IP UPDATE
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IP UPDATE
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Results for "Trademark appeal"
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When It’s All In the Family: Reverse Confusion Not a Basis for Broad Trademark Remedies

by | Jan 8, 2020 |

Addressing reverse confusion and scope of available remedies, the US Court of Appeals for the Seventh Circuit upheld a district court’s refusal to award infringing profits and a broad permanent injunction after a jury found infringement. Fabick, Inc. v. JFTCO, Inc., Case Nos. 19-1760; -0072 (7th Cir. Dec. 9, 2019) (Flaum, J.)

This trademark dispute originates with a family feud. John Fabick, founder of the John Fabick Tractor Company, purchased two Caterpillar equipment dealerships intending for his son, Joe, to operate the dealerships. At the time, the John Fabick Tractor Company had used the mark FABICK in connection with its business. Joe later founded FABCO, which sold Caterpillar equipment and related goods. Eventually, one of Joe’s sons, Jeré, took over FABCO.

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Supreme Court: PTO Not Entitled to Attorney’s Fees in District Court Appeals

by | Jan 2, 2020 |

PATENTS / PTO ATTORNEY’S FEES

In a unanimous decision authored by Justice Sotomayor, the Supreme Court of the United States held that the US Patent and Trademark Office (PTO) is not entitled to recover its attorney’s fees in an appeal to a district court from an adverse decision of the Patent Trial and Appeal Board (PTAB) under 35 USC § 145. Peter v. NantKwest, Inc., Case No. 18-801 (Supr. Ct. Dec. 11, 2019) (Sotomayor, Justice).

The question posed in this case was:

[W]hether such “expenses” [in § 145 proceedings] include the salaries of attorney and paralegal employees of the United States Patent and Trademark Office (PTO).

The answer was a resounding “no.”

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Seventh Circuit Formally Adopts Octane Fitness Standard for Trademark Cases

by | Jan 2, 2020 |

TRADEMARKS / ATTORNEY’S FEE AWARD

The US Court of Appeals for the Seventh Circuit officially joined its sister circuits in holding that the Supreme Court standard for awarding attorney’s fees in patent cases, set forth in Octane Fitness, LLC v. ICON Health & Fitness, Inc., was equally applicable to attorney’s fees claims under the Lanham Act. In doing so, the Seventh Circuit overruled its prior holding that a plaintiff’s claims were only “exceptional” under the Lanham Act if they constituted an abuse of process. LHO Chicago River, LLC v. Perillo, Case. No. 19-1848 (7th Cir. Nov. 8, 2019) (Manion, J).

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In the doghouse? Tarnishment requires proof of reputational harm

by | Aug 13, 2026 |

In the latest chapter of a long-running dispute, the US Court of Appeals for the Ninth Circuit vacated a permanent injunction against VIP Products’ “Bad Spaniels” dog toy, finding that Jack Daniel’s Properties, Inc., (JDPI) failed to establish that the parody was likely to harm the reputation of its famous marks. The Court also explained that although parody does not automatically escape dilution liability when used as a source identifier, a product’s parodic nature remains relevant to whether consumers are likely to form a damaging association with the famous mark. VIP Products LLC ⁠v. Jack Daniel’s Properties Inc., Case No. 25-2027 (9th Cir. August 4, 2026) (Berzon, Smith, Hurwitz, JJ.)

VIP Products sells a line of dog toys parodying well-known alcohol bottles. Its Bad Spaniels toy mimics the appearance of a Jack Daniel’s whiskey bottle but replaces “Jack Daniel’s” with “Bad Spaniels,” “Old No. 7” with “Old No. 2,” and “Tennessee Whiskey” with “Tennessee Carpet,” along with references to dog waste.

JDPI sued VIP for trademark infringement and dilution. The dispute ultimately reached the US Supreme Court, which in 2023 held that VIP could not invoke the Trademark Dilution Revision Act’s statutory parody exclusion because VIP used the challenged designations as source identifiers for its own goods.

On remand, the district court found no likelihood of confusion but concluded that Bad Spaniels diluted JDPI’s trademarks by tarnishment and entered a permanent injunction. VIP appealed.

The Ninth Circuit explained that a dilution-by-tarnishment claim requires the trademark owner to establish, among other things, that the asserted mark is famous and that the challenged use creates an association likely to harm the famous mark’s reputation. The Court emphasized that the analysis must be conducted on a mark-by-mark basis. Fame established for one mark cannot automatically be attributed to related marks.

Applying that framework, the Ninth Circuit found that JDPI had established fame for the Jack Daniel’s word mark and registered trade dress, but not for certain other asserted marks, including “Old No. 7.” That distinction was significant because some of Bad Spaniels’ more overt scatological references corresponded to marks that JDPI had not independently shown to be famous.

The Ninth Circuit also found JDPI’s evidence of likely reputational harm insufficient. JDPI’s expert relied on general consumer psychology research suggesting that associations between food or beverages and defecation may produce disgust, but he did not conduct a study examining consumer reactions to Bad Spaniels itself. The Court concluded that such generalized evidence did not establish that consumers would transfer negative associations from the parody dog toy to JDPI’s famous marks.

The Ninth Circuit further faulted the tarnishment analysis for failing to account for the toy’s parodic character. Although parody is not categorically exempt from dilution liability when the challenged use itself functions as a trademark, the Court explained that parody remains relevant to whether consumers are likely to make an association that harms the famous mark’s reputation. Because Bad Spaniels unmistakably mocked Jack Daniel’s, as opposed to presenting itself as Jack Daniel’s, the Court [...]

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Same patent, same light: Director vacates IPR decision at odds with ITC decision

by | Aug 13, 2026 |

The director of the United States Patent & Trademark Office (USPTO) vacated a Patent Trial and Appeal Board final written decision finding challenged claims obvious where the US International Trade Commission, considering the same patent, parties, and obviousness theory, had reached the opposite conclusion. The director found that the Board had not adequately justified departing from the Commission’s analysis. Biofrontera Inc. v. Sun Pharmaceutical Industries Inc., IPR2024-01312 (USPTO Dir. July 29, 2026) (Squires, Dir.)

Biofrontera petitioned for inter partes review (IPR) of a Sun Pharmaceutical patent directed to a photodynamic dermatology device. The Board instituted review and ultimately found all challenged claims unpatentable as obvious.

The same patent was also at issue in a Section 337 investigation before the Commission. Sun Pharmaceutical had accused Biofrontera of importing certain photodynamic therapy systems that infringed two patents. An administrative law judge (ALJ) found infringement and recommended an exclusion order. The ALJ also found that Biofrontera had not shown the claims of the patent at issue in the IPR to be obvious.

Before the Board, Biofrontera argued that the ALJ’s determination did not warrant deference because it was not yet final, remained subject to Commission review, and was based on a different evidentiary record and burden of proof. The Board agreed and reached the opposite conclusion on obviousness.

On Director Review, the director rejected the Board’s explanations and vacated the final written decision. The director concluded that the Board had not identified a sufficient basis for reaching a patentability determination inconsistent with the Commission’s assessment of the same obviousness theory.

The director first rejected the Board’s reliance on the non-final status of the ALJ’s determination. By the time of Director Review, the full Commission had upheld the ALJ’s conclusion that Biofrontera had not shown the claims obvious, eliminating the finality concern on which the Board had relied. The director further explained that even a non-final ALJ determination may remain relevant when the Board considers whether parallel proceedings justify terminating or otherwise declining to continue an IPR.

The director also found that differences in the evidentiary records did not adequately explain the conflicting results. Although the IPR included expert testimony that had not been presented at the Commission, the Board did not sufficiently explain why that testimony warranted reaching a different conclusion on the same prior art combination.

Nor did the differing burdens of proof resolve the inconsistency. The director acknowledged that an IPR applies the preponderance-of-the-evidence standard, while a Commission respondent challenging patent validity faces a higher burden. But the difference in standards, standing alone, did not explain why the two tribunals reached conflicting factual conclusions regarding the same claim limitation and prior art combination.

Finding no adequate justification for the divergence, the director vacated the Board’s final written decision and dismissed the IPR petition rather than remanding for further proceedings.

Practice Note: Parties litigating patent validity in parallel Board and Commission proceedings should expect prior findings from one forum to receive meaningful consideration in the other, particularly where the same parties, prior [...]

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Heirs’ lights flicker out: Sixth Circuit affirms MillerKnoll’s Bubble Lamp rights

by | Jul 23, 2026 |

The US Court of Appeals for the Sixth Circuit affirmed summary judgment for the manufacturer of an iconic lamp design, finding that the designer’s heirs could not pursue trademark infringement and related tort claims based on the contractual transference of ownership and use of the intellectual property associated with the lamp. The Court concluded that the governing agreements authorized the manufacturer’s conduct and that the designer’s family later ratified the manufacturer’s ownership by accepting royalties with knowledge of its ownership claim. Nelson v. MillerKnoll, Inc., Case No. 25-1940 (6th Cir. July 7, 2026) (Boggs, Clay, Gilman, JJ.)

George Nelson, a prominent mid-century furniture designer, created the cloth-covered hanging fixtures known as the Bubble Lamp while serving as design director of Herman Miller, now MillerKnoll. George and Herman Miller did not enter into a formal written agreement addressing ownership of the Bubble Lamp’s intellectual property during the designer’s employment.

After George’s death, his widow, Jacqueline Nelson, entered into a 2006 agreement under which Herman Miller agreed to pay royalties on certain products designed by George. In 2015, while a related foundation was litigating against another company that had registered and sold Bubble Lamp trademarks, George’s son, Mico Nelson, executed an addendum on Jacqueline’s behalf. The addendum expanded the royalty arrangement to include “Nelson branded Lamp Products” and granted Herman Miller exclusive worldwide rights to manufacture, use, sell, and license those products.

Herman Miller later acquired the Bubble Lamp business and related trademark registrations, including two product-configuration marks and the BUBBLE LAMP word mark.

The Nelson family sued MillerKnoll, alleging that it had improperly obtained the Bubble Lamp’s intellectual property as part of a broader scheme to deprive the family of George’s rights. The complaint asserted federal and state trademark infringement, fraud, conspiracy, unjust enrichment, and cancellation of the trademark registrations. The district court granted summary judgment to MillerKnoll on all claims. The Nelson family appealed.

The principal issue on appeal was whether the 2006 agreement and 2015 addendum merely licensed MillerKnoll to use the Bubble Lamp’s intellectual property or also authorized MillerKnoll ownership of that intellectual property.

Applying Michigan contract law, the Sixth Circuit concluded that the agreements unambiguously granted MillerKnoll both ownership and use rights. Although the agreements referred to “Licensed Products,” that term was contractually defined to include products whose rights MillerKnoll owned. Other provisions granted MillerKnoll “exclusive right, title, and interest” in the covered designs and the sole right to enforce the associated proprietary rights.

That contractual authorization defeated the Nelson family’s Lanham Act claim. The Sixth Circuit explained that authorized use of a mark cannot support an infringement claim under § 43(a) because authorized conduct does not create the type of source confusion the statute is intended to prevent.

The same reasoning foreclosed the state-law trademark and tort claims. Because the agreements authorized MillerKnoll’s ownership and use of the Bubble Lamp’s intellectual property, the Nelson family could not recover for conduct to which it had consented.

The Sixth Circuit also concluded that Mico independently ratified MillerKnoll’s ownership. [...]

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USPTO extends deadline for requesting director review of decisions instituting trial

by | Jul 16, 2026 |

The United States Patent and Trademark Office (USPTO) updated its director review process by extending the deadline for requesting director review of decisions made in Patent Trial & Appeal Board proceedings from 14 to 30 days.

Under 37 C.F.R. § 42.75(c)(1), a request for director review must be filed within the time period set forth in 37 C.F.R. § 42.71(d), unless the director grants an extension for good cause. Section 42 generally requires that a request for director review be filed within 14 days of a decision instituting trial or 30 days of a final decision or a decision denying institution.

In a precedential order in Light & Wonder, Inc. v. Evolution Malta Ltd., IPR2025-01072, Paper 30 (Director June 22, 2026), however, the director waived the 14-day deadline and extended it to 30 days. The USPTO has now incorporated that change into its published director review process.

The updated process explains that the deadline may be extended in exceptional circumstances, provided that “the trial has not progressed meaningfully.” Examples of exceptional circumstances include:

  • Dismissal of all or substantially all claims in co-pending litigation
  • Findings of fact and conclusions of law rendering all or substantially all challenged claims invalid in litigation
  • Violation of a Sotera stipulation

Parties seeking an extension based on exceptional circumstances must email Director_PTABDecision_Review@uspto.gov, copy counsel for all parties, and explain in three sentences or fewer why an extension is warranted. The remaining parties will then be given an opportunity to respond.



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Up in smoke: Eighth Circuit sends Lanham Act dispute to state court

by | Jun 25, 2026 |

The US Court of Appeals for the Eighth Circuit affirmed dismissal of a trademark dispute on forum non conveniens grounds, finding that the Lanham Act claims concerning ownership and scope of trademark rights arose out of a stock purchase agreement and therefore belonged in the state court designated by the parties’ forum selection clause. Vaughn Boyd v. Deadwood Tobacco Company, Case No. 25-1659 (8th Cir. June 8, 2026) (Smith, Kelly, Grasz, JJ.)

The dispute stemmed from the 2018 sale of Deadwood Tobacco, a South Dakota cigar business associated with the DEADWOOD family of marks. Prior to the sale, Deadwood Tobacco and Drew Estate had collaborated on a successful cigar line sold under names including Sweet Jane, Fat Bottom Betty, and Crazy Alice. The stock purchase agreement reserved trademark registrations associated with those three brands from the transaction. After acquiring the company, the new owners launched additional cigar products under other Deadwood Tobacco branding. Vaughn Boyd and Drew Estate (the sellers under the agreement) subsequently alleged that the new products infringed trademark rights they had retained under the agreement.

After the parties failed to reach a resolution, Boyd and Drew Estate filed suit under the Lanham Act in federal district court in Florida. The district court concluded that the asserted trademark claims arose out of the stock purchase agreement and therefore fell within the scope of the agreement’s South Dakota forum selection clause.

Following that dismissal, Deadwood filed a related contract suit in South Dakota state court and Boyd and Drew Estate countered with a Lanham Act claim in federal district court in South Dakota. The South Dakota district court likewise determined that the dispute arose from the agreement and that the forum selection clause was valid and mandatory. Boyd and Drew Estate appealed the district court decision.

On appeal, Boyd and Drew Estate argued that their claims arose exclusively under federal trademark law rather than contract law and therefore did not “arise out of” the agreement. They further contended that the forum selection clause was permissive rather than mandatory and could not divest federal courts of jurisdiction. Finally, they asserted that public policy favored adjudication of Lanham Act claims in federal court.

The Eighth Circuit rejected each argument. Beginning with trademark ownership, the Court emphasized that trademark rights are inseparable from the goodwill they represent. Because determining the scope of Boyd and Drew Estate’s retained trademark rights required analyzing what goodwill, if any, accompanied the reserved marks, resolution of the dispute necessarily depended on interpreting the stock purchase agreement. The Court therefore concluded that the trademark claims arose out of the agreement, notwithstanding that they were pleaded solely under the Lanham Act.

The Eighth Circuit also found that the forum selection clause was mandatory. The agreement provided that disputes arising out of the agreement “shall” be venued in Lawrence County, South Dakota, and that the Lawrence County circuit court “shall have jurisdiction.” Applying South Dakota law, the Eighth Circuit found the language unambiguously mandatory and concluded that the reference to [...]

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Hague Service Convention: A “closed universe” of permissible service methods

by | Jun 11, 2026 |

The US Court of Appeals for the Seventh Circuit reversed a district court decision denying a motion to vacate a default judgment for lack of proper service under the Hague Service Convention, finding that where the Convention applies, it provides the exclusive means of valid service and prohibits email service in China. Kangol LLC v. Hangzhou Chuanyue Silk Import & Export Co., Ltd., Case No. 25-2205 (7th Cir. May 29, 2026) (Kirsch, Jackson-Akiwumi, Pryor, JJ.)

Kangol sued several defendants, including Hangzhou, for trademark infringement, counterfeiting, unfair competition, false designation of origin, and trademark dilution. Kangol moved for a temporary restraining order (TRO) and permission to serve Hangzhou by email, which the district court approved. Kangol sent an email to Hangzhou that included a link to the complaint, TRO, and additional documents, after which the parties engaged in settlement discussions.

Because Hangzhou did not appear before the district court, the court entered default judgment in favor of Kangol. Subsequently, Hangzhou filed a motion to vacate the default judgment, arguing that the judgment was void under Federal Rule of Civil Procedure 60(b)(4) because the Hague Service Convention does not permit service by email in China. The district court denied the motion, concluding that the Convention allows service by email in China. Hangzhou appealed.

Hangzhou argued that the judgment was void under Rule 60(b)(4) for lack of personal jurisdiction because email service violated the Convention. The Seventh Circuit reviewed the issue de novo and analyzed whether the Convention applied, and if so, whether it prohibits email service in China.

Before reaching the merits, the Seventh Circuit rejected Kangol’s arguments that Hangzhou had waived its service objection and that its motion to vacate was untimely. The Court explained that Hangzhou’s participation in settlement discussions did not create a reasonable expectation that it would defend the suit on the merits or otherwise constitute waiver of its jurisdictional objections. The Court also found that Hangzhou’s Rule 60(b)(4) motion was filed within a reasonable time under Federal Rule of Civil Procedure 60(c)(1), noting that Hangzhou sought relief shortly after Kangol successfully enforced a portion of the default judgment by collecting funds from one of Hangzhou’s online accounts.

Kangol argued that the Hague Service Convention did not apply because Article 1 excludes cases in which the address of the person to be served is not known, and Kangol maintained that Hangzhou’s address could not be reliably determined despite Kangol’s efforts to do so. In evaluating whether a defendant’s address is “not known,” district courts generally require plaintiffs to undertake reasonably diligent efforts to ascertain the defendant’s mailing address. The district court, however, did not determine whether Kangol’s efforts satisfied that standard, concluding instead that it need not resolve the Convention’s applicability because, even if the Convention applied, it permitted service by email in China.

The Seventh Circuit first analyzed the text and structure of the Hague Service Convention, relying on Supreme Court precedent (including Société Nationale Industrielle Aérospatiale v. US District Court for the Southern District of Iowa [...]

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AIA reviews: An alternative to litigation, not a second chance

by | May 28, 2026 | ,

Addressing the scope of discretionary institution under the America Invents Act (AIA), the United States Patent and Trademark Office (USPTO) denied institution of inter partes review (IPR), concluding that the petitioner was attempting to use the Patent Trial & Appeal Board as a “second bite at the apple” after unsuccessfully litigating substantially similar invalidity issues in district court, contrary to the AIA’s purpose of providing a streamlined alternative to litigation. Magnolia Medical Technologies, Inc. v. Kurin, Inc., IPR2026-00097, Paper 17 (Director May 14, 2026).

Magnolia challenged the validity of Kurin’s patent directed to a blood-testing device in district court. After the district court excluded Magnolia’s invalidity expert based on disclosure deficiencies related to claim construction and a jury subsequently found the patent not invalid, Magnolia filed an IPR petition asserting substantially similar anticipation and obviousness grounds. The Director denied institution, concluding that Magnolia had already had a full and fair opportunity to litigate those issues in district court and was improperly attempting to relitigate them before the Board.

The Director explained that Congress created IPRs and post-grant reviews (PGRs) under the AIA to provide streamlined and cost-effective alternatives to district court litigation, not to facilitate repetitive validity challenges or expand parallel litigation. The decision noted that, in practice, many petitioners pursue AIA review alongside district court litigation, sometimes asserting overlapping invalidity theories or taking inconsistent positions across forums, thereby increasing costs and burdening both patent owners and the USPTO.

The Director further emphasized that AIA proceedings serve broader public-interest objectives beyond resolving private disputes, including promoting efficiency, fairness, predictability, and the integrity of the patent system. In exercising discretionary institution authority, the USPTO considers factors such as examiner error, inconsistent positions across forums, settled expectations, and whether institution would represent an appropriate use of USPTO resources.

Applying those principles, the Director concluded that Magnolia’s petition fell outside the intended purpose of AIA review because Magnolia was not using the Board as an alternative forum for resolving validity disputes, but instead to relitigate substantially similar invalidity theories after an unfavorable outcome in district court. The Director emphasized that Magnolia had already contested validity in district court using anticipation and obviousness grounds similar to those asserted in the petition and that the parties had expended substantial resources litigating those issues.

The Director rejected Magnolia’s argument that institution was warranted because no tribunal had adjudicated the merits of its anticipation and obviousness theories after the district court excluded its expert testimony. According to the Director, Magnolia had a full and fair opportunity to litigate those issues, and the exclusion of its expert resulted from deficiencies within Magnolia’s control. Permitting institution under those circumstances, the Director explained, would improperly allow Magnolia to obtain a “second bite at the apple” before the USPTO.

In discussing the public-interest considerations that inform discretionary institution decisions, the Director highlighted several precedential and informative decisions addressing issues such as substantial examiner error, inconsistent positions across forums, foreign sovereign petitioners, and settled expectations. The Director explained that these decisions reflect [...]

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