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Supreme Court holds covenant not to sue moots counterclaim for invalidity

Foley & Lardner LLP
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USA
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January 9 2013

In a unanimous decision issued in Already, LLC dba Yums v. Nike (No. 11-982, January 9, 2013), the Supreme Court held that a plaintiff's dismissal of a

Second Circuit reverses Louboutin on protection of fashion color trademarks

Foley & Lardner LLP
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USA
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September 5 2012

In a major opinion issued on September 5, 2012, the Second Circuit held that Christian Louboutin’s red sole trademark for shoes is valid, but only when the red color contrasts with the color of the shoe upper

ICANN reveals list of applied-for gTLDs: what trademark owners can expect

Foley & Lardner LLP
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USA
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June 13 2012

On June 13, 2012, the Internet Corporation for Assigned Names and Number (ICANN) revealed the list of new top-level domain names (gTLDs) applied for during the initial application period which ended on May 30, 2012

Rosetta Stone v. Google decision extends AdWords battle

Foley & Lardner LLP
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USA
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April 13 2012

The legal campaign against Google’s offering of trademarks as keywords in its AdWords program, including its policy of permitting third-party trademarks to be used in sponsored links, will continue as a result of the Fourth Circuit’s decision this week in Rosetta Stone Ltd

TTAB rejects parody defense and sustains dilution claim in CRACKBERRY registration case

Foley & Lardner LLP
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USA
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March 2 2012

The Trademark Trial and Appeal Board, which rarely sustains oppositions based on dilution, recently did so in refusing registration to CRACKBERRY for a variety of online computer services as well as clothing

TTAB limits extent of e-discovery in board proceedings

Foley & Lardner LLP
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USA
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January 3 2012

The Trademark Trial and Appeal Board (TTAB) recently held that expansive discovery of electronically stored information (ESI) will normally not be necessary in registration proceedings

Ninth Circuit expands scope of dilution claims

Foley & Lardner LLP
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USA
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February 18 2011

Owners of famous trademarks can assert a dilution claim even when the defendant's mark is not identical or substantially identical to their own, according to a recent Ninth Circuit decision

Ninth Circuit finds abandonment of trademarks through naked licensing

Foley & Lardner LLP
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USA
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December 2 2010

A recent decision by the Ninth Circuit serves as a reminder to trademark owners that uncontrolled or "naked" licensing of a trademark without reasonable quality controls can result in an involuntary forfeiture of trademark rights

Google wins major victory on sale of trademarks as keywords

Foley & Lardner LLP
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USA
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August 13 2010

A federal court recently held that Google's auctioning of Rosetta Stone's trademarks as triggers for paid advertisements and the use of those trademarks within the advertisements creates no likelihood of confusion and therefore does not infringe

Ninth Circuit applies nominative use defense to domain names

Foley & Lardner LLP
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USA
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July 19 2010

In a decision that will likely help define the boundaries of trademark owners' rights in domain names, the Ninth Circuit Court of Appeals recently reversed and remanded a district court's broad injunction prohibiting any use of the trademark LEXUS in domain names used by an independent auto broker legally helping to sell LEXUS automobiles