Octane Fitness and Highmark Apply to Ninth Circuit Attorney Fee Awards under the Lanham Act

On October 24, 2016, the Ninth Circuit Court of Appeals, sitting en banc, held that district courts analyzing a request for attorney fees under the Lanham Act should consider the totality of the circumstances, as set forth in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014).  Section 35(a) of the Lanham Act provides that “he court in exceptional cases may award reasonable attorney fees to the prevailing party.”  In determining whether a case is “exceptional,” courts in the Ninth Circuit are now required to apply a less “precise rule or formula,” and look to   Read More »

Posted in IP and Technology Litigation, Trademark Litigation | Tagged , ,

Share this Article:

Ninth Circuit Could Reconsider Attorneys’ Fees Standard for Federal Trademark Litigation

In Octane Fitness v. ICON Health & Fitness (2014), the Supreme Court changed the standard for recovering attorneys’ fees in patent litigation.  Rejecting a “rigid and mechanical formulation,” the Court adopted a looser “totality of the circumstances” test.  Earlier this year, a Ninth Circuit panel held that the Octane Fitness standard did not apply in trademark cases.  But now the Ninth Circuit has ordered an en banc rehearing of the panel’s decision. In SunEarth, Inc. v. Sun Earth Solar Power Co., the district court permanently enjoined Sun Earth Solar Power from using “Sun Earth” in the U.S. because that use   Read More »

Posted in Patent Litigation, Trademark Litigation | Tagged , ,

Share this Article:

Someone Copied My Company’s Website Without Permission — What Can I Do About It?

You encounter a website that looks very similar to your company’s website. The similarities make clear that your website was copied.  Even worse, it was copied by a competitor.  Please see this article that discusses the remedies you may have under intellectual property laws.

Posted in Copyright Litigation, Internet and Domain Name Litigation, Patent Litigation, Trademark Litigation

Share this Article:

Split Ninth Circuit Panel Rejuvenates Doctrine of Initial Interest Confusion

Imagine you are driving to Flagstaff for the weekend and, as you approach Camp Verde, you really could go for a McDonald’s hamburger.  You see a McDonald’s sign from the highway, take the exit, and learn that the sign actually directs you to a Burger King.  “Oh well,” you think, “I guess I’ll take Burger King instead.”  You knew you weren’t getting McDonald’s when you made the purchase.  But were you the victim of trademark infringement nonetheless, since you thought you were getting McDonald’s when you took the exit, and wouldn’t have bought Burger King absent that initial confusion? Or   Read More »

Posted in Internet and Domain Name Litigation, Trademark Litigation | Tagged ,

Share this Article:

Supreme Court: TTAB Proceedings Can Have Preclusive Effect in Federal Court

Today, the Supreme Court held in B&B Hardware v. Hargis Industries that likelihood-of-confusion decisions by the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) can have preclusive effect in federal court. Hargis applied to register the mark SEALTITE and B&B opposed, based on its registration for SEALTIGHT.  The TTAB sustained B&B’s opposition, even though the marks would be used for different goods in different markets.  In a contemporaneous federal suit, the district court gave no deference to the TTAB decision and held that SEALTITE was not likely to cause confusion with SEALTIGHT.  Affirming, the Eighth Circuit   Read More »

Posted in Trademark Litigation | Tagged ,

Share this Article: