Lanham Act

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We previously discussed the United States Supreme Court’s June 2023 Jack Daniel’s Properties, Inc. v. VIP Products, LLC decision, which altered the way the “Rogers test,” a doctrine designed to protect First Amendment interests in the trademark context, should be applied. A recent decision out of the Ninth Circuit, Punchbowl, Inc. vs. AJ Press LLC (“Punchbowl II”), applies the Rogers test for the first time following Jack Daniel’s.

In April, we discussed oral arguments at the Supreme Court for Abitron Austria GmbH et al. v. Hetronic International, Inc., a case in which the Supreme Court considered the extraterritorial reach of the Lanham Act (“Act”) for the first time since 1952. Last month, the Court ruled that the Lanham Act only reaches claims of infringement where the infringing use in commerce is domestic.

On June 8, 2023, the U.S. Supreme Court issued its decision in Jack Daniel’s Properties, Inc. v. VIP Products, LLC and provided some clarity as to the applicability of the “Rogers test,” a doctrine that grapples with the interplay of trademark law and the First Amendment. The case involved a trademark dispute between Jack Daniel’s Properties, the maker of the famous whiskey, and VIP, a dog toy company that makes and sells a product called “Bad Spaniels.” The Bad Spaniels squeaky toy is in the shape of a whiskey bottle and has a black label with white font similar to Jack Daniel’s; in place of “Old No. 7 Brand Tennessee Sour Mash Whiskey,” the toy reads, “The Old No. 2 On Your Tennessee Carpet.” After VIP initially filed suit against Jack Daniel’s seeking declaratory judgment that the product did not infringe on Jack Daniel’s trademarks, Jack Daniel’s brought counterclaims under the Lanham Act for trademark infringement and trademark dilution.

Last month, the Supreme Court heard oral argument on Abitron Austria GmbH et al. v. Hetronic International, Inc. and considered, for the first time since 1952, the extraterritorial reach of the Lanham Act. This case presents the opportunity for the Court to establish a uniform test for the Lanham Act’s extraterritorial reach when seeking remedies in U.S. courts and to provide clarity for U.S. companies looking to protect their marks and reputation around the world.

The great pizza wars of 2021 are not what you might expect. While the courts will never be able to resolve the question of who (or where) makes the best pie, a pair of decisions from the last few weeks did resolve contentious trademark disputes in two of the great pizza destinations of the world, between Patsy’s Pizzeria and Patsy’s Italian Restaurant in New York, and between shareholders of Rosati’s in Illinois.

The U.S. Patent and Trademark Office has issued guidance on how it will treat applications to register “generic.com” terms in the wake of the Supreme Court’s June 30, 2020 decision in United States Patent and Trademark Office v. Booking.com.

We previously wrote about the Supreme Court’s Booking.com decision, which affirmed the Fourth Circuit’s decision that the mark BOOKING.COM was registrable and not generic. The Supreme Court’s decision tracked the arguments in an amicus brief we submitted on behalf of consumer perception specialists and academics from leading U.S. universities.

It is generally understood that trademark law protects against a third party’s use of your mark or a confusingly similar mark to mislead consumers into thinking goods manufactured by someone else were made by your company. But what happens if those goods were in fact made by your company, but you didn’t authorize their sale?  The Eastern District of New York recently answered one version of that question in granting Hallmark summary judgment on its trademark infringement and trademark dilution claims against defendant Dickens, where Dickens obtained twenty trailers of Hallmark greeting cards and related paper products that were intended for destruction, and began to sell them for resale to the public.

Chambers and Partners released its first ever Pharmaceutical Advertising 2018 guide, authored by Proskauer partners Lawrence Weinstein and Alexander Kaplan with assistance from several litigation associates. The guide provides a comprehensive look at the laws and regulations governing pharmaceutical advertising in various markets, and provides important developments in the most…