Trademark

This decision holds that Jack Daniel's Properties, Inc. v. VIP Products LLC (2023) 599 U.S. 140 effectively overruled prior 9th Circuit decisions to the extent that they held the Rogers v. Grimaldi (2d Cir. 1989) 875 F.2d 994 test exempts all expressive use of trademarks from trademark law.  Jack Daniel's held that the Rogers test does not apply when the… Read More

In this action, plaintiff sought a declaration that its use of the trademark "Impossible" in connection with its food products didn't infringe upon defendant's federal trademark of the same word.  By a split decision, the 9th Circuit held that California could exercise personal jurisdiction over the defendant, a one-man LLC that for two years operated primarily from San Diego before… Read More

Federal legislation is presumed to apply only within the territorial jurisdiction of the United States unless Congress affirmatively and unmistakably instructs otherwise.  Absent such an instruction, the court must determine the focus of congressional concern underlying the legislation and then determine whether the conduct relevant to that focus occurred in the US or elsewhere.  Here, the focus of the Lanham… Read More

The right of a trademark owner to control the distribution of its trademarked product does not extend beyond the first sale of the product, and trademark rights are “exhausted” as to a given item upon the first authorized sale of that item.  This first sale doctrine applies not only to the resale of the product in unmodified form by the… Read More

Under the Madrid Protocol implemented in 15 USC 1141 et seq, and under 15 USC 1057, the holder of a trademark registered in a foreign country can obtain registration of the trademark in the United States as well, and obtain the benefit of a constructive use date pegged to the date of the foreign registration or application for US registration. … Read More