On Aug. 4, the Ninth Circuit vacated the Arizona district court’s permanent injunction against VIP’s Bad Spaniels dog toy and directed entry of judgment in VIP’s favor on Jack Daniel’s dilution-by-tarnishment claim. The decision follows the U.S. Supreme Court’s 2023 ruling that parody is not categorically exempt from trademark claims when the accused use also functions as a source identifier.

The Bad Spaniels toy at issue closely resembles the appearance of a Jack Daniel’s whiskey bottle while replacing key elements with humorous references, including Bad Spaniels, Old No. 2, 43% Poo By Vol. and 100% SMELLY. Although the Supreme Court rejected application of the Rogers test because VIP was using the design as a trademark for its own product, it left the merits of the infringement and dilution claims for the lower courts to decide.

On remand, the district court again found dilution by tarnishment. The Ninth Circuit disagreed.

Association Alone Is Not Tarnishment

The Ninth Circuit emphasized that creating an association with a famous mark is only the starting point for a tarnishment claim. A plaintiff must go further and show that the association is likely to harm the famous mark’s reputation.

Jack Daniel’s relied heavily on expert testimony suggesting consumers generally react negatively when food or beverage products are associated with bathroom humor. The court found that evidence insufficient because it did not address whether consumers encountering the Bad Spaniels toy were likely to think less of the Jack Daniel’s brand as a result.

Parody Still Matters

Although parody no longer provides an automatic shield where the accused use functions as a trademark, the Ninth Circuit reaffirmed that parody remains highly relevant to the merits analysis.

A successful parody simultaneously evokes the original brand while also signaling that it is not the original. According to the court, that second message can reduce the likelihood that consumers will perceive the use as harming the reputation of the famous mark. Because Bad Spaniels was an obvious joke, the court found that Jack Daniel’s had failed to show likely reputational injury.

Fame Must Be Proven Mark by Mark

Another important aspect of the decision is the court’s holding that fame must be analyzed separately for each asserted mark. Jack Daniel’s successfully established fame for the JACK DANIEL’S word mark and its bottle trade dress, but the court stated it failed to prove that OLD NO. 7 independently qualified as a famous mark under the federal dilution statute.

Practice Pointers for Brand Owners

• Audit your portfolio and identify which marks can be proven “famous” under the federal dilution statute.
• Do not assume that fame in a house mark extends to taglines, sub-brands, product names or packaging elements.
• Develop product-specific consumer surveys and expert evidence when pursuing tarnishment claims.
• Focus on proving actual reputational harm, not merely consumer association.
• Consider whether litigation may amplify the challenged use and generate more attention than the parody itself.

Practice Pointers for Accused Parody Users

• Evidence showing consumers understand the use as an obvious joke may help defeat claims of reputational harm, even when parody is not a complete defense.
• Context matters: the stronger the signal that the product is commentary rather than a source-identifying extension of the famous brand, the harder it may be for a plaintiff to prove tarnishment.
• Survey evidence, marketplace context and the nature of the accused product all may help show that consumers understand the parody without transferring negative perceptions to the famous mark.

The Ninth Circuit’s decision does not eliminate dilution-by-tarnishment claims for parodies, but it makes clear that plaintiffs must present rigorous evidence of fame and likely reputational injury. Unless altered through rehearing or Supreme Court review, the decision directs entry of judgment for VIP and vacates the injunction against the Bad Spaniels toy. Going forward, courts are likely to scrutinize tarnishment claims more closely where the challenged use is humorous, obviously parodic and disconnected from the plaintiff’s actual goods or services. For now, Bad Spaniels stands as an important reminder that tarnishment requires more than a joke in bad taste; it also requires evidence that the joke is likely to damage the brand.

Following the Eastern District of New York’s decision finding Rebel liable for trade dress infringement, unfair competition and dilution, and awarding Van Leeuwen nearly $23.8 million in disgorged profits, Rebel filed a notice of appeal and, shortly thereafter, commenced a Chapter 11 case in the U.S. Bankruptcy Court for the District of Utah. The bankruptcy filing automatically stays further proceedings against Rebel and may delay Van Leeuwen’s efforts to collect on the monetary judgment.

At least for now, the bankruptcy filing does not appear to alter the district court’s injunction, which prohibits Rebel from selling products bearing trade dress likely to be confused with Van Leeuwen’s and requires Rebel to redesign its packaging to avoid using Van Leeuwen’s trade dress elements. The extent to which the bankruptcy proceedings will affect the enforcement or implementation of that injunctive relief remains to be seen.

For a deeper dive into the court’s decision, see our previous blog post, “Why Van Leeuwen Won When So Many Trade Dress Plaintiffs Lose,” available here.

The United States Patent and Trademark Office examiner had refused registration, arguing that the website was merely advertising because consumers had to navigate through five different webpages, only the first of which displayed the applied-for mark, requiring multiple “clicks” to purchase the pet food products. The Board disagreed, emphasizing that website specimens must be evaluated as a whole. It found that the mark appeared prominently alongside descriptions of the goods and was connected to a purchasing pathway that included ordering features such as a “buy a box” option, a shopping cart icon and product-selection buttons.

The decision serves as a useful reminder that a website can qualify as a “display associated with the goods” even when the purchasing process involves several “clicks,” provided the webpage (1) shows the goods, (2) associates the mark with those goods, and (3) provides a means for ordering them.

Key lessons for online sellers

• A product page does not need a “Buy Now” button on the exact same screen as the trademark. The Board found it sufficient that the mark appeared on the webpage and that consumers could move through the website’s purchasing process using features such as a shopping cart, drop-down purchasing options and product-selection buttons.
• The entire customer journey matters. When evaluating website specimens, the Board looked at the website as a whole rather than isolating a single webpage. If the pages collectively show the goods, the trademark and a mechanism for ordering the goods, the specimen may be acceptable.
• Marketing content alone is still not enough. The TTAB reaffirmed that “mere advertising” does not qualify as a specimen for goods. The website must be “of a point-of-sale nature” and provide a way for consumers to purchase the products.
• Website architecture can be flexible. Companies using multistep ordering processes, subscription models, configurators or product-selection workflows may have more comfort that their websites can support trademark use, provided the mark remains associated with the goods throughout the purchasing path.

The TTAB’s decision reflects the realities of modern e-commerce. A website can serve as an acceptable trademark specimen even when customers must navigate several pages before purchase, so long as the website clearly associates the mark with the goods and provides a path to order them. Brand owners should ensure their online product pages include both clear trademark use and purchasing functionality rather than relying solely on promotional content.

Case Background

The dispute began in the U.S. District Court for the Southern District of New York in 2021 when Rise Brewing sued PepsiCo for trademark infringement based on Rise Brewing’s RISE family of marks, including the RISE BREWING CO. mark, used in connection with coffee- and tea-based beverages. Rise Brewing advanced a reverse-confusion theory, arguing that consumers would assume its products were connected to PepsiCo. The district court granted Rise Brewing’s request for a preliminary injunction but the U.S. Court of Appeals for the Second Circuit reversed. It held that RISE, the common element of Rise Brewing’s marks, was inherently weak because of its strong association with coffee, energy and waking up.

The weakness finding also shaped the court’s similarity analysis. Because the Second Circuit held that RISE was weak and thus entitled to only a narrow scope of protection, it found that PepsiCo’s MTN DEW RISE ENERGY mark was not sufficiently similar to Rise Brewing’s RISE-formative marks to create a likelihood of confusion.

On remand, the district court granted summary judgment in PepsiCo’s favor. In affirming, the Second Circuit reiterated that the strength-of-the-mark inquiry and the ultimate likelihood-of-confusion determination could be resolved as legal questions rather than by a jury.

The Supreme Court did not take the case to decide whether PepsiCo’s MTN DEW RISE ENERGY mark is likely to cause confusion with Rise Brewing’s RISE-formative marks. Instead, it agreed to address a threshold question that could shape how trademark cases are litigated nationwide: whether a trademark’s inherent strength is a legal question for judges or a factual question for juries. Rise Brewing argues that the Second Circuit’s approach conflicts with that of several other circuits, which generally treat trademark strength as a factual issue. According to Rise Brewing, allowing courts to resolve trademark strength as a matter of law can prevent infringement claims from ever reaching a jury.

Takeaways

The Supreme Court’s decision could significantly affect when, and how often, trademark infringement cases reach a jury. Trademark strength is a key component of the likelihood-of-confusion analysis, and the Court’s ruling may affect how frequently infringement claims survive summary judgment. If inherent strength is treated as a factual issue, trademark owners may have greater opportunities to present evidence of consumer perception and marketplace context to a jury. Litigants may also place greater emphasis on surveys and other evidence designed to show how consumers perceive a mark. If it remains a legal question, courts may continue resolving those disputes before trial. The ruling may also have cost implications. If trademark strength becomes more difficult to resolve on summary judgment, parties may face increased discovery, expert and trial expenses.

For trademark owners and accused infringers alike, this case is worth watching. The Supreme Court’s decision could shape litigation strategy, influence forum-selection decisions and bring greater uniformity to federal trademark law on a recurring issue in likelihood-of-confusion disputes. The ruling may also provide important guidance on when trademark claims can be resolved on summary judgment.

How can brands replicate Van Leeuwen’s success? The recent decision by the U.S. District Court for the Eastern District of New York decision offers three key lessons:

1. Define It Before You Defend It

Many plaintiffs fail by trying to protect a product’s vague “look and feel.” Van Leeuwen avoided that trap by identifying a specific combination of elements: monochromatic cardboard pints with matching lids, a primarily pastel color palette, black script lettering and a minimalist design aesthetic.

Just as important, Van Leeuwen knew what it was not claiming. It limited its trade dress to its “classic dairy” pint line, excluding vegan and limited edition products. Although some flavors departed from the typical pastel palette, the court concluded that those variations did not undermine the line’s overall commercial impression. The court found that taken together, Van Leeuwen’s trade dress was sufficiently precise to put competitors on notice of what it sought to protect.

Key Takeaway: Know exactly where your trade dress begins and ends.

2. Distinctive Brands Build Protectable Rights

Trade dress protection depends on distinctiveness, not just attractive packaging. The court emphasized that Van Leeuwen’s trade dress reflected a series of intentional branding choices – from its decision to use cardboard pints instead of plastic containers to its minimalist aesthetic and generous use of negative space.

Even Van Leeuwen’s pastel pints were protected as a branding decision. While color can signal flavor (yellow for vanilla, green for pistachio, pink for strawberry), the court asked a more important question: Why did those colors need to be pastel? In the court’s view, the pastel palette was a creative choice, not a marketplace necessity – particularly where flavors like Earl Grey Tea (periwinkle) and Chocolate Fudge Brownie (light purple) used colors with little obvious connection to flavor.

Key Takeaway: The more intentional the branding choices, the stronger the trade dress story.

3. Bring More Than Side-by-Side Comparisons

Many trade dress cases turn on confusion, and Van Leeuwen came prepared. Beyond the striking visual similarities between its products and Rebel’s, Van Leeuwen presented evidence of actual consumer confusion, confusion among grocery store employees and survey evidence showing a net confusion rate of 34.3 percent.

The court was further influenced by evidence suggesting that the similarities were not accidental, including Rebel’s lack of design development documents and its decision to continue using its packaging after a grocery buyer flagged its similarity to Van Leeuwen’s pints. This evidence convinced the court that the likelihood of confusion was not theoretical – it was playing out in the marketplace.

Key Takeaway: Build a factual record of actual consumer confusion, retailer or distributor confusion, consumer survey evidence, and any facts suggesting intentional copying or knowledge of the senior brand to tip the scales in your favor.

Van Leeuwen won because it did what many trade dress plaintiffs fail to do: It was disciplined in defining its trade dress narrowly, demonstrated why that trade dress mattered to consumers, and backed its claims with substantial evidence. For brands facing an increasingly crowded marketplace of look-alike products, the decision is another reminder that successful trade dress enforcement begins long before litigation.

The case is Van Leeuwen Ice Cream LLC v. Rebel Creamery LLC, No. 21-cv-2356 (EK) (JRC) (E.D.N.Y. July 16, 2026). It was assigned to Judge Eric Komitee.

Proposed Requester Disclosures and Estoppel Review

Under existing regulations, a requester can use a registered practitioner to file anonymously, allowing the identity of the real party in interest to remain concealed from both the public and the Office. Under the proposed rule, however, the USPTO would require a third-party requester to submit a separate statement identifying the requester and all real parties in interest to the reexamination request. The statement can be kept out of the publicly available patent and reexamination files upon request, and the Office says it intends to use data security measures to maintain that confidentiality.

The USPTO explained that Section 301(e) protects a requester’s identity from the public, not from the Office itself. Sections 315(e) and 325(e) may prevent a petitioner, real party in interest, or privy from later requesting or maintaining another Office proceeding, including ex parte reexamination, on grounds that were raised or reasonably could have been raised in an IPR or PGR that resulted in a final written decision. To determine whether estoppel applies, the Office needs to know who is behind a request.

This concern is not theoretical. The USPTO noted that a significant number of recent reexamination requests concern patents previously challenged in America Invents Act (AIA) proceedings. The proposed rule would not apply to a patent owner seeking reexamination of its own patent, and it would not eliminate anonymous prior-art submissions under Section 1.501. It instead targets third-party requests under Section 1.510, where the Office believes the existing certification that estoppel does not apply may provide too little information to evaluate a disputed real-party-in-interest issue.

The proposal would change how practitioners evaluate anonymity before filing. A requester could still seek confidentiality from the public, but it would need to assume that the Office will know who is behind the request and that it may use that information to assess estoppel under Sections 315(e) and 325(e).

Prior Proceedings Can Matter Even Without Estoppel

An earlier AIA proceeding may also affect reexamination even when statutory estoppel never attaches. Section 325(d) allows the USPTO Director to reject a reexamination request when the same or substantially the same prior art or arguments previously were presented to the Office.

In a recent matter, the Office denied a reexamination request under Section 325(d) after an earlier IPR involving the same or substantially the same art or arguments had been denied on discretionary grounds without reaching the merits. That result illustrates a separate form of threshold scrutiny. In other words, while Sections 315(e) and 325(e) focus on whether the requester or a related party is estopped after a final written decision, Section 325(d) focuses on whether the art or arguments previously were presented and may apply even without a merits determination.

The First Fruits of the Pre-Order Procedure

The USPTO introduced the pre-order procedure in April in response to the increased volume of ex parte reexamination requests. Under the prior process, the Office generally made the substantial new question of patentability (SNQ) determination based on the request, without the benefit of patent-owner input. The new procedure allows a patent owner to explain why the teachings asserted in the request do not raise an SNQ before the Office decides whether to order reexamination.

A recent decision in ex parte reexamination 90/016,237 provides an early example of how the procedure can affect that determination. Unified Patents requested reexamination of claims 1 through 18 based on two obviousness grounds. Before the Office made its SNQ determination, patent owner Malikie Innovations Ltd. submitted a pre-order paper arguing that the references did not disclose all limitations of the challenged claims.

Malikie relied on the prosecution history and focused on limitations addressed before allowance. The USPTO denied the request, found that it did not raise an SNQ, and expressly found Malikie’s pre-order arguments persuasive.

The significance of this decision is not merely that the Office previously created an opportunity for an early patent-owner submission. Rather, the decision shows that a focused pre-order paper may influence whether reexamination begins at all. If a patent owner can identify a missing claim limitation or show that the asserted teaching is no stronger than what the Office previously considered, the Office may deny the request without even opening the proceeding.

Strategic Takeaways for Practitioners

For requesters, the initial filing matters more than ever. They should evaluate real-party-in-interest, estoppel, and Section 325(d) issues before filing and should assume that the patent owner may respond before the Office decides whether to order reexamination. A request relying on art similar to that considered during prosecution should clearly identify the new teaching and explain how it supplies any limitation that drove allowance.

For patent owners, the recent decision demonstrates the value of a focused pre-order paper. The submission should identify the relevant claim limitation, explain why the requester’s art does not supply it, and tie that deficiency directly to the SNQ standard.

As ex parte reexamination requests rise, the USPTO is developing additional ways to determine at the threshold which requests should proceed. Together, the proposed disclosure rule, Section 325(d) and the first application of the pre-order procedure make that stage increasingly important for requesters and patent owners.

The FTC’s July 1, 2026 proposed policy statement goes a step further. Companies may violate Section 5 of the FTC Act if they intentionally steer AI outputs toward undisclosed objectives that differ from users’ reasonable expectations regarding accuracy, objectivity or truthfulness. If your business is simply using AI to help create content or streamline workflows, the FTC’s proposal is aimed elsewhere. This proposal’s primary focus is on the companies that build, train and control AI systems – not the businesses that use them.

The proposal follows Executive Order 14365, which directed the FTC to clarify how existing consumer protection laws apply when AI systems generate outputs that may conflict with user expectations. The proposal does not create new legal obligations, but it outlines conduct that the FTC believes could violate existing Section 5 deception principles. Specifically, the FTC suggests that:

• AI companies should not secretly steer outputs toward objectives that differ from those requested by users or reasonably expected by consumers.
• If an AI system prioritizes other objectives – such as ideological, political, policy-based or commercial goals – those objectives should be clearly disclosed.
• Disclosures must be prominent and effective; disclosures buried in terms of service or fine print may not be sufficient to alter consumer expectations.
• AI companies remain responsible for compliance even when output modifications are implemented to satisfy state law requirements.

What Types of Communications Are Covered?

The agency’s primary concern is that AI providers may influence outputs behind the scenes without adequately informing users.

Like in any deception case, the FTC’s analysis focuses on the overall message conveyed to consumers. The proposal applies to both express and implied claims about an AI system’s accuracy, truthfulness, objectivity, neutrality, reliability and intended purpose.

One of the clearest themes running through the proposal is transparency. If consumers are told that an AI system is designed to deliver accurate, objective answers but there is output steering or disclosures hidden in legal fine print, the AI company may face liability.

At its core, the FTC’s proposal targets situations where:

1. Consumers use an AI system,
2. The AI provider represents that the system is designed to provide accurate or objective responses,
3. The provider intentionally steers outputs toward undisclosed objectives, and
4. Users are not adequately informed of those objectives.

Notably, the proposal is directed primarily at companies that develop, train, fine-tune, deploy or control AI systems. Its examples focus on AI developers, model providers, chatbots and AI-powered services – not ordinary businesses using AI tools in their daily operations.

That does not mean businesses using AI are immune from FTC scrutiny. A retailer that uses AI to generate product claims or a beauty company that relies on AI-generated advertising could still face liability if the resulting claims are false or misleading. In those cases, however, the risk would arise from traditional advertising and consumer protection principles – not because the company is an AI provider allegedly steering system outputs.

Key Takeaways

The FTC’s message to AI companies is straightforward: transparency matters. If your system influences outputs in ways users would not reasonably expect, the FTC wants those practices clearly disclosed – not buried in the fine print.

AI companies should consider whether:

• Output-ranking, filtering or steering practices are clearly documented and disclosed.
• Marketing claims accurately describe how the system operates.
• Statements regarding accuracy, neutrality, objectivity or reliability match the system’s actual design.
• Users would understand when outputs are being shaped by objectives beyond simply providing the most accurate or the most responsive answer.

While the proposal is not yet final, it provides an early road map of the issues the FTC is likely to scrutinize as AI enforcement continues to evolve.

Last Brand Inc., doing business as Quince, is a direct-to-consumer retailer specializing in lower-cost versions of premium products and is widely known for its dupe offerings. In 2023, Deckers Outdoor Corp., owner of the UGG brand, sued Quince over its Australian Shearling Mini Boot, which Deckers claimed copied the look and feel of UGG designs. In its second amended complaint, Deckers alleged federal and state trade dress infringement of three core UGG styles – the Classic Ultra Mini boot, the Bailey Button boot and the Tasman slipper – along with a design patent claim covering the ornamental design of the Classic Ultra Mini boot.

The case narrowed sharply before trial. In an Oct. 2, 2025 decision, the court granted summary judgment in part for Quince on Deckers’ trade dress claims for the Classic Ultra Mini boot and Tasman slipper. The court pointed to two core issues: functionality and a crowded field. Evidence that design features such as seams, shape and construction affected cost or usability raised functionality concerns, while a saturated market of similar shearling boots and slippers undermined any claim that the designs uniquely signaled UGG as the source. Deckers later dropped its remaining trade dress claim for the Bailey Button boot, leaving the design patent as its sole path to relief at trial.

On June 15, Deckers won the infringement battle but lost the patent war: The jury found Quince’s boot infringed UGG’s design patent but that the patent itself was invalid. Quince’s invalidity case leaned into the same themes previewed at summary judgment: The patent captured features already ubiquitous in the shearling boot market and relied on elements driven by function or standard construction. Under this framing, the design no longer read as a standout innovation but rather as a familiar silhouette drawn from a crowded style playbook. Thus, despite the jury’s finding of infringement, since invalidity is a complete defense, Deckers was left without recovery – and without a patent.

This decision highlights several practical lessons for brands navigating the dupe economy: 

• Make sure your IP can withstand challenge. A finding of infringement cannot carry the case if the asserted IP does not hold up. 
• Do your homework up front. In crowded markets, similar designs can undermine claims of distinctiveness and support patent invalidity defenses.
• Bring the right case. Weigh the risks before bringing a case – an unsuccessful claim can amplify, rather than deter, the dupe market.

The lesson from Deckers is straightforward: Before putting a dupe on trial, make sure your own IP is ready for the spotlight. Successful enforcement needs more than evidence of copying – it requires rights that can withstand validity challenges, a record supporting distinctiveness, and a thoughtful, consistent strategy. Otherwise, a lawsuit intended to deter copycats may end up strengthening them.

The case is Deckers Outdoor Corp. v. Last Brand, Inc., No. 4:23-cv-04850 (N.D. Cal. June 15, 2026). It was assigned to Judge Araceli Martínez-Olguín.

For brand owners, protecting brand equity during high-visibility events requires more than trademark registrations. It requires a platform-specific enforcement strategy. Major marketplaces, including Amazon, eBay and Alibaba, each offer tools that allow rights holders to detect, report and remove infringing listings, but the procedures, capabilities and levels of automation vary significantly.

Amazon Brand Registry: Proactive and Technology-Driven

Amazon Brand Registry combines proactive detection, rapid takedowns and product authentication.

At its core is the Report a Violation (RAV) tool, which enables rights holders to search listings (by keyword, image or ASIN), identify potential IP infringement, and submit structured takedown requests. Amazon also offers several proactive enforcement tools:

• AI-driven protections that identify and suppress suspicious listings using brand-provided data
• Project Zero, which allows qualifying brands to remove counterfeit listings directly without Amazon review
• Transparency, a serialization program that authenticates individual products and blocks counterfeits before sale

Brand Registry also provides dashboards and reporting tools that help identify repeat offenders, track enforcement activity and uncover infringement patterns.

For brands preparing for FIFA World Cup 26™, Amazon’s platform rewards advance preparation. Well-organized enforcement workflows can shift efforts from reactive takedowns to proactive suppression before infringing listings gain momentum and counterfeiters exploit spikes in search traffic and consumer urgency.

eBay’s VeRO Program: Rights Holder-Led Enforcement

eBay’s Verified Rights Owner (VeRO) program operates as a notice-and-takedown system. Rights holders submit a Notice of Claimed Infringement (NOCI) alleging trademark, copyright, patent or other IP violations. Once validated, eBay removes the listing and may impose escalating penalties on repeat offenders.

Key VeRO features include:

• A centralized reporting and tracking portal across listings and brands
• Participant profiles that allow rights holders to publish IP guidance to educate sellers and reduce inadvertent violations
• Direct communication channels between rights holders and sellers following takedowns

A distinguishing feature of eBay’s model is its transparency and direct communication. Sellers are typically provided with the rights holder’s contact information following a takedown, creating a more open, notice-and-resolution framework than other platforms.

Because VeRO is largely reactive, it is most effective when paired with active monitoring and rapid reporting workflows. During major events such as FIFA World Cup 26™, brands should be prepared to scale enforcement efforts, prioritize high-risk listings and maintain ready-to-submit evidence to address the rapid reappearance of infringing content.

Alibaba IPP: Cross-Border Enforcement at Scale

Alibaba IP Protection Platform (IPP) provides a centralized enforcement portal across its marketplace ecosystem, including Taobao, Tmall, AliExpress, Lazada and Alibaba.com.

After registering and verifying IP rights, rights holders can submit takedown requests through a single portal by providing listing URLs and supporting evidence. Some advantages include:

• Reusable verified IP rights that streamline repeat submissions
• Centralized management of high-volume enforcement activity
• Coordinated enforcement across multiple jurisdictions and storefronts

Alibaba recently introduced BrandSafe, a program designed to incorporate brand-specific information – such as product images, design elements and creative assets – into its detection systems to proactively identify infringing listings before they gain traction in the marketplace.

Because Alibaba’s platforms frequently serve as upstream sources for infringing goods, IPP can be part of a global enforcement strategy to prevent broader distribution.

6 Key Practice Pointers

1. Treat Platform Enrollment as Baseline Infrastructure

• Ensure active enrollment in Amazon Brand Registry, eBay VeRO, Alibaba IPP and other online platform enforcement programs before major events.
• Confirm that trademark registrations, copyright ownership and other IP rights are properly documented and linked to platform accounts.

2. Build Dual-Track Enforcement Theories

• Evaluate every listing for trademark and copyright infringement.
• Copyright claims, particularly for product images and marketing content, can offer faster, clearer takedown pathways on platforms such as eBay.

3. Move from Reactive to Proactive Monitoring

• Monitor key SKUs and high-risk categories regularly.
• Use platform dashboards and analytics to identify repeat offenders and emerging infringing trends.

4. Leverage Platform-Specific Strengths

• Amazon: Use Project Zero for rapid counterfeit removal where eligible and Transparency for high-risk product lines.
• eBay: Rapid NOCI submissions via VeRO provide direct communication with sellers.
• Alibaba: Apply centralized cross-border takedowns and repeat enforcement through IPP.

5. Expect Repeat Offenders

• Assume bad actors will return under new listings or accounts.
• Maintain evidence libraries and repeat-enforcement workflows to accelerate future takedowns.

6. Integrate Marketplace Enforcement into Broader Brand Protection Efforts

• Escalate persistent infringement through customs actions, domain enforcement or litigation, where appropriate.
• Coordinate online marketplace enforcement with distribution controls and authorized reseller programs.

Final Takeaway

No online marketplace offers a complete solution to infringement. Even as platforms deploy increasingly sophisticated AI and automation, effective enforcement still depends heavily on rights holder participation. During high-profile events such as FIFA World Cup 26™, brands that invest in proactive monitoring, rapid response protocols and platform-specific enforcement strategies will be best positioned to protect their brands when visibility – and infringement risk – are at their highest.

The Dispute

In Ironburg Inventions Ltd. v. Valve Corp., Valve filed an IPR petition challenging Ironburg’s video game controller patent. After that IPR, Valve sought to rely in district court on invalidity grounds based on prior art that had not been included in its petition. Ironburg argued that Valve was estopped under 35 U.S.C. § 315(e)(2) because those grounds reasonably could have been raised earlier. The district court agreed.

The first appeal focused on the burden of proof. The Federal Circuit held that the district court had placed the burden on the wrong party. Valve did not have to prove that it could not reasonably have raised the grounds in the IPR. Ironburg, as the party asserting estoppel, had to prove that the grounds reasonably could have been raised. The Federal Circuit vacated the estoppel ruling and remanded.

On remand, Ironburg submitted additional search evidence, and the district court again found estoppel. The second appeal focused on whether that evidence satisfied the skilled-searcher standard. The Federal Circuit reversed, holding that Ironburg had not shown that a skilled searcher conducting a diligent search reasonably could have discovered the later-raised grounds before Valve filed its IPR petition.

Searchability Was Not Enough

The district court relied in part on evidence that one later-asserted reference appeared within patent classifications searched by Valve’s prior-art search firm. But the relevant search returned more than 26,000 references. The Federal Circuit held that the mere presence of the reference somewhere in those results did not establish reasonable discoverability.

The Federal Circuit did not require manual review in every case and did not fully define what “discovery” requires. But when a search returns an unreviewably large number of references, the patentee must show “something more.” A broad classification search may show that a reference was accessible. It does not necessarily show that the reference reasonably would have been found.

Hindsight Undermined the Later Search Evidence

Ironburg also relied on search evidence generated years after Valve’s IPR petition. The Federal Circuit rejected that evidence because it did not reliably show what a skilled searcher would have found at the relevant time.

Some of the later searching used citation information that included materials arising after Valve’s IPR petition. Those materials then influenced later search terms and classifications. The Federal Circuit concluded that this process could not show that the same references reasonably would have been found before the IPR petition was filed.

The Federal Circuit also rejected a supplemental search that appeared to have been conducted because a particular reference still had not been found. A search aimed at locating a known missing reference is different from an objective pre-petition search. To prove estoppel, the patentee must show that a skilled searcher, using information available before the IPR petition was filed, reasonably would have found the asserted art or ground without being guided by hindsight.

Evidence That May Support Estoppel

The opinion does not provide a checklist for proving estoppel. It does, however, identify the type of evidence that is likely to matter. A stronger record would likely include a conventional pre-petition search methodology, the search strings and sources a skilled searcher reasonably would have used, narrowing steps that reduce large result sets to a manageable universe, and controls to avoid hindsight.

The Federal Circuit also treated a reference cited on the face of the challenged patent as different from a reference that appeared somewhere in a broad classification search. That distinction may help patentees in some cases, but it also reinforces the limits of relying on theoretical searchability alone.

Judge Stark’s concurrence adds another layer. Section 315(e)(2) estops invalidity “grounds,” not merely prior-art references. In his view, a patentee must show both that the references were findable and that the invalidity ground based on those references reasonably would have been discovered. That distinction could be important for obviousness combinations, where finding individual references may not be the same as discovering the asserted ground.

AI-Assisted Searching

The Federal Circuit addressed traditional prior-art search tools, including classification searches, keyword searches, citation searches, and manual review. The Federal Circuit did not address AI-assisted searching.

As AI tools become more common, patentees may argue that more art reasonably could have been discovered before an IPR petition was filed. Accused infringers will likely focus on what tools were reasonably available and reasonably used at the time, whether those tools would have produced reliable and reviewable results, and whether the proposed search path avoids hindsight. The relevant question should remain what a skilled searcher reasonably would have discovered before the IPR petition was filed, not what can be found later with better tools.

Litigation Implications

For accused infringers, Ironburg provides a useful response to broad estoppel arguments. Prior art is not subject to IPR estoppel merely because it existed in a searchable database or appeared somewhere in a large search set. For patentees, the decision underscores the need for evidence showing how a diligent skilled searcher would have found the art before the IPR petition was filed, without relying on hindsight. After Ironburg, searchable is not enough.