TBJ January 2022

2021: The Year in Review

Trademark Litigation

Written by Shirazi Jaleel-Khan

Unlike in 2020, the U.S. Supreme Court didn’t take it upon itself to weigh in on any significant trademark issues; nevertheless, 2021 brought impactful changes to trademark practice with the Trademark Modernization Act of 2020, or TMA, effective December 2021.

The TMA introduced:1

a) A shortened office action response period of three months, with an option for an additional three-month extension with fees.2

b) Clarification of the “rebuttable presumption of irreparable harm” to trademark owners seeking injunction, preliminary injunction, or temporary restraining orders.

c) Cancellation of registrations via ex-parte expungement and reexamination.

d) Statutory provisions for letters of protest.

Jack Daniel’s v. VIP Products
VIP Products created a dog toy that Jack Daniels claimed to appropriate its trade dress. The U.S. Court of Appeals for the 9th Circuit found no infringement and the toy an expressive work, remanding it for rehearing using a higher standard of First Amendment protection.3 The petition for certiorari brought by Jack Daniels was denied by the U.S. Supreme Court, giving weight to First Amendment rights recognized by the court of appeals.

RXD Media, LLC v. IP Application Development LLC; Apple, Inc.4
Rights of an intervening junior user:

RXD created a “mobile internet notepad” named “ipad.mobi” in 2007. It applied for registration for “ipad” in 2010. Apple applied for registrations for “iPad” in July 2009 and January 2010, in connection with a long list of electronic goods and services. In 2010, Apple also acquired a trademark registration for “iPad” filed by Fujistu in March 2003, covering computers, digital goods, and business and marketing services. In 2016, RXD launched a new logo for ipad, and a rebranded website, for “ipadtoday.com” for cloud service and products similar to Apple products. In 2018, the Trademark Trial and Appeal Board approved Apple’s trademarks and refused registration of the RXD application. The U.S. Court of Appeals for the 4th Circuit concluded:

  • A party can become a senior user of a mark by acquiring from a previous owner an assignment of rights. “Apple stepped into the shoes of Fujitsu, thereby obtaining a ‘first use’ date of January 2002 and a ‘priority use’ date of March 2003.”5

  • The “law does not protect or permit a ‘first user’s’ expansion beyond its original product line into an area occupied by an ‘intervening junior user.’”6

  • RXD’s use of ipad in 2016 expanded its use and “RXD’s altered use of the mark in 2016 infringed on Apple’s rights, even if Apple were deemed not the senior user, because Apple would qualify as an ‘intervening junior user’ of the mark.”7

The Ohio State University v. Redbubble Inc.8
Trademark infringement, the liability, and responsibilities of online marketplaces:9

Courts have generally not found digital marketplace operators to be liable for infringing goods sold by vendors on their platforms. However, in this case, the court grappled with the responsibility placed on Redbubble whose operation differs from being an “independent intermediary” like Amazon.

Redbubble operates an online marketplace for print-on-demand products where users upload images to be printed and consumers can purchase customized items. Redbubble thereby facilitates the creation of goods bearing the trademark of others.

The U.S. Court of Appeals for the 6th Circuit found that the U.S. District Court for the Southern District of Ohio erred by “applying an overly narrow reading of the Lanham Act” and by finding Redbubble similar to other passive marketplaces and remanded it back.

1. The Trademark Modernization Act of 2020 incorporated in Consolidated Appropriations Act, 2021 (Public Law 116-260, Subtitle B, § 221).
2.Id. Sec. 224 and USPTO final rule.
3. VIP Prods., LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170 (9th Cir. 2020).
4. RXD Media, LLC v. IP Application Dev. LLC, No. 19-1461 (4th Cir. Jan. 21, 2021).
5. Id. at 12.
6. Id. at 13, quoting McCarthy on Trademarks and Unfair Competition § 24:20 (5th ed. 2020).
7. Id. at 11.
8. The Ohio State Univ. v. Redbubble, Inc., No. 19-3388 (6th Cir. Feb 25, 2021).
9. Id. at 1.

SHIRAZI JALEEL-KHAN is a trademark attorney at Pulse. She has over 10 years of experience in the field of trademark law with a focus on brand protection, trademark registration, and prosecution. Jaleel-Khan enjoys working with clients from diverse industries, helping them obtain trademark protection and build a strong trademark portfolio.


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