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Results: 11-20 of 26

Re-registration of domain name containing another’s trademark is not cybersquatting

  • McDermott Will & Emery
  • -
  • USA
  • -
  • October 31 2011

The U.S. Court of Appeals for the Ninth Circuit reversed a California district court’s holding that re-registration of a domain name containing another’s trademark violated the Anti-Cyberqsuatting Consumer Protection Act

Naked licensing defense barred where licensee previously failed to contest trademark validity

  • McDermott Will & Emery
  • -
  • USA
  • -
  • July 31 2011

Considering which of two Washington, D.C., area plumbing, heating and air conditioning (HVAC) businesses was entitled to use the marks JOHN C. FLOOD and FLOOD in connection with their services, the U.S. Court of Appeals for the District of Columbia Circuit determined that licensee estoppel applied, barring the licensee from challenging the ownership rights of the successor in bankruptcy based on alleged naked licensing

Bridal shop loses trademark rights for naked licensing

  • McDermott Will & Emery
  • -
  • USA
  • -
  • May 28 2011

Considering whether a family-operated bridal clothing business exercised sufficient quality control over services rendered under their trademarks to survive an abandonment challenge, the U.S. Court of Appeals for the Seventh Circuit held that the plaintiff did not, despite the fact that the plaintiff had no reason to doubt the standards employed by its licensee

Domain name registrant found to lack bad faith in UDRP proceeding later loses against ACPA claim

  • McDermott Will & Emery
  • -
  • USA
  • -
  • May 28 2011

Considering whether a domain name registrant who prevailed in a Uniform Domain Name Dispute Resolution Policy (UDRP) proceeding possessed legitimate rights in the domain name in a subsequent court action for federal cybersquatting, the U.S. Court of Appeals for the Fourth Circuit affirmed a grant of summary judgment to plaintiff, finding that the defendant domain name registrant ceased to possess rights in the underlying domain name when it changed the content of its website to content concerning a geographical location referenced by the mark to content targeting the same type of products sold by a trademark owner under the mark

Personal jurisdiction lacking despite twenty internet users from forum state signing up for defendant’s website

  • McDermott Will & Emery
  • -
  • USA
  • -
  • May 28 2011

Considering whether a New Jersey website operator was subject to personal jurisdiction in Illinois, the U.S. Court of Appeals for the Seventh Circuit held that for personal jurisdiction to arise, a defendant must in some way target the forum state’s market in addition to operating an interactive website that is accessible from the forum state

“Outer limits” of Lanham Act sustain consumer class action amid allegations of competitive injury

  • McDermott Will & Emery
  • -
  • USA
  • -
  • March 31 2011

Reversing a district court’s dismissal of a false advertising class action, the U. S. Court of Appeals for the Fifth Circuit determined that the plaintiff, a real estate appraiser, possessed prudential standing under the Lanham Act through its status as a competitor of the defendant, despite its duel status as a consumer

VeriCheck found suggestive for check verification services

  • McDermott Will & Emery
  • -
  • USA
  • -
  • March 31 2011

Considering a second appeal in a cybersquatting case, the U.S. Court of Appeals for the Ninth Circuit upheld a district court’s finding that the trademark VERICHECK is suggestive (as opposed to descriptive) and is thus protected without a showing of secondary meaning when used in connection with check verification services

“Internet trinity” no longer holy in internet trademark cases

  • McDermott Will & Emery
  • -
  • USA
  • -
  • March 31 2011

In a decision that will limit the ability of trademark owners to challenge competitors’ keyword advertising, the U.S. Court of Appeals for the Ninth Circuit vacated a preliminary injunction issued by a district court barring a defendant’s purchase of a competitor’s trademark as a keyword to trigger internet advertisements

Sovereign immunity bars trademark infringement claims even if state entity institutes de novo suit

  • McDermott Will & Emery
  • -
  • USA
  • -
  • January 31 2011

Considering sovereign immunity in the context of trademark infringement claims, the U.S. Court of Appeals for the Seventh Circuit held that a software company’s trademark infringement claims against a public university were barred, determining that the university did not waive immunity by affirmatively participating in the federally regulated trademark registration process or by instituting a district court proceeding challenging the cancellation of its trademark registration by the Trademark Trial and Appeal Board (TTAB

Once legitimately registered, domain name held for ransom costs kidnapper $150k

  • McDermott Will & Emery
  • -
  • USA
  • -
  • November 30 2010

Illustrating the significant recovery available to trademark owners under the Lanham Act’s Anti-Cybersquatting Consumer Protection Act (ACPA) versus the arbitration process pursuant to the Uniform Domain-Name Dispute-Resolution Policy (UDRP), the U.S. Court of Appeals for the Ninth Circuit upheld a jury’s damages verdict of over $150,000 to a trademark owner whose domain name was held for ransom by a former employee