We presented a webinar last week entitled How to Win Your Next Trademark Battle: Lessons Learned in 2023 to give brand owners and their lawyers an overview of key takeaways from last year’s trademark cases.

If you missed our live presentation, you can view a recording here. For a quick recap of the most important takeaways, keep reading:

  1. In Jack Daniel’s Properties, Inc. v. VIP Products LLC, the U.S. Supreme Court limited application of the two-factor Rogers test when a party asserts its use is “artistic” and entitled to a First Amendment defense to infringement claims. The test will not apply “when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods.” Instead, the traditional, multi-factor likelihood of confusion analysis will apply.
  2. In Abitron Austria GmbH et al v. Hetronic Int’l, Inc., the U.S. Supreme Court held that the Lanham Act was not intended to be applied extraterritorially, and only covers infringing activity occurring through “use in commerce” within the United States. Domestic parties that want to enforce their rights abroad must now do so on a jurisdiction-by-jurisdiction basis. They may also consider the possibility of non-U.S. misuse of their trademarks when drafting license or distribution agreements with non-U.S. parties.
  3. Trademark registrations for real-world goods may be sufficient to enforce brand owners’ rights in digital environments—at least according to the way Hermès International v. Rothschild has unfolded so far. Hermès, based on registrations for real-world goods, was awarded damages and a permanent injunction based on defendant Rothschild’s digital depictions of Hermes BIRKIN® bags attached to NFTs advertised using Hermès’ trademarks. Rothschild is appealing.
  4. The Federal Circuit, in Spireon, Inc. v. Flex Ltd., clarified the relative burdens of proof applied when a party raises a “crowded field” defense by asserting that third-party registrations of similar marks render the plaintiff’s mark “conceptually weak.” Specifically, when third-party registrations for identical marks and identical goods are asserted, the burden is on the plaintiff to prove non-use of those marks. The TTAB has since clarified that, in situations where the third-party marks or goods are not identical, the burden is on the defendant to prove the marks are in use.
  5. The Ninth Circuit, in San Antonio Winery, Inc. v. Jianxing Micarose Trade Co., became the first appellate court to decide whether service of process under 15 U.S.C. § 1051(e)—which allows service on a designated domestic representative or the Director of Trademarks—applies to court proceedings involving an applied-for or registered mark, as opposed to being limited to administrative proceedings before the TTAB. The Ninth Circuit’s conclusion that the statutory language includes cases filed in court, a conclusion already followed by courts in the Second and Eleventh Circuit, opens the door for a more simplified means of serving process on non-U.S. defendants.
  6. A precedential decision at the TTAB confirmed that ESTTA cover sheets are more than ministerial. In Sterling Computers Corp. v. IBM Corp., the Board held that claims asserted in an opposition to a Section 66(a) application (i.e., an application filed pursuant to the Madrid Protocol) are limited to those enumerated in the cover sheet form filed electronically with a Notice of Opposition, as opposed to the contents of the Notice itself. It is not possible to amend the cover sheet to add grounds that may have been included in the Notice.
  7. Priority in a TTAB opposition is established by pleading a prior registration—even when that registration was issued based on an application filing that post-dated the applicant’s first use and the filing of the opposed application. In Nkanginieme v. Appleton, the Board held that the applicant’s attempt to challenge the opposer’s priority at trial “amount[ed] to an impermissible collateral attack” against the opposer’s pleaded registration. The Board held that the applicant should have filed a separate opposition to the opposer’s application or else asserted a counterclaim for cancellation. By the time the applicant got to trial, it was too late, and priority was no longer a disputed issue by virtue of the existence of the “prior” pleaded registration.
  8. The TMA’s expungement and reexamination proceedings should not be overlooked when attacking prior registrations. Both can be filed by any third party, with the former used to address registrations where the mark has never been used on all or some of the identified goods/services, and the latter used to address registrations where the mark was not in use on all or some of the identified goods/services. While several thousand requests have been filed, many get rejected for failing to follow the USPTO’s specific requirements.