Intellectual Property Law

STL's Top-Five List of Trademark Cases Decided Since Last September

By Michael Atkins

A colleague asked me for my top-five list of trademark cases decided since last September. Here’s my response:

1. Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009) (finding keyword sale of trademark constitutes “use” in commerce, vacating dismissal in favor of Google)
2. Board of Supervisors for Louisiana State University Agricultural and Mechanical College v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008) (affirming jury’s judgment for universities in trademark infringement case against sellers of t-shirts using schools’ color schemes)
3. Adidas America, Inc. v. Payless Shoesource, Inc., 2008 WL 4279812 (D.Or.) (scaling back largest-ever $305 million jury verdict to a still-hefty $65 million in three-stripe vs. two- and four-stripe athletic shoe infringement case)
4. AutoZone, Inc. v. Strick, 543 F.3d 923 (7th Cir. 2008) (good likelihood of confusion analysis in reversal of hard-fought trademark infringement case, which also was one of the first dilution cases under the TDRA)
5. O’Keefe v. Ogilvy & Mather Worldwide, Inc., 590 F.Supp.2d 500 (S.D.N.Y. 2008) (dismissing on summary judgment Web designer’s infringement suit claiming American Express’ use of the slogan, MY LIFE. MY CARD., was likely to cause confusion with his mark, MY CARD. MY WORK). 

I’ll stand by my top three, but admit the other two were kind of a tossup. What cases would make your top-five list?

Full post as published by Seattle Trademark Lawyer on August 13, 2009 (boomark / email).