Law.com Subscribers SAVE 30%
Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.
When Winning Might Also Be Losing: The Preclusive Effects of Defending a Trademark Application or Registration
Last summer, the Third Circuit Court of Appeals in Jean Alexander Cosmetics, Inc. v. L'Oreal USA, Inc., 458 F.3d 244 (3rd Cir. 2006), joined a majority of the courts of appeal in holding that it would give full preclusive effect to any of the alternative holdings of a prior adjudication. In so doing, the court further highlighted the necessity of thinking both offensively and defensively at the earliest stages of a trademark dispute, including during proceedings before the Trademark Trial and Appeals Board ('TTAB').
In Jean Alexander, the Third Circuit was asked to determine the extent to which Jean Alexander Cosmetics, Inc. ('Jean Alexander') was precluded under the doctrine of collateral estoppel (issue preclusion) from arguing infringement of one of its marks by L'Oreal USA, Inc. and its predecessor ('L'Oreal'). L'Oreal had previously sought to cancel Jean Alexander's 1993 registration in its EQ SYSTEM mark and design, first used in 1990, arguing that this mark was confusingly similar to its SHADES EQ mark and design, first used in 1988, and a modernized version of this mark that L'Oreal began using in 1992.
Jean Alexander opposed the cancellation on two grounds: 1) that it had priority over the modernized version of L'Oreal's mark, and 2) that there was no likelihood of confusion between its mark and either the original or modernized version of the L'Oreal mark. The TTAB agreed with both arguments, first determining that the two L'Oreal marks were not 'legal equivalents' and that therefore L'Oreal was not entitled to claim 1988 as the date of first use of the modernized version of its mark. The TTAB then determined that there was no likelihood of confusion between the Jean Alexander's mark and either version of L'Oreal's mark. Though the TTAB's finding regarding the likelihood of confusion as to the modernized version of L'Oreal's mark was superfluous in light of its determination of priority, it was expressly made 'for the sake of completeness' and 'in case upon further review, it is determined that [L'Oreal's] original and modernized marks are legal equivalents.' Id. at 246. Neither party appealed this decision.
This premium content is locked for Entertainment Law & Finance subscribers only
ENJOY UNLIMITED ACCESS TO THE SINGLE SOURCE OF OBJECTIVE LEGAL ANALYSIS, PRACTICAL INSIGHTS, AND NEWS IN ENTERTAINMENT LAW.
- Stay current on the latest information, rulings, regulations, and trends
- Includes practical, must-have information on copyrights, royalties, AI, and more
- Tap into expert guidance from top entertainment lawyers and experts
Already a have an account? Sign In Now Log In Now
For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.
The Anti-Assignment Override Provisions
UCC Sections 9406(d) and 9408(a) are one of the most powerful, yet least understood, sections of the Uniform Commercial Code. On their face, they appear to override anti-assignment provisions in agreements that would limit the grant of a security interest. But do these sections really work?