Federal Court Affirms Luxury Eyewear Manufacturer’s $1.9M Win Over Flea Market
On August 7, the U.S. Court of Appeals for the Eleventh Circuit upheld the ruling of a Georgia jury awarding $1.9 million to Luxottica finding the landlord of an indoor flea market in Georgia liable for contributory trademark infringement when the landlord had “constructive” knowledge of the subtenants’ sale of counterfeit eyewear, including knockoffs of Ray-Ban and Oakley brands. Read More
U.S. Supreme Court Finds USPTO’s Bar on Offensive Trademarks Unconstitutional
On June 24, the U.S. Supreme Court ruled by a 6-3 vote that a federal law banning the registration of “immoral or scandalous” trademarks violates the First Amendment. In Iancu v. Brunetti, the court found in favor of Eric Brunetti, a Los Angeles streetwear designer who attempted to register the name of his 30-year-old brand, FUCT. Read More
Iron Maiden Sues ‘Ion Maiden’ Video Game Creators
On May 28, the English heavy metal band, Iron Maiden, filed a trademark infringement lawsuit against Danish video game developer 3D Realms Entertainment (“3D Realms”) over the video game named “Ion Maiden.” Read More
Fashion Law Scotus Case: Trademarks and Continuing Infringements
Dunnington trademark team members Olivera Medenica, Raymond J. Dowd and Sixtine Bousquet-Lambert recently authored a Supreme Court brief on a trademark issue pertinent to the fashion industry. On June 20, the U.S. Supreme Court will decide whether to grant a petition for certiorari filed by Lucky Brand Dungarees in Lucky Brand Dungarees, Inc., et al., v. Marcel Fashions Group, Inc. Dunnington represents respondent Marcel Fashions Group, Inc. who is opposing the petition. At issue in the case is whether, in an action to enforce a trademark infringement judgment, a defendant who continues with the exact same infringements can collaterally attack a prior judgment with a defense that it raised in that prior action but deliberately chose not to prosecute.
FUCT Fashion Label Takes its ‘Scandalous’ Trademark Case to Supreme Court
On Monday, April 15, 2019, the Supreme Court considered the question of whether the Lanham Act’s prohibition on the federal registration of “immoral” or “scandalous” trademarks is unconstitutional under the Free Speech Clause of the First Amendment. Read More
SDNY District Court Rejects Laurel Road’s Trade Dress Suit Against CommonBond
On August 27, 2018, Laurel Road Bank sued competitor CommonBond, Inc. over the latter’s display of an advertisement for its student loan financing services, alleging that CommonBond’s advertisement infringed and diluted the trade dress of Laurel Road’s advertisements of its own student loan refinancing services. Read More
BIC Files ITC Complaint Against Importers of Allegedly Counterfeit Pocket Lighters
On December 6, 2018, BIC Corporation (“BIC”) petitioned the United States International Trade Commission (“ITC”) for an investigation into the illicit importation into the United States, sale for importation, or sale after importation of six respondents’ pocket lighters, alleging that respondents’ lighters infringe BIC’s intellectual property rights in the design of its disposable cigarette lighters, otherwise known as their “trade dress.” In its petition, BIC argues that similarities in the appearance of respondents’ lighters and its lighters will lead consumers to be confused as to the source and/or sponsorship of respondents’ lighters, or to affiliate respondents’ lighters with BIC. BIC’s petition asks the ITC to issue a general exclusion order blocking the importation of infringing lighters from any source, not just the named respondents, and claims that such an order “is necessary and appropriate to prevent circumvention of limited exclusion orders directed to products of Respondents.”
Supreme Court Will Decide Whether USPTO Can Refuse to Register “Scandalous” TMs
On January 4, the U.S. Supreme Court granted certiorari to the USPTO to decide whether the Lanham Act’s prohibition on the federal registration of “immoral” or “scandalous” marks violates the First Amendment. The Supreme Court’s decision to hear the case comes less than two years after it unanimously ruled in Matal v. Tam that a similar part of the trademark law that banned the registration of “disparaging” trademarks violated the First Amendment. In Matal, an Asian-American rock band called The Slants attempted to register its name for trademark protection, but was denied because the USPTO decided that the mark would be likely to offend Asian-Americans. Read More
Dunnington is proud to announce that Donna Frosco has been named 2018 Lawyer of The Year in the field of Complex Litigation (U.S.A.) by the global publication, Lawyer Monthly magazine and Lawyer-Monthly.com, a daily on-line legal news site. The awards edition of the magazine is available online at: https://legalawards.lawyer-monthly.com/winners-edition/. (See page 69.)
We congratulate Donna on this recognition and her contribution to continuing Dunnington’s long tradition of client representation in complex matters.
An article authored by Donna Frosco and Betsy Dale was selected for publication in the 30th Anniversary Edition of the Entertainment Art & Sports |Law Journal, a publication of the New Your State Bar Association. Read More
