Posts in Trademark

Second Circuit Upholds Injunction for Vans Based on Jack Daniel’s Ruling

The U.S. Court of Appeals for the Second Circuit today invoked the Supreme Court’s decision in Jack Daniel’s Properties v. VIP Products to affirm a district court’s finding that MSCHF Product Studio, Inc.’s shoe, the Wavy Baby Sneaker, likely infringed Vans, Inc.’s Old Skool shoe. The Second Circuit ultimately affirmed the district court’s grant of a preliminary injunction and temporary restraining order for Vans. The Wavy Baby Sneaker is made by MSCHF, a Brooklyn-based art collective that “has recently focused its artistic expression on ‘sneakerhead culture.,’” according to the Second Circuit opinion. Upon release of the Wavy Baby Sneaker, MSCHF’s co-Chief Creative Officer said in a statement: “’The Wavy Baby concept started with a Vans Old Skool sneaker’ because no other shoe embodies the dichotomies between ‘niche and mass taste, functional and trendy, utilitarian and frivolous’ as perfectly as the Old Skool.”

Straight to the Prompt: IP Lawyers Must Develop AI Skills NOW

In September 2023, one man grabbed the authors’ attention with his astonishing story about defending his trademark registration from an opposition by professional trademark attorneys using ChatGPT. His months-long battle began in December 2022, less than a month after the public launch of the now infamous AI chatbot. Nine months later, Jamiel Sheikh — an entrepreneur, tech-guru, and adjunct professor — survived the pressure from formal proceedings and obtained a settlement from his opposer without spending a dime. As young trademark attorneys, we were horrified yet extremely curious about what he had done. This article is the result of speaking with Sheikh about his experience and the evolving needs and expectations of sophisticated legal service consumers.

CIPU Survey Finds Fractured Views Among IP Community Over Negative Impacts of Infringement

Today, the Center for Intellectual Property Understanding (CIPU) released the results of a survey on viewpoints within the intellectual property (IP) community about acceptable behaviors surrounding IP rights, as well as guiding IP principles for business and consumers. Responses from inventors, attorneys and consultants across the IP sector revealed a significant disparity in beliefs on how IP protections impact sharing and the effects of IP infringement, though most agreed that IP has positive economic impacts in general.

Federal Circuit Vacates TTAB Decision as Arbitrary and Capricious

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday vacated and remanded a Trademark Trial and Appeal Board (TTAB) decision that had sustained an opposition to the mark GET ORDAINED, holding that the TTAB had failed to “furnish a reasoned explanation for departing from its established practice of deeming unargued claims waived.”

Is It Time to Ditch the Requirement that Counterfeits be ‘Stitch-for-Stitch’ Copies?

The Lanham Act provides for special remedies in cases of trademark infringement “involving” the use of a “counterfeit” mark. 15 U.S.C. § 1117(b), (c); 15 U.S.C. § 1127. Absent “extenuating circumstances,” if the use of a counterfeit mark is intentional and knowing, the Act requires entry of judgment of three times the amount of actual damages or profits found, as well as an award of attorney’s fees. 15 U.S.C. § 1117(b). Alternatively, in any case of infringement “involving” a counterfeit mark, the Act provides for awards of statutory damages of up to $200,000; it provides for statutory damages of up to $2,000,000 if the use of the counterfeit mark was willful. 15 U.S.C. § 1117(c)…. In our view, a straightforward interpretation of the Act allows access to the special remedies in cases that involve knock-off products, as well as cases where an identical logo or word mark is used on the same type of product that is in the plaintiff’s trademark registration, even if the defendant’s products and/or their packaging do not resemble the plaintiff’s products.

Fraudulent Trademark Ownership Claims Lead to Near $4 Million Punitive Damages Verdict

On November 8, a Central California jury entered a verdict awarding $3.9 million in punitive damages against Internet financial platform ConsumerDirect. The verdict comes weeks after U.S. District Judge James Selna granted a motion for sanctions  after finding that ConsumerDirect fraudulently represented its ownership of unregistered trademarks while obtaining a preliminary injunction in U.S. district court against Array.