Trademarks
Registration, infringement, and remedies under the Lanham Act — and the constitutional limits on what the government may refuse to register.
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Vidal v. Elster: A Unanimous Judgment, a Divided Court, and the Limits of History
The Supreme Court upheld the Lanham Act's bar on registering marks that use a living person's name without consent. The 9-0 result conceals a methodological fracture over whether history alone can resolve a First Amendment question.
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Dewberry Group v. Dewberry Engineers: Corporate Separateness Survives the Lanham Act
A unanimous Supreme Court held that a trademark plaintiff awarded the 'defendant's profits' may recover only the named defendant's profits — not those of its non-party affiliates. The result is a $43 million award vacated and a lesson in how to plead.
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When a Generic Word Buys a Domain: USPTO v. Booking.com and the Limits of Per Se Genericness
The Supreme Court rejected a categorical rule that 'generic.com' terms are unregistrable, holding that consumer perception alone determines whether such a composite is generic—reshaping distinctiveness analysis for the domain-name economy.
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Who Decides Priority: Hana Financial v. Hana Bank and the Jury's Role in Trademark Tacking
A unanimous Supreme Court held that whether a later mark may 'tack' onto an earlier mark's priority date is a question for the jury—locating the decisive moment in a clearance dispute in the fact-finder's assessment of consumer perception.
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In re Chestek: When a Trademark Refusal Turns on Administrative Law, Not Trademark Law
The Federal Circuit affirmed a refusal to register CHESTEK LEGAL because the applicant used a P.O. box rather than a domicile address — and in doing so treated the USPTO's domicile rule as a procedural rule exempt from notice-and-comment.
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When Fraud Doesn't Cancel: Great Concepts v. Chutter and the Limits of Section 14
The Federal Circuit holds that a fraudulent Section 15 incontestability declaration cannot, by itself, justify cancellation of a trademark registration under Section 14.
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Token Use Won't Save a Registration: Social Technologies v. Apple and the 'Memoji' Mark
The Ninth Circuit holds that a rushed, litigation-driven app launch is not the bona fide use in commerce the Lanham Act demands — and Apple gets the MEMOJI registration cancelled.
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When a Mark Is Used 'As a Mark': Punchbowl v. AJ Press and the Shrinking Reach of Rogers
The Ninth Circuit reversed itself after Jack Daniel's, holding that Rogers cannot shield a name used as a source identifier and sending the dispute back for an ordinary likelihood-of-confusion analysis.
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Hermès v. Rothschild: The MetaBirkins Verdict and Trademark Dilution in the NFT Market
A Manhattan jury found that Mason Rothschild's MetaBirkins NFTs infringed and diluted the famous Birkin mark — and that the First Amendment did not save them. The case maps how dilution doctrine and Rogers v. Grimaldi apply to digital goods.
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The Boot That Could Not Become a Brand: TBL Licensing v. Vidal and the Limits of Product-Configuration Trade Dress
The Fourth Circuit refused to register the configuration of Timberland's iconic tan work boot, holding that Timberland's evidence proved the fame of the whole boot but not acquired distinctiveness in the discrete features it claimed.
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Re-Registration as Cybersquatting: Prudential v. Shenzhen Stone and the Reach of the ACPA
The Fourth Circuit held that a domain 'registration' actionable under the Anticybersquatting Consumer Protection Act includes later re-registrations, then sustained in rem jurisdiction over PRU.COM and a bad-faith finding against its Chinese owner.
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Counterfeit Without a Fake: Chanel v. What Goes Around Comes Around and the Genuine-Goods Trap
A New York jury found a luxury reseller liable for willful counterfeiting and false association over Chanel-branded bags—holding that even items that left a Chanel factory can be 'counterfeit' when they fail the brand's quality controls.
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Rejection Is Breach, Not Rescission: Mission Product Holdings v. Tempnology and the Survival of Trademark Licenses in Bankruptcy
The Supreme Court held that a debtor-licensor's rejection of a trademark license in bankruptcy breaches the contract but does not strip the licensee of its right to keep using the mark.
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Abitron v. Hetronic: Drawing the Line at Domestic 'Use in Commerce'
The Supreme Court holds the Lanham Act's core infringement provisions reach only conduct where the infringing use in commerce is domestic, vacating a $96 million judgment.
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Belmora v. Bayer: A Foreign Mark Owner With No U.S. Use Can Still Sue Under §43(a)
The Fourth Circuit's FLANAX decision held that a Mexican trademark owner who never used its mark in U.S. commerce may nonetheless pursue Lanham Act unfair-competition and false-advertising claims — unsettling the conventional assumption that U.S. use is the price of admission.
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Crocs v. Effervescent: When Calling Your Product 'Patented' Becomes False Advertising
The Federal Circuit held that a false claim that a product feature is 'patented' can support a Lanham Act false-advertising claim — provided it misleads consumers about the nature, characteristics, or qualities of the goods, not merely their authorship.
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The Charbucks Saga: How Starbucks Lost Its Dilution-by-Blurring Claim
After more than a decade of litigation, the Second Circuit held that even a famous mark cannot prove dilution by blurring without meaningful similarity and real evidence of association — affirming judgment for a tiny New Hampshire roaster.
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Herb Reed v. Florida Entertainment: eBay Comes for the Trademark Injunction
The Ninth Circuit became the first court of appeals to declare squarely that trademark plaintiffs no longer enjoy a presumption of irreparable harm — they must prove it, like everyone else seeking an injunction.
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Lamparello v. Falwell: A Misspelled Domain, a Gripe Site, and the Limits of Cybersquatting Law
The Fourth Circuit held that fallwell.com was neither infringing nor cybersquatting, because likelihood of confusion turns on the whole site and the ACPA targets profit-seeking, not criticism.
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When Search Results Aren't Confusing: Multi Time Machine v. Amazon and the Limits of Initial-Interest Confusion
On rehearing, a divided Ninth Circuit held that a clearly labeled list of substitute products is not trademark infringement—narrowing initial-interest confusion for the era of online search.
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Wal-Mart v. Samara Brothers: Product Design Is Never Inherently Distinctive
The Supreme Court's unanimous 2000 decision held that a product's design can qualify as protectable trade dress only on proof of secondary meaning, and told courts to classify ambiguous cases as design — drawing the line that *Two Pesos* had left open.
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A Blocked Application Is a Real Interest: Empresa Cubana v. General Cigar and Standing Through the Embargo
The Federal Circuit held that the Cuban embargo did not strip a Cuban tobacco entity of its statutory cause of action to cancel General Cigar's COHIBA registrations.
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ITC v. Punchgini: The Second Circuit Refuses to Find a Famous-Marks Doctrine in Federal Law
The Second Circuit holds that Congress has not incorporated the famous-marks doctrine into the Lanham Act, then certifies the state-law question to New York's high court.
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Mattel v. MCA Records: 'Barbie Girl,' Parody, and the Limits of a Famous Mark
The Ninth Circuit adopted the Rogers test, protected a pop song that lampooned an American icon, and closed with one of the most quoted lines in trademark law: the parties are advised to chill.
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A Mark Is Nothing Without Its Goodwill: Sugar Busters v. Brennan and the Assignment-in-Gross Trap
The Fifth Circuit held that the SUGARBUSTERS service mark, bought from a diabetic-supply store and used for a diet book, was assigned in gross and invalid because the goodwill did not transfer with it.
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T.A.B. Systems v. PacTel Teletrac: Pre-Sales Publicity Counts Only If the Public Was Actually Reached
The Federal Circuit's analogous-use decision held that promotional activity can establish trademark priority before sales — but only on proof that it reached a substantial portion of the relevant consuming public, not merely that the user intended an association.
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Trader Joe's v. Hallatt: 'Pirate Joe's,' Cross-Border Resale, and a Merits Question in Disguise
The Ninth Circuit revived Trader Joe's claims against a Canadian reseller, holding that the Lanham Act's foreign reach is a question on the merits — not federal jurisdiction — and that buying and harming a brand inside the U.S. can supply the needed domestic nexus.
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Waits v. Frito-Lay: A Distinctive Voice and the Birth of False Endorsement
The Ninth Circuit recognized that imitating a celebrity's distinctive voice to imply sponsorship can be a false-endorsement violation of Section 43(a) of the Lanham Act.
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At the Border of Genuine: K Mart v. Cartier and the Gray-Market Compromise
The Supreme Court upheld Customs' common-control exception for gray-market imports while striking the authorized-use exception, defining when genuine foreign goods can be stopped at the U.S. border under the Tariff Act.
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Two Hats, One Commerce Clause: Christian Faith Fellowship Church v. adidas
A single in-state sale of two caps to an out-of-state buyer was enough use in commerce to defeat cancellation, as the Federal Circuit rejected a de minimis test for Lanham Act use.
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Red, But Only in Contrast: Louboutin v. YSL and the Limits of a Single-Color Mark
The Second Circuit saved Christian Louboutin's red-sole trademark from an aesthetic-functionality death sentence but narrowed it to soles that contrast with the rest of the shoe, leaving YSL's all-red shoe free to walk.
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The Sliding Scale of Secondary Meaning: In re Steelbuilding.com and the Burden of Section 2(f)
The Federal Circuit reverses a genericness refusal but affirms that a highly descriptive domain-name mark failed to prove the heightened acquired distinctiveness it needed under Section 2(f).
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Big O Tire v. Goodyear: The Birth of Corrective Advertising Damages
When a tire giant rolled out a 'Bigfoot' campaign over a small dealer's prior mark, the Tenth Circuit fashioned a remedy borrowed from the FTC — corrective advertising damages — and capped it at a fraction of the offending ad spend.
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Two Elements and a Single Factor: Cunningham v. Laser Golf and the Architecture of Cancellation
The Federal Circuit's golf-mark decision supplies the canonical two-part test for cancellation standing and shows how one DuPont factor can decide a likelihood-of-confusion case.
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PETA v. Doughney: When a Domain Name Is the Punchline, the Parody Defense Fails
The Fourth Circuit held that 'People Eating Tasty Animals' could not shield peta.org behind the First Amendment, because a domain identical to a mark conveys ownership before any visitor sees the joke.
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Two Pesos v. Taco Cabana: When Trade Dress Is Inherently Distinctive, No Secondary Meaning Required
The Supreme Court's 1992 decision held that inherently distinctive trade dress is protectable under Section 43(a) without proof of secondary meaning — extending to a restaurant's look the same first-day protection long given to coined word marks.
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Chewy Vuiton and the Limits of Dilution: Louis Vuitton v. Haute Diggity Dog
The Fourth Circuit held that a successful parody can defeat both blurring and tarnishment claims under the revised dilution statute — because a good parody depends on, and reinforces, the very distinctiveness it pokes fun at.
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Hosting Counterfeit: Louis Vuitton v. Akanoc and the Liability of the Server Beneath the Storefront
The Ninth Circuit held that a web host that ignores notices and keeps serving counterfeit-selling sites can be liable for contributory trademark infringement—but capped statutory damages at one award per mark, jointly and severally.
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Grupo Gigante v. Dallo: The Ninth Circuit Carves a Famous-Marks Exception
The Ninth Circuit recognizes a famous-marks exception to trademark territoriality, allowing a foreign mark to be protected in the United States when a substantial share of the relevant American market knows it.
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Lexmark v. Static Control: The Two-Part Test for Who May Sue for False Advertising
The Supreme Court replaced three competing circuit tests with a single rule — a false-advertising plaintiff must fall within the Lanham Act's zone of interests and show proximate cause.
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McBee v. Delica Co.: A Jazz Bassist, a Japanese Label, and the Substantial-Effects Line
The First Circuit's 2005 decision built a separate, tougher test for foreign defendants — demanding a substantial effect on U.S. commerce — and refused to let a Japanese-language website carry an American trademark claim across the Pacific.
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Zazu Designs v. L'Oréal: Why a Few Bottles and a Registration Plan Do Not Win the Mark
The Seventh Circuit's ZAZU decision held that token sales and an intent to register cannot establish trademark priority — only genuine market use that links the mark to a source in consumers' minds will do.
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Control, Not Quality: Eva's Bridal v. Halanick and the Naked License Inside the Family Business
The Seventh Circuit held that a bridal-shop owner who licensed her name to a relative without retaining any authority over how the store was run abandoned the mark through naked licensing.
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The Test That Outlived the Verdict: Polaroid v. Polarad and the Birth of the Confusion Factors
Polaroid lost its 1961 infringement suit to laches—but Judge Friendly's catalogue of variables for gauging confusion became the most cited multifactor test in American trademark law.
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A Dish Is Not a Brand: In re Cordua Restaurants and Genericness for a Restaurant Specialty
The Federal Circuit affirms that CHURRASCOS is generic for restaurant services and that owning a prior registration does not insulate a later application from a genericness refusal.
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The Spring That Could Not Be Owned: TrafFix Devices v. Marketing Displays and the Functionality Bar
The Supreme Court held that a feature claimed in an expired utility patent is presumptively functional and barred from trade dress protection, and that the availability of alternative designs does not rescue a functional feature.
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Preparation Is Not Performance: Aycock Engineering v. Airflite
Decades of planning an air-taxi reservation service could not satisfy the Lanham Act's use requirement, because the AIRFLITE service was never actually rendered to the public.
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Rogers v. Grimaldi: The Two-Part Test That Made Room for Art in Trademark Law
Ginger Rogers lost her suit over a Fellini film, but the Second Circuit's opinion gave expressive works a durable First Amendment shield against Lanham Act claims that survived for more than three decades.
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When the Board Speaks First: B&B Hardware and the Preclusive Reach of TTAB Decisions
The Supreme Court holds that a Trademark Trial and Appeal Board likelihood-of-confusion ruling can bind a federal court in later infringement litigation.
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Romag Fasteners v. Fossil: Willfulness Is a Factor, Not a Gate, for Disgorgement
A unanimous Supreme Court held that a trademark plaintiff need not prove willful infringement as a precondition to recovering the infringer's profits under Section 35(a) — reshaping the calculus of every infringement demand letter.
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Abercrombie & Fitch v. Hunting World: Judge Friendly's Spectrum and the Architecture of Distinctiveness
The 1976 Second Circuit decision that sorted every word mark into fanciful, arbitrary, suggestive, descriptive, or generic — and cost Abercrombie its 'Safari' trademark — still governs how courts measure distinctiveness today.
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Sporty's Farm v. Sportsman's Market: The First Appellate Word on the Anticybersquatting Act
Decided weeks after the ACPA became law, the Second Circuit's sportys.com ruling supplied the template for how courts would read bad-faith intent, distinctiveness, and a brand-new statute applied to conduct that predated it.
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Moseley v. V Secret Catalogue: When Dilution Demanded Proof of Actual Harm
The Supreme Court held that the original Federal Trademark Dilution Act required proof of actual dilution — not a mere likelihood of it — a reading so demanding that Congress rewrote the statute three years later.
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The Eight-Factor Engine: How AMF v. Sleekcraft Built the West Coast Confusion Test
A 1979 dispute over Slickcraft and Sleekcraft boats gave the Ninth Circuit its enduring eight-factor framework for likelihood of confusion—and a template courts still run today.
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A Single Naked License Sinks a Mark: Barcamerica v. Tyfield Importers and the Duty to Police Quality
The Ninth Circuit held that a trademark owner who licensed its DA VINCI wine mark without meaningful quality control abandoned the mark, even though the licensee made well-regarded wine.
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A Website Is Not a Service: Couture v. Playdom and the Rendering Requirement
The Federal Circuit holds that advertising a service you have not yet performed cannot support a use-based service-mark registration, voiding the PLAYDOM mark ab initio.
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The Knowledge Line: Tiffany v. eBay and the Limits of Marketplace Liability
The Second Circuit held that an online marketplace is contributorily liable for counterfeit sales only when it knows of specific infringing listings—not because counterfeiting is rampant on its platform generally.
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Dastar v. Twentieth Century Fox: Who Counts as the 'Origin' of Goods Under Section 43(a)
The Supreme Court held that 'origin of goods' in the Lanham Act means the producer of the tangible product sold, not the author of the ideas it embodies — sharply narrowing reverse passing off.
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Dawn Donut v. Hart's Food: The Registrant Who Won the Mark but Lost the Injunction
The Second Circuit's foundational concurrent-use decision held that a federal registrant cannot enjoin a good-faith remote junior user until it is likely to expand into that user's trading area — a rule that still shapes every trademark clearance opinion.
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The Death of the 'Should Have Known' Standard: In re Bose and Fraud on the PTO
The Federal Circuit reset the bar for fraud on the Trademark Office, holding that a registration falls only on clear and convincing proof of a subjective intent to deceive.
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Matal v. Tam: Why the Lanham Act Cannot Punish a Band Called The Slants
A unanimous Supreme Court held that trademarks are private speech and that the disparagement clause was viewpoint discrimination the First Amendment forbids — even when the speaker is reclaiming a slur.
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Person's Co. v. Christman: Foreign Use, U.S. Priority, and the Limits of Bad Faith
The Federal Circuit holds that use of a mark abroad creates no priority in the United States, and that knowledge of a foreign mark does not by itself defeat good-faith domestic adoption.
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A Shade of Green-Gold: Qualitex v. Jacobson and the Trademarking of Color Alone
A unanimous Supreme Court held that a single color can serve as a trademark once it acquires secondary meaning, while making functionality the gatekeeper that keeps color from becoming a competitive chokehold.
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Steele v. Bulova Watch Co.: The Lanham Act Follows the Citizen Across the Border
The 1952 decision that first let an American trademark owner reach a U.S. citizen's infringing conduct abroad — and seeded seven decades of doctrinal fights over the foreign reach of the Lanham Act.