margaret Polson, mpolson@polsoniplaw.com)

 3.  New Case Decision(s) of Interest to Committee – open topic for committee members to report important cases of which they have become aware

 4.  Open Discussion/Ideas for New Initiatives

 5.  Next Committee Meeting:  Friday, April 14, 3:00 p.m. Eastern Time​

  

Dial In: 1-641-715-0861

Access Code: 182582#

 

Agenda

1. Introductions

 2. Subcommittees/Ongoing Projects

          a.  Federal Circuit Map of Legal Standards – Updates  (Dean Eyler  Subcommittee Chair)

          b.  Jury Instructions (Jim Goggin – Subcommittee Chair)

          c.  B&B Hardware Collateral Estoppel Chart (Sean Garrison)

          d.  Amicus Review Subcommittee – (Bart Rankin - Subcommitte Chair)

                    -Belmora v. Bayer A.G. (Flanax case)

                    -SunEarth, Inc., et al v. Sun Earth Solar Power Co., Ltd (Octane Fitness applied to Lanham                               Act)

 

          e.  Suggestions for other potential projects/subcommittees

                    - Sample Pleadings Updates?

                    -  Regional/Local Events?

                    -  Education & Event Planning?

                    -  Newletter

3.  Mid-Winter Institute February 1-4, 2017 in Ft. Lauderdale

 

4.  Open Discussion

 

5.  Next Call: January 13, 2017 3PM Eastern Time (Second Friday of the Month)​

  

​Sean Garrison of Bacal Andersen & Garrison Law Group has provided an update to the collateral estoppel chart. See attached.

  

Thanks to TM Lit committee member Sean Garrison​ of Bacal Andersen & Garrison Law Group (Scottsdale, AZ) for creating a chart to track subsequent citations to B&B Hardware on collateral estoppel to see how the trial courts are following it.  Please contact Sean directly (Sean.Garrison@bacalgroup.com) with any comments or cases to add.

Thank you, Sean!

  

Per Curiam Decision in BandB_Aug 27 2015.pdfPer Curiam Decision in BandB_Aug 27 2015.pdf

Per Curiam Decision in B&B Hardware, Inc. v. Hargis Industries, Inc. 135 S. Ct. 1293 (2015)

--August 25, 2015

On remand from the Supreme Court, the Eighth Circuit vacated the district court's judgment and remanded the case for further proceedings, including what remedies may be awarded for infringement. The court determined that the ordinary elements of issue preclusion had been met, and the usages of the mark adjudicated before the Trademark Trial and Appeal Board (TTAB) were materially the same as the usages before the district court. On remand the district court was directed to give preclusive effect to the decision of the TTAB on likelihood of confusion and also to reconsider the award of attorney's fees.

A pdf of the decision is attached above.


  

Many thanks to our Trademark Litigation Committee Volunteers who provided case summaries for 2015.  Check the link to Committee Documents for summaries of B&B Hardware, Hana Bank, Georgia Pacific Consumer Products, where you can also find summaries of recent TTAB opinions of note.

  
In an October 1, 2012 amicus brief, AIPLA argued to the Supreme Corut that a trademark plaintiff's covenant not to sue eliminated the Article III case or controversy jurisdction for the defendant's declaratory judgment counterclaim.
 
The Supreme Court held that a trademark plaintiff’s voluntary dismissal of its infringement suit, together with a covenant not to sue, removed the district court's Article III jurisdiction and barred its consideration of the defendant's counterclaim of trademark invalidity.  Already LLC v. Nike, Inc., U.S. No. 11-982, 1/9/2013.

For the full article, follow the link below.

http://www.aipla.org/resources/reports/2013/Pages/130109AIPLADireect.aspx

  

Thanks to all our volunteers for contributing to the initial 2012 Trademark Case Summary Report​ which is now available on our committee page.

  

​We are pleased to announce that our Federal Circuit Map of the various legal standards presented in trademark litigation cases is once again available on our committee page, including the 2010 updates.  You can view the various standards by circuit, such as the factors for determining a likelihood of confusion, laches, dilution and more.

  

The Department of Commerce released its Report to Congress entitled "Trademark Litigation Tactics and Federal Government Services to protect Trademarks and Prevent Counterfeiting," which is posted on the USPTO's site at http://www.uspto.gov/trademarks/notices/TrademarkLitigationStudy.pdf.

The report stems from the 2010, Congressional directive to conduct a study and report on (1) the extent to which small businesses may be harmed by litigation tactics the purpose of which is to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner, and (2) the best use of Federal Government services to protect trademarks and prevent counterfeiting.  ​