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Lanham Act

Pending Trademark Applications & Litigation

It seems axiomatic that a federal district court has jurisdiction to decide whether a pending federal trademark application can be registered or not. Yet, the truth is a federal district court only has power over pending federal trademark applications under certain circumstances.

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Image of a Target on the State of California

In the last blog post, we concluded that, under the principles of general jurisdiction, a trademark owner can sue an infringer where the infringer is essentially at home in the forum state. For a company, this means the state in which the company was formed or the state in which the company has its principal place of business. For an individual, this means the state in which the individual resides. But what if the trademark owner isn't located in the same state that has general jurisdiction over the trademark infringer? Then it's time to examine whether specific jurisdiction exists in the state in which the trademark owner is located (which is presumably where the trademark owner would like to file suit). continue reading→

Trademark lawyers wax eloquent about the significant benefits of federally registering a trademark with the U.S. Patent and Trademark Office. Federal courts do too. And one of the benefits touted is the federal registration defense to state dilution claims provided by Lanham Act § 43(c)(6), 15 U.S.C. § 1125(c)(6).  In fact, in its recently well-publicized decision in In re Tam (which has nothing to do with the defense), the Federal Circuit listed the defense as one of the important legal rights and benefits conferred on trademark owners who register their marks.  In re Tam, 808 F.3d 1321, 1329 (Fed. Cir. 2015) (“registration operates as a complete defense to state or common law claims of trademark dilution”). But this “important” defense afforded by registration hasn’t been treated as such. It’s been chipped away at, and there’s not much left to rely on. Significant limitations have been placed on this supposed significant benefit. continue reading→

Octane Fitness Trademark

The trademark infringement case is over. And now it is time to argue that it was an “exceptional case” that warrants attorneys’ fees under 15 U.S.C. § 1117(a) (also known as § 35 of the Lanham Act). Well, it appears that the U.S. Supreme Court has made it a little easier to meet the “exceptional case” requirement. continue reading→