Knobbe/Martens: Intellectual Property Law

Jeff Van Hoosear

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Misleading Ads are Not a Jeweler's Best Friend: The FTC's Crackdown on Diamond Ads

It’s been 70 years since Carol Channing first sang “Diamonds Are a Girl’s Best Friend” on Broadway, with Marilyn Monroe singing the more famous rendition four years later on the silver screen.  Around the same time as Monroe’s performance, a research group under the direction of General Electric created the first commercially successful synthetic diamond.  Fast forward several decades and there are now several methods by which “lab-created diamonds” or “synthetic diamonds,” as they are called in the industry, can be produced.

Skechers and Eliya Fight Over Shoe Design Patents Again

February 19, 2019 Brian M.Z. Reece and Jeff Van Hoosear

Eliya Inc., known for its BERNIE MEV® shoes, filed a declaratory judgment action against Skechers on January 29, 2019 in the U.S. District Court for the Southern District of New York.  Skechers had sent a cease and desist letter to Eliya accusing Eliya of infringing on two of Skechers’ shoe design patents, U.S. Pat. No. D821,724 (the “ ‘724 patent”) and U.S. Pat. No. D810,412 (the “ ‘412 patent”):


Saks & Calvin Klein Accused of Copyright and Patent Infringement

February 6, 2019 Loni Morrow and Jeff Van Hoosear

On December 28, 2018, both Calvin Klein and the parent company of the department store Saks Fifth Avenue, were sued by Wongab Corporation in the U.S.

Federal Circuit Weighs In on Converse's Midsole Trade Dress

November 27, 2018 Shuchen Gong and Jeff Van Hoosear

On October 30, 2018, the Federal Circuit weighed in on Converse’s Chuck Taylor trade dress infringement lawsuit. As reported in If the IP Fits, Wear It: IP Protection For Footwear – a U.S. Perspective, Converse filed over 30 lawsuits in the U.S. District Court for the Eastern District of New York in October of 2014, alleging trademark infringement of its famous Chuck Taylor designs by Fila, Tory Burch, Ralph Lauren, and Aldo, among others. Some of the district court cases settled in a few months, while others lasted over two years.



November 21, 2018 Vicki Y. Nee and Jeff Van Hoosear

On October 19, 2018 plaintiffs CAR-FRESHNER Corporation (“CFC”) and Julius Sämann Ltd (“JSL”) filed suit against Balenciaga America, Inc. for alleged trademark infringement, false designation of origin, trademark dilution, and unfair competition, under the Lanham Act and corresponding New York state law. Plaintiffs claim exclusive trademark rights in the LITTLE TREES air fresheners design in connection with a variety of goods, including key rings. 

When Plaid Goes Bad - Burberry Files Infringement Suit Against Target Over Burberry’s Iconic Plaid Design

On May 2, 2018, high-end fashion designer and retailer Burberry Limited filed a complaint in the Southern District of New York against big box retailer Target Corporation alleging trademark infringement and trademark counterfeiting (among other claims) for Target’s alleged “repeated, willful and egregious misappropriation of Burberry’s famous and iconic luxury check trademarks.

Beware! A Trademark Trial and Appeals Board Decision Can Stop You in Your Tracks

January 29, 2018 Nicole R. Townes and Jeff Van Hoosear

It has been a few years since the Supreme Court decision in the case B&B Hardware, Inc. v. Hargis Industries, Inc., and we are beginning to see the aftermath in the district courts.  In B&B Hardware, the Supreme Court held that decisions of the Trademark Trial and Appeal Board (“TTAB”) regarding whether a trademark should be entitled to federal registration can have a preclusive effect in trademark infringement actions in district court.  Specifically, the Supreme Court held that “[s]o long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply.”  See B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293, 1310 (2015).

Back-to-School Shopping: The New Fashion Buzzword is “Authentic”

July 31, 2017 Diana E. Wade and Jeff Van Hoosear

For many students in the United States, the first day of school is less than a month away. This means the back-to-school shopping season has started. Teenagers, middle schoolers, and fashion conscious parents of elementary school children will visit malls and outlets in search of new clothing, shoes, and accessories. Many of these shoppers will also visit the websites of retail stores and e-commerce websites.   

How to Avoid Mutilating Your Trademark

In a recent precedential decision, In re University of Miami, Serial No. 86616382 (T.T.A.B. June 6, 2017), the Trademark Trial and Appeal Board (the “TTAB”) clarified the scope of the doctrine of trademark mutilation.

Disparaging (or Maybe Not) Trademarks: The Supreme Court Hears Oral Arguments on In Re Tam

February 7, 2017 Julianna Simon and Jeff Van Hoosear

On January 18, 2017, the Supreme Court heard oral arguments regarding whether the Lanham Act’s provision refusing federal trademark registration to disparaging marks is invalid under the Free Speech Clause of the First Amendment.

Tiffany Wins the Generic Battle, and the Spoils of War are Significant

November 11, 2016 Jeff Van Hoosear and Diana E. Wade

In February of 2013, high-end jeweler Tiffany & Co. sued Costco Wholesale Corp. in the federal court for the Southern District of New York for using the designation “Tiffany setting” since 2007 in the sale of two styles of engagement rings.   According to the complaint, a sign in a Costco store in Huntington Beach, California stated: “605880 – PLATINUM TIFFANY VS2.1 1.00CT ROUND BRILLIANT SOLITAIRE RING 6399.99.”  Costco did not use the “Tiffany” designation in connection with any of its online advertising. 

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