Law: Lanham Act 1946 (USA)

US Copyright Office issues urgent call for federal anti-deepfake legislation and new digital replica right

Current regulations are inconsistent, but a new right should not pre-empt state laws or offer post-mortem protection, says new report.

01 August 2024

Supreme Court ruling to end Chevron deference may bring USPTO Lanham Act interpretations before courts

Challenges to USPTO decisions will likely increase after a new Supreme Court ruling; however, deference-based arguments can still be made, practitioners explain.

05 July 2024

United States: How a multi-pronged legislative approach is curbing the online trade in fakes

Featured in Anti-counterfeiting and Online Brand Enforcement: Global Guide 2024

The Lanham Act and Trademark Counterfeiting Act work hand in hand to boost anti-counterfeiting enforcement, protecting rights holders and legitimate suppliers against a rising tide of infringement. Counterfeiters may be subject to criminal prosecution by state or federal law enforcement agencies, which provide various penalties for offenders.

24 June 2024

Third Circuit vacates district court’s grant of relief in charity infringement dispute

In a long-running trademark spat between two children’s education charities, the Third Circuit has ruled that the district court erred in granting relief to the plaintiff. Its decision sheds light on the impact of a delay in bringing a suit as well as where the burden of proof lies.

30 May 2024

District court erred in granting preliminary injunction, Second Circuit rules

In an infringement spat between the Fire Department of New York and a first responder, the Second Circuit overturned a district court decision to grant a preliminary injunction. The ruling highlights the importance of the differences between descriptiveness and secondary meaning under the Lanham Act.

23 May 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

Ninth Circuit clarifies power of district courts to cancel pending applications in infringement spat

In a dispute between two smoking product retailers, the Ninth Circuit has upheld a district court decision to cancel a pending trademark application. The decision sheds light on the jurisdiction of federal courts when it comes to resolving cases by cancelling pending applications.

02 May 2024

VEUVE CLICQUOT v VEUVE OLIVIER: TTAB favours petitioner as respondent defaults in cancellation action

Viticulture giant MHCS, owner of the mark VEUVE CLICQUOT for “champagne”, was assisted by the relative absence of the respondent from the proceedings.

18 April 2024

Ninth Circuit: federal courts have jurisdiction to hear challenges to trademark applications

The decision serves as a warning to applicants that pending trademark applications are not shielded from scrutiny by the federal courts.

15 April 2024

Breitling prevails with good-faith defence in Second Circuit infringement dispute ruling

An infringement suit brought against luxury watch retailer Breitling has shed light on the implications of using trademarks as descriptive terms. The court’s decision to grant summary judgment highlights how the good-faith prong in the fair-use defence can help when it comes to likelihood of confusion.

11 April 2024