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April / May 2021 IP Newsletter

April 1, 2021

Confusion reigns
Ninth Circuit addresses counterfeiting claims
Counterfeiting is a form of trademark infringement, so you might naturally expect that it requires at least the same amount of evidence as an infringement claim to reach trial. One trademark holder, however, recently argued that counterfeiting claims don’t require a showing of a likelihood of consumer confusion. This article examines a recent case from the U.S. Court of Appeals for the Ninth Circuit that set the trademark holder straight.
Arcona, Inc. v. Farmacy Beauty, LLC, No. 19-55586 (9th Cir. Oct. 1, 2020)

Any way you slice it
Copyright Act requires domestic infringement
In an opinion hot out of the oven, the U.S. Court of Appeals for the D.C. Circuit recently weighed in on a case that tested the extraterritorial limits of the federal Copyright Act. Unfortunately for the U.S.-based copyright owner, the court determined that its allegations of infringement fell short of what was necessary to sustain a case against foreign defendants. This article reviews that case and the international reach of the U.S. Copyright Act.
IMAPizza, LLC v. At Pizza Ltd., No. 18-7168 (D.C. Cir. July 17, 2020)

USPTO responds to ruling with revised guidelines
In the wake of the U.S. Supreme Court ruling in the case last year, the U.S. Patent and Trademark Office (USPTO) has updated its guidance for evaluating so-called “” marks for trademark registration. Although the Court’s ruling opened the door to registration for such marks, applicants nonetheless may find it an uphill battle. This article reviews the USPTO guidance.

Objectively reasonable belief doesn’t preclude induced infringement liability
An alleged patent infringer’s conduct may be objectively reasonable — but that doesn’t mean the conduct can’t support liability for induced infringement. This short article highlights this lesson from a recent decision by the U.S. Court of Appeals for the Federal Circuit, where the defendant relied on a favorable court ruling and a stipulation by the parties that the plaintiff couldn’t show induced infringement.
TecSec, Inc. v. Adobe Inc. Nos. 19-2192, 2258 (Fed. Cir. Oct. 23, 2020)

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