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THE NINTH CIRCUIT WEIGHS IN ON ALLEGED TRADEMARK INFRINGEMENT BY AMAZON.COM’S SEARCH FUNCTIONALITY

By Ali Shalchi - 13th July 2015

On July 6, 2015 the Ninth Circuit Court of Appeals reversed and remanded a decision from the United States District Court, Central District of California (Western Division) granting summary judgment in favor of Amazon.com and against the trademark infringement claims of Plaintiff, Multi Time Machine, Inc. (“MTM”).  Multi Time Machine Inc. v. Amazon.com et al., No. CV 11-09076, 2013 WL 638888 (C.D. Cal. Feb. 20, 2013). This case poses important trademark issues in the e-commerce context where websites present users...

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Travis Burch receives Martindale-Hubbell® Peer Review Rating of AV® Preeminent™

By Info - 31st May 2015

We are pleased to announce that Travis Burch has received the prestigious AV Preeminent® Peer Review Rating™ from Martindale-Hubbell®, indicating that he ranks at the highest level of professional excellence in general ethical standards and legal ability in his specific areas of practice. This rating is the result of an extensive and confidential peer review by members of the Bar and Judiciary, facilitated by LexisNexis. Martindale-Hubbell is the authoritative resource for information on lawyers. With a history spanning over 140...

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SCOTUS Holds That Trademark Infringement Defendants in District Court Can be Bound By TTAB’s Prior Findings of Likelihood of Confusion Through the Issue Preclusion Doctrine

By Travis Burch - 30th March 2015

SUMMARY   The Supreme Court issued its opinion March 24, 2015 in the case of B&B Hardware, Inc. v. Hargis Industries, Inc.  The Supreme Court reversed the Eight Circuit and remanded with instructions.  The issue was whether findings of likelihood of trademark infringement by the Trademark Trial and Appeal Board (“TTAB”) are binding on the parties in later district court trademark infringement litigation.  The Supreme Court held that, so long as the ordinary elements of issue preclusion were present, when...

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The Fact That Plaintiff Most Likely Breached Agreement to Sell Trademark to Defendant Not Grounds to Deny Plaintiff’s Request for Injunction Against Frustrated Defendant

By Travis Burch - 4th March 2015

  PRACTICE POINTER The case of Derma Pen, LLC v. 4EverYoung Ltd., 773 F.3d 1117 (10th Cir. 2014) illustrates the need for counsel representing either party to an agreement allowing for the joint use, or licensing, of intellectual property to think through what remedies are necessary should one party terminate the agreement and one party desire a transfer of the trademark (or other intellectual property right).  Specifically, a contractual specific performance clause, or valuation mechanism may have helped the frustrated...

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SCOTUS Settles Circuit Split Regarding Trademark Tacking In Hana Financial Case

By Travis Burch - 27th February 2015

SUMMARY Litigating over first use and priority of a mark is commonplace in trademark litigation.  Generally, a party can establish rights in a trademark by using the mark in commerce before others.  Through the course of time, courts have developed and recognized a concept called “tacking” in which a trademark owner can apply the priority position of a new mark by using the priority date of a prior registered mark.  The thrust of tacking requires that the new trademark must...

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The Third District Court of Appeals Extends The Octane Fitness Standard For Attorney’s Fees In Patent Action to Trademark Actions

By Travis Burch - 23rd January 2015

In September 2014, the Third Circuit Court of Appeals held that attorney’s fees could be recovered by a prevailing party under the Lanham Act, and that District Courts should use the same test set out by the Supreme Court in Octane Fitness for patent litigation.  Thus, the door is now open for District Court judges to punish specious and meritless trademark/trade dress lawsuits (or defenses thereto) by awarding the prevailing parties with attorney’s fees.  Fair Wind Sailing, Inc. v. Dempster,...

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Fed. Circuit Shows That Summary Judgment/Adjudication On Damages Is Much More Difficult For Patent Infringement Defendants Than Posner Thought

By Travis Burch - 17th December 2014

The case of Apple Inc., et. al. v. Motorola, Inc. et. al., 757 F.3d 1286 (Fed. Cir. 2014) is chock full of interesting and instructive patent litigation issues.  One could easily write about a number of issues analyzed in the case.  As an interesting aside, the trial Judge was none other than Seventh Circuit Court of Appeals jurist Richard Posner, sitting by designation.  It must be an interesting experience being reversed when one is usually in the position of doing...

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The Supreme Court Embarrasses The Fed Circuit In The Limelight

By Travis Burch - 22nd August 2014

Summary In Limelight Networks, Inc. v. Akamai Technologies, Inc., (June 2, 2014) 134 S.Ct. 2111, the Supreme Court overturned a Federal Circuit holding that inducement patent infringement can arise from a divided infringement that does not constitute direct infringement.  The Supreme Court acknowledged that this would permit a would-be infringer to evade infringement liability by dividing performance of a method patent’s steps with another whom the defendant does not direct or control (such as an end user).  However, the Supreme...

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US Senate Introduces Bill To Create Federal Civil Cause Of Action For Trade Secret Theft

By Travis Burch - 19th May 2014

In 1996 Congress passed the Economic Espionage Act (“EEA”).  The EEA created a criminal statue to combat trade secret theft.  Although the EEA provided restitution for injured parties, it did not create a private right of action.  Thus, aggrieved parties had to rely on the Uniform Trade Secrets Act (“UTSA”) on a state-by-state basis to fully avail themselves of civil remedies.  However, despite the name, the act was not entirely uniform across jurisdictions, and each state’s version of the Uniform...

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SCOTUS Relaxes Standing Requirements For Lanham Act Section 43 False Advertising Claims In Lexmark Ruling

By Travis Burch - 21st April 2014

BACKGROUND On March 25, 2014, the United States Supreme Court delivered a unanimous opinion in Lexmark International, Inc. v. Static Control Components, Inc.  The decision liberalized standing requirements for false advertising claims under the Lanham Act by getting rid of three separate tests utilized by three different groups of circuit courts of appeal to determine standing.  The three standing tests were: (1) the antitrust standing requirement; (2) direct competitor requirement; and (3) the reasonable interest requirement.  District courts in the...

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