The Sixth Circuit held that Static Control Components had standing to sue Lexmark under the Lanham Act for false advertising in the toner cartridge market — a ruling affirmed by the Supreme Court in 2014 under a new zone-of-interests and proximate cause standing framework that displaced the split among circuits on Lanham Act false advertising standing.
The Second Circuit held that eBay was not liable for contributory trademark infringement arising from third-party sellers listing counterfeit Tiffany jewelry, because eBay’s general knowledge that counterfeit goods were present on its platform — without specific knowledge of particular infringing listings — was insufficient to establish contributory infringement liability.
The Federal Circuit affirmed the TTAB’s refusal to register VEUVE ROYALE for sparkling wine, holding that it was likely to cause confusion with the famous VEUVE CLICQUOT mark under the DuPont factors analysis.
The Supreme Court held that a defendant asserting classic fair use in a trademark case bears no burden to negate likelihood of confusion, and some degree of consumer confusion may coexist with a lawful fair use.
The Federal Circuit reversed the TTAB’s refusal to register BLUE MOON for beer, holding that beer and restaurant services are not presumptively related goods and services, and that the USPTO must point to something more than the mere relatedness of industries to refuse registration under the likelihood-of-confusion standard.
The Supreme Court held that the Lanham Act’s false designation of origin provision applies to the physical source of goods, not to the communicative content of expressive works — so unaccredited copying of a public domain film does not violate the Act.
The Federal Circuit held that NAFTA’s amendments to the Lanham Act require proof of actual consumer deception before a mark can be refused registration as primarily geographically deceptively misdescriptive, overturning a TTAB refusal of the CALIFORNIA INNOVATIONS mark.
The Supreme Court held that the Federal Trademark Dilution Act requires proof of actual dilution of the famous mark, not merely a likelihood of dilution — a standard Congress later reversed by enacting the Trademark Dilution Revision Act of 2006.
The Supreme Court held that when a product feature was the subject of a utility patent, that prior art disclosure is strong evidence the feature is functional and therefore unprotectable as trade dress under the Lanham Act.
The Federal Circuit vacated a TTAB opposition ruling, holding that the Board improperly analyzed likelihood of confusion by focusing only on the “Packard” component of HEWLETT-PACKARD rather than considering the marks in their entireties, and failed to apply the correct legal test for the relatedness of goods and services.
The Federal Circuit held that the TTAB failed to give proper weight to the fame of the FRITO-LAY trademark when finding no likelihood of confusion with the mark FIDO LAY for dog treats, establishing that famous marks deserve full weight in the multi-factor Dupont analysis.