26
May/16

9th Cir Continues To Not Apply OCTANE To Trademarks


Ninth Circuit reminds us that it already has decided that it is not bound to apply Octane Fitness’ (134 S. Ct. 1749) definition of “exceptional” in the context of the Lanham Act’s fee-shifting provision. Rather than evaluate ‘exceptional’ under a ‘totality of circumstances’ test, the Ninth Circuit will look to whether there was ‘malicious, fraudulent, deliberate or willful’ infringement.



19
May/16

Spot the Differences in These Nominative Fair Use Tests


Here is the first factor from the Ninth Circuit nominative fair use test, courtesy of the New Kids on the Block case:

First, the product or service in question must be one not readily identifiable without use of the trademark;

Here’s the first factor from yesterday’s Second Circuit decision:

(1) whether the use of the plaintiff’s mark is necessary to describe both the plaintiff’s product or service and the defendant’s product or service, that is, whether the product or service is not readily identifiable without use of the mark;

Ninth
Circuit second factor:

second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service;

Second Circuit second factor:

(2) whether the defendant uses only so much of the plaintiff’s mark as is necessary to identify the product or service;

Ninth
Circuit third factor:

third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

Second Circuit third factor:

(3) whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder, that is, whether the defendant’s conduct or language reflects the true or accurate relationship between plaintiff’s and defendant’s products or services.

What are the differences and significances thereof? OK, pencils down.

Here’s Prof. Goldman’s sample answer.



18
May/16

Text of Second Circuit Nominative Fair Use Case (IISSCC v SU)


Introducing the 2d Circuit Nominative Fair Use Test:

1. Whether plaintiff’s mark is necessary to describe both the plaintiff’s and defendant’s products, “that is, whether the product or service is not readily identifiable without use of the mark;

2. whether the defendant uses only so much of the plaintiff’s mark as is necessary to identify the product or service; and

3. whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder, that is, whether the defendant’s conduct or language reflects the true or accurate relationship between plaintiff’s and defendant’s products or services.



10
May/16

From The Denied UDRP Files




9
May/16

Meet the Bloggers – INTA – Orlando – May 23




9
May/16

Time’s Relentless Arrow Forward and Reverse Domain Name Hijacking


You cannot act in bad faith towards something that doesn’t exist yet.



4
May/16

What Mis-Use Of A Photo Might Be


Defendant allegedly ran photos of plaintiff models, to promote defendant’s resorts. Discussion of what tort this might be (false advertisement, unjust enrichment), and what it might not be (negligence per se).

Also, complaint was a few hundred pages too long.



4
May/16

5th Circuit Extends Octane Fitness Fee Rule to Trademarks


Noting the similarity between the language of Section 285 of the Patent Act, the Fifth Circuit extends Octane Fitness to cover Section 1117(a) of the Lanham Act as to what constittutes an exceptional case for purposes of awarding attorney’s fees. Departing from the standard that ‘exceptional’ means a case that is brought in bad faith, Octane Fitness looks to the ordinary meaning of exceptional, namely uncommmon, rare, not ordinary, unusual, special and not run-pf-the-mill.



2
May/16

Recent @TrademarkBlog Tweets




30
Apr/16

Camouflage Trade Dress