Hot Topics in Trademark Law 2015 Series: The Federal Circuit Clarifies Intent To Use – Part 1
December 29, 2015
by , Partner
Prior to the Trademark Law Revision Act of 1988 (“TLRA”), the owner of a mark had to be using his mark when he applied for registration. See Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357 (Fed. Cir. 2009). The TLRA changed this requirement and allowed mark owners to apply for registration before they actually used the mark in commerce, so long as the owner had a “bona fide intention … to use [the] mark in commerce” in the future.
Hot Topics in Trademark Law 2015 Series: How The Supreme Court’s Octane Fitness Decision Addressing “Exceptional Cases” In The Patent Context Is Affecting Lanham Act “Exceptional Cases”
December 22, 2015
by , Partner
Both the Lanham Act and the Patent Act allow an award of attorneys’ fees to a prevailing party in an “exceptional case.” See 15 U.S.C. 1117(a) (i.e., Lanham Act Section 35(a)); 35 U.S.C. 285. The “exceptional case” provision is identical in the two statutes; indeed, Congress referenced the patent “exceptional case” statute when it enacted the trademark “exceptional case” statute.
Hot Topics in Trademark Law 2015 Series: Hana Financial: The Jury Decides Whether “Tacking” Is Warranted
December 15, 2015
by , Partner
In Hana Financial, Inc. v. Hana Bank, 135 S.Ct. 907 (2015), Hana Financial sued Hana Bank, alleging that Hana Bank’s use of the mark “HANA BANK” infringed Hana Financial’s “HANA FINANCIAL” trademark. Id. at 910. Hana Bank responded by invoking the “tacking” doctrine to argue that it had priority based on its early use of the marks “HANA OVERSEAS KOREAN CLUB” and “HANA BANK.” Id. The earlier “HANA BANK” mark was stylized and similar, though not identical, to the “HANA BANK” mark at issue in the litigation.
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Hot Topics in Trademark Law 2015 Series: B & B Hardware: TTAB Rulings Really Do Matter
December 8, 2015
by , Partner
In B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S.Ct. 1293 (2015), the owner of the “SEALTIGHT” trademark sued the owner of the “SEALTITE” mark for trademark infringement and related claims. The parties engaged in a “labyrinthine” struggle spanning almost 20 years that included infringement litigation in which two separate juries entered verdicts and appeals were taken three times to the Eighth Circuit, as well as Opposition proceedings before the Trademark Trial and Appeal Board (“TTAB”). Id. at 1301. “The full story could fill a long, unhappy book.” Id.
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