Court: Fourth Circuit

Legal Updates you may have missed: fashion and luxury courtroom defeats

The third instalment in our series highlighting Legal Updates you may have missed asks what we can learn from recent trademark defeats for Kurt Geiger, Hermès, Timberland and Vans.

16 July 2024

Timberland gets the boot: trade dress and its “formidable” burden of proof

The decision highlights that an applicant seeking federal registration for trade dress bears a “formidable” burden of proof to show secondary meaning and distinctiveness.

16 May 2024

Timberland denied trade dress registration over lack of distinctiveness

The Fourth Circuit has upheld a district court decision to deny footwear manufacturer Timberland trade dress protection for its boot design. The decision highlights the need for direct evidence of a unique, nonfunctional design when applying for protection of this kind.

09 May 2024

Fourth Circuit clarifies district court’s power to subpoena in USPTO proceedings

Upholding a district court decision in a software dispute, the Fourth Circuit has shed light on the rules that govern the power to subpoena evidence for use. The judgment underscores the differences between the TTAB and the courts, and the strategic implications of such a distinction.

04 April 2024

Fourth Circuit affirms that disgorgement of profits is an appropriate remedy for breach of contract

Addressing the breach of a confidential settlement agreement, the Fourth Circuit has upheld a district court’s summary judgment rulings in a real estate trademark dispute, agreeing on all six likelihood-of-confusion factors.

07 September 2023

Fourth Circuit vacates district court’s injunctive relief ruling due to FRCP misapplication

The Federal Court of Appeals has reinforced the importance of properly applying criteria from the Federal Rules of Civil Procedure when reviewing a party’s request for injunctive relief.

20 July 2023

Fourth Circuit confirms that ‘gruyere’ is generic for cheese

The Fourth Circuit concluded that US consumers understand ‘gruyere’ as referring to a type of cheese, which renders the term generic.

31 March 2023

Fourth Circuit provides welcome clarity on certification marks in Gruyere ruling

While the applicants for GRUYERE believed that the term should be used only to label cheese produced in the Gruyère region, the court held that it is a generic term for consumers and encouraged the USPTO and courts to look to FDA regulations as evidence in future disputes.

30 March 2023

It’s PRUdent to refrain from cybersquatting: ACPA applies to domain name re-registration

The Fourth Circuit has joined the Third and 11th Circuits in holding that the term ‘registration’ in the ACPA is not limited to the initial registration of a domain name.

06 March 2023