Likelihood of confusion
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Eye Don’t: No Counterfeiting Without Likelihood of Confusion

Referring to the act of counterfeiting as “hard core” or “first degree” trademark infringement, the US Court of Appeals for the Ninth Circuit for the first time confirmed that the Lanham Act requires a likelihood of confusion in order for the trademark holder to prevail on a counterfeiting claim. Arcona, Inc. v. Farmacy Beauty, LLC, et al., Case No. 19-55586 (9th Cir. Oct. 1, 2020) (Lee, J.) In doing so, the Court affirmed a grant of summary judgment in favor of defendant Farmacy Beauty in a counterfeiting action brought by skin care brand Arcona. Arcona’s counterfeiting claims (which remained in the district court action after Arcona requested dismissal of its trademark infringement and unfair competition claims) stemmed from Farmacy Beauty’s use of the term EYE DEW on its skincare products, which Arcona asserted to be counterfeit versions of its eye cream sold in the United States under the registered EYE DEW trademark. The district court, however, found...

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Stratus Update: Federal Circuit Affirms TTAB Refusal to Register Telecoms Mark

The US Court of Appeals for the Federal Circuit affirmed a US Patent & Trademark Office (PTO) Trademark Trial and Appeal Board (TTAB) refusal to register the mark STRATUS over the existing registration for STRATA, finding a likelihood of confusion between the two marks. Stratus Networks, Inc. v. UBTA-UBET Communications, Inc., Case No. 19-1351 (Fed. Cir. Apr. 14, 2020) (Reyna, J.). Stratus Networks, a telecommunications provider, filed an application at the PTO seeking to register its STRATUS mark: UBTA-UBET Communications, also a telecommunications provider, owns a PTO registration for its STRATA mark: UBTA opposed Stratus’s application for the STRATUS mark based on a likelihood of confusion with its registered STRATA mark. The TTAB found a likelihood of confusion and refused registration of the STRATUS mark. Stratus appealed, arguing that the two marks had coexisted for more than six years without confusion. The Lanham Act bars the registration of...

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