Tag Archives: trademark infringement

USPTO Sanctions Chinese Law Firm for Fraud and Terminates More Than 15,000 US Trademark Applications

On Dec. 10, 2021, the U.S. Patent and Trademark Office (USPTO) issued a precedential Final Order for Sanctions against Chinese practitioner and law firm Yusha Zhang and Shenzhen Huanyee Intellectual Property Co., Ltd. for filing more than 15,000 applications and other submissions that were deemed fraudulent. The USPTO described the mass filings as “[a] scheme … Continue Reading

Trademark Infringement and Jury Trials in Federal Courts

By Cory Barnes on April 6, 2021 Posted in Trademark

When plaintiffs assert trademark infringement and related actions under the Lanham Act (or state law counterparts), more often than not the complaint will include a demand for a jury trial on all issues so triable, as is standard practice. However, if discovery ultimately reveals, or dispositive motion practice confirms, that a plaintiff has suffered no … Continue Reading

A Finding of Willfulness Is Not Required for an Award of Profits in a Trademark Infringement Case

By Nancy R. Frandsen, Kevin Wallace and Megan Corrigan on April 24, 2020 Posted in Trademark

The Supreme Court has definitively answered the question of whether a plaintiff in a trademark infringement suit is required to show, as a precondition to a profits award, that a defendant willfully infringed the plaintiff’s trademark. By a unanimous vote, the Supreme Court said NO. In Romag Fasteners, Inc. v. Fossil Group, Inc., Romag, a … Continue Reading

Who Is Holding the Bag: How Will the Supreme Court Resolve the Circuit Split on Recovery of Profits in Trademark Cases?

By Jacqueline Lesser on December 31, 2019 Posted in Trademark

Two weeks from now, on January 14, 2020, the Supreme Court will hear oral argument in Romag Fasteners, Inc. v. Fossil, Inc. on the long-standing circuit split over whether willful infringement is a necessary precondition for an award of profits in a Section 43(a) trademark infringement case. Under the Lanham Act, a victorious plaintiff in … Continue Reading

Oh! Mega Liability for Landlords Under Second Circuit’s Recent Trademark Infringement Ruling in Omega SA v. 375 Canal LLC

By Heather McDonald on October 8, 2019 Posted in Trademark

In March 2019, after a seven-year-long legal battle, a Manhattan jury found defendant landlord 375 Canal LLC contributorily liable for trademark counterfeiting and infringement and awarded Omega SA statutory damages of $1.1 million ($275,000 for each mark infringed).[1] In the suit, plaintiff Omega claimed that the Canal Street landlords knew about, had reason to know … Continue Reading

Court Finds Infringement of THE KRUSTY KRAB Mark

By Lesley Grossberg on May 12, 2017 Posted in Trademark

In Viacom International Inc. v. IJR Capital Investments, LLC, 2017 WL 1037294 (S.D. Tex. Mar. 17, 2017), Viacom successfully asserted common-law rights in the trademark THE KRUSTY KRAB for a fictional restaurant, which appears in the cartoon SpongeBob SquarePants. The defendant, IJR, had filed an intent-to-use trademark application for the mark THE KRUSTY KRAB for … Continue Reading

Federal Circuit Holds Trademark Infringement Must Be Willful to Warrant Award of Infringer’s Profits, Highlighting Continuing Circuit Split

By Lesley Grossberg on April 20, 2016 Posted in Trademark

The Federal Circuit, applying Second Circuit trademark law, has weighed in on the issue of whether an infringer’s profits are recoverable absent a finding of willful infringement. In Romag Fasteners, Inc. v. Fossil, Inc. (Fed. Cir. Mar. 31, 2016), a jury had found Fossil liable for patent and trademark infringement of Romag’s magnetic snap fasteners … Continue Reading

Fourth Circuit Holds No Use in the U.S. Required to Bring Claims Under the Lanham Act

By Charlie Lyu on March 31, 2016 Posted in Trademark

On March 23, 2016, the Fourth Circuit reversed the district court’s decision in Belmora LLC v. Bayer Consumer Care AG, 84 F. Supp. 3d 490 (E.D. Va. 2015) and remanded the case. The Fourth Circuit held that contrary to the district court’s decision, the plaintiff, Bayer Consumer Care AG (“BCC”), owner of a foreign trademark registration … Continue Reading

Rising up from the Trenches: Ninth Circuit Broadly Interprets Breach of Contract Exclusion in Trademark Infringement Case

By Judy Selby and C. Zachary Rosenberg on June 11, 2014 Posted in Uncategorized

On May 23, 2014, the Ninth Circuit upheld a California district court decision that broadly interpreted the breach of contract exclusion in a commercial general liability policy to preclude coverage for all personal and advertising injury having even a minimal factual connection or incidental relationship to a breach of contract. Trenches Inc. v. Hanover Ins. Co., … Continue Reading