Gibbons Law Alert

Gibbons Law Alert

Tagged: Trademark

Supreme Court Denies Certiorari in Tiffany v. eBay Appeal

by

Posted in Trademarks

On November 29, 2010

Earlier today, the Supreme Court denied certiorari in the Tiffany v. eBay action, permitting a ruling to stand that places the burden on trademark owners to police infringements taking place on on-line auction sites. The Supreme Court’s denial of cert was without comment. Critical to the underlying decisions of the Second Circuit Court of Appeals and the U.S. District Court for the Southern District of New York was that eBay was not itself the seller of the infringing goods, and that it acted promptly to take down auctions when it received notice that the goods were not legitimate. eBay reportedly has made investments of up to $20 million per year to stop fraud and infringements occurring via its site.

Farouk Systems Wins $300 Million Damages Award Against On-Line Chinese Counterfeiting Ring

by

Posted in E-Commerce / Trademarks

On October 25, 2010

On October 14, 2010, the U.S. District Court for the Southern District of Texas granted what is reportedly the largest judgment ever awarded in an action involving on-line counterfeiting. In Farouk Systems, Inc. v. Eyou Int’l Trading Co., Judge Kenneth M. Hoyt entered a default judgment and permanent injunction against more than seventy defendants, who were operating an Internet counterfeiting ring out of China. The judgment required that each of the defendants pay Farouk statutory damages of $4 million, resulting in an award of approximately $300 million. In addition to being significant because of the amount of the damages awarded, this decision is noteworthy for the pragmatic approach that the court took to ensure that the relief awarded to the plaintiff would be meaningful.

Second Circuit Holds That Shipping a Single Counterfeit Item to New York May Support Personal Jurisdiction When Combined with Other Business Activity in New York

by

Posted in Trademarks

On August 20, 2010

On August 5, 2010, the Second Circuit issued an important decision affecting a brand owner’s ability to establish personal jurisdiction against out-of-state defendants involved in the online sale of counterfeit goods. In Chloe v. Queen Bee of Beverly Hills, LLC, the Second Circuit vacated a Southern District of New York (“SDNY”) decision dismissing an anti-counterfeiting case for lack of personal jurisdiction. See Chloe v. Queen Bee of Beverly Hills, LLC, 571 F. Supp. 2d 518 (S.D.N.Y. 2008) (hereafter “District Court op.”), vacated and remanded, 2010 U.S. App. LEXIS 16192 (2d Cir. 2010) (hereafter “Second Circuit op.”).

New ICANN Electronic UDRP (“eUDRP”) Procedures for Domain Name Disputes

by

Posted in Trademarks

On February 2, 2010

Last month, ICANN announced that its Board had approved changes to the Rules for the Uniform Domain Name Dispute Resolution Policy (“Rules”) providing for electronic filing of UDRP documents. Under the modified Rules, electronic filing will become mandatory effective March 1, 2010. Both the World Intellectual Property Organization (“WIPO”) and the National Arbitration Forum (“NAF”) were quick to implement the paperless filings. WIPO began accepting paperless filings on December 14, 2009. The WIPO eUDRP procedures are explained in its new Supplemental Rules, Model Complaint and Filing Guidelines.

Supreme Court Denies Certiorari in Trademark Challenge to Washington Redskins Name

by

Posted in Trademarks

On January 12, 2010

On November 16, 2009, the Supreme Court denied a petition for certiorari in the case of Harjo v. Pro-Football, Inc. The underlying action was brought by Native American activists (“Harjo”) who challenged the Washington Redskins’ right to register its team name and logos on the basis that they are scandalous, disparaging and may bring Native Americans into disrepute or contempt. Marks that do any of those things are not entitled to registration, as provided by Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). The sole issue submitted for the Supreme Court’s review, however, was whether the activists’ claim was barred by laches, as found by the U.S. Court of Appeals for the D.C. Circuit. Under the Lanham Act, the grounds on which a trademark registration may be cancelled become limited once the registration has existed for five years. For example, after that point, no challenge may be brought on the basis that the mark is merely descriptive. However, the Lanham Act specifies that certain claims may be brought “at any time,” including that a mark is disparaging, that it has been abandoned, or has become generic. 15 U.S.C. § 1064(3). The issue submitted for the Supreme Court’s review arose out of a Trademark Trial and Appeal Board (“TTAB”) proceeding in which Harjo sought...

Connect:

About Gibbons

With 200 attorneys, Gibbons is a leading law firm in New Jersey, New York, Pennsylvania, Delaware, Washington, DC, and Florida, ranked among the nation’s top 200 by The American Lawyer. More…

Subscribe

Archived Blog Posts

Categories