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Welcome to the Snell & Wilmer intellectual property and technology litigation blog! Check here for useful news and information about patent, trademark, copyright, trade secret, and other IP and technology litigation developments.
Our IP & Technology Litigation Attorneys:
Generic.com Terms May Be Eligible for Federal Trademark Protection
By Jessica D. Kemper and David G. Barker Today, the Supreme Court held in U.S. Patent & Trademark Office v. Booking.com B.V. that a generic term paired with an internet designation such as “.com” (called a “generic.com” term by the Court) may be eligible for federal trademark registration. When will a generic.com term be eligible for registration? According to the Court, one key consideration is whether consumers associate the generic.com term with the source of the goods or services. A generic term—the name of the good or service itself—is not eligible for trademark protection because it cannot distinguish one company’s Read More »
Posted in Internet and Domain Name Litigation, Trademark Litigation
| Tagged generic, Supreme Court
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Supreme Court Determines No Claim Preclusion of Defense in Trademark Infringement Suit
By Jessica D. Kemper and David G. Barker Today, a unanimous Supreme Court held in Lucky Brand Dungarees, Inc. v. Marcel Fashions Group., Inc. that claim preclusion did not prevent Lucky Brand from asserting a defense it failed to fully litigate in a prior lawsuit with Marcel. The Court did not strictly endorse “defense preclusion”—a doctrine that would prevent litigants from asserting defenses in new litigation that were asserted or could have asserted in prior litigation; it decided the case on general claim preclusion principles. The case has a complicated history. In 2001, Marcel sued Lucky for trademark infringement of Read More »
At Long Last, Supreme Court Resolves Circuit Split Over Lanham Act Profits
By Mary Hallerman The Supreme Court unanimously held that willfulness is not prerequisite to an award of a defendant’s profits under the Lanham Act. The decision in Romag Fasteners, Inc. v. Fossil Group resolved a longstanding circuit split on this issue, but given the swift manner the Supreme Court dealt with the issue, one wonders why courts were even split in the first place. The Lanham Act provides that a prevailing plaintiff is entitled to recover a defendant’s profits “subject to the principles of equity.” See 15 U.S.C. § 1117(a). Certain circuits—the Third, Fourth, Fifth, Sixth, Seventh, and Eleventh—considered willfulness Read More »
Posted in Trademark Litigation
| Tagged lost profits, Supreme Court, willfulness
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Unintended Sublicenses Through Social Media: “Embedding” and the Pitfalls of Public Posts
By Deborah Gubernick and Gabrielle Morlock In this era of social media and image sharing, it is not uncommon for account holders to make their profiles public in attempt to garner as many followers and as much attention as possible. Social media platforms can be a form of relatively low-cost personal and corporate advertising. However, as a photographer recently learned, using social media platforms can have unintended consequences that compromise intellectual property rights. Stephanie Sinclair, a professional photographer who is the exclusive U.S. copyright owner of a photo titled “Child, Bride, Mother/Child Marriage in Guatemala,” posted a copy of her Read More »
Ninth Circuit Holds “Bad Spaniels” Dog Toy Is an “Expressive Work”
By Anne Bolamperti and David G. Barker The Ninth Circuit Court of Appeals recently held in VIP Products LLC v. Jack Daniel’s Properties, Inc. that the “Bad Spaniels” dog toy is an expressive work entitled to First Amendment protection. The court vacated the United States District Court for the District of Arizona’s judgment that the toy infringed the Jack Daniel’s trade dress and registered bottle design. VIP Products designs and sells rubber dog toys that employ entertaining adaptations of various beverage brands. Beginning in July 2013, VIP began selling the “Bad Spaniels” version of the toy, which resembles the iconic Read More »
