Top Trademark Cases for 2024 and What to Watch for in 2025
“The extent of Jack Daniel’s remains to be seen, especially since a defendant continues to have the ability to assert a parody defense.”
This year was an eventful one for trademark law–from reiterating the importance of “association” under the Lanham Act, to dispelling the notion that foreign conduct can create liability, to re-working the protection of expressive works after Jack Daniel’s. Below outlines a few of the important trademark decisions from 2024 and cases we are watching in 2025.
Nominative Fair Use Defense Fails Where Party Does Not Actively Dispel Association
The Southern District of Florida drew guidance from the Ninth Circuit when it found a band using the name “Earth, Wind & Fire” did not meet the standard for a nominative fair use defense in the face of trademark infringement claims brought by the owner of the EARTH, WIND & FIRE trademarks. See Earth, Wind & Fire IP, LLC v. Substantial Music Grp., no. 23-20884-CIV 2024 WL 105265 (S.D. Fla. Mar. 4, 2024). A former Earth, Wind & Fire guitar (whose time with the band was in dispute) joined a band that operated under names such as “Earth Wind & Fire Legacy Reunion,” The Legacy Reunion of Earth, Wind & Fire,” or “Legacy Reunion of Earth Wind & Fire alumni” and used a logo similar to the The district court applied the New Kids on the Block Test to determine whether the nominative use defense was valid in the context of two summary judgment motions. This test finds that nominative use is allowed if the product or services in question cannot be identified without the trademark, if only a reasonable amount of the mark can be used to identify the product, New Kids on the Block, v. News Am. Publ’g, Inc., 971 F.2d 302, 308 (9th Cir. 1992).
The defendants failed to meet the third prong of test because their advertising didn’t include a disclaimer or limiting words about who the performers in the “Legacy Reunion of Earth Wind & Fire alumni” band were. Instead, defendants’ advertising highlighted Earth, Wind & Fire’s legacy, while the website discussed the original band’s accolades and described the band’s original members. The district court concluded that the “advertising and marketing” were still misleading and deceptive in claiming that the main members (or most well-known) of the band will be performing. The takeaway[by Plaintiff] is that there is often a thin line between infringement, and fair use. New Kids on the Block remains the operable test – the junior user is not immune from an infringement claim if it uses the senior user’s trademark more than is necessary.
Pennsylvania Jury Confirms ‘Association’ Is Covered Protection Under Lanham ActA Pennsylvania jury found that Defendant Vintage Brands, LLC infringed Plaintiff The Pennsylvania State University (“Penn State”) trademarks by selling unlicensed goods with designs associated with, but not owned by, Penn State. Vintage Brands is an online retailer that sells “vintage” products by using old designs. It claims these designs are in the public domain, and are not subject to any trademark rights owned by colleges or sports teams. Vintage Brands, an online retailer, displayed merchandise on its website that was similar to Penn State registered design marks and also used the PENNSYLVANIA State University and PENNSTATE marks. The jury found that it did.
The Takeaway
: Even if a design is no longer registered to or used by the original trademark owner, an infringement claim may lie if consumers continue to associate that design with the original trademark owner. The jury decided that it did.
The Takeaway[u]A design may be a trademark infringement claim even if the original trademark holder no longer uses or registers the design. This is because consumers will continue to associate the design with the original trademark holder.
The Lanham Act does not extend extrater The Lanham Act does not extend extraterritorially without a sufficient domestic anchorOn remand from the Supreme Court, the Tenth Circuit determined that a previously licensed distributor using its former licensor’s marks abroad lacked a “domestic anchor” to be held liable under the Lanham Act 2024). Hetronic Int’l, Inc. filed a lawsuit in 2014 against Abitron Austria GmbH, among others, for trademark infringement, unfair competition, and unfair competition due to Abitron’s usage of Hetronic’s mark on products sold inside and outside the United States. Hetronic was awarded $90 million by a jury and the district court issued a worldwide injunction to prevent Abitron from using Hetronic marks. See Hetronic Int’l, Inc., v. Hetronic Germany GmbH, and others. Case No. CIV-14-650-F, 2020 WL 1941309 (W.D. CIV-14-650F, 2020 WL 41309 (W.D. Okla. Apr. 22, 2020). Abitron appealed arguing that the Lanham Act does not apply to sales outside the United States. Id., 10 F.4th 1016 (10th Cir. 2021). The case was eventually brought to the Supreme Court, which applied the “presumption of extraterritoriality framework”, and found that Lanham Act did not have an express intent to be extraterritorially applicable. Id., 600 U.S. 412 (2023). SCOTUS remanded this case back to Tenth Circuit for them to determine if Abitron’s conduct was domestic enough to be liable under the Lanham Act. Id.
As instructed, the Tenth Circuit determined “
ecause
requires infringing domestic commerce conduct to anchor any Lanham Act claim, Abitron’s pure foreign conduct–that’s foreign sales to foreign clients–cannot premise liability for Hetronic’s According to the Supreme Court’s interpretation of the Lanham Act, Abitron’s sales of over EUR1.5 million that ended up in the United States cannot be used as evidence of liability. This is because the location of the conduct and not the final destination of the infringing products is what matters. The Tenth Circuit did not accept Hetronic’s argument, that downstream sales to the United States would trigger liability under the Lanham Act. It stated that only “activities Abitron engaged through its U.S. Distributor to sell, market or advertise infringing products to U.S. Consumers [b]” violated The Tenth Circuit stated that any permanent injunction could not exceed Abitron’s “qualifying domestic conduct”. It remanded the case to the Western District Court of Oklahoma for the proper measurement of Hetronic damages based on Abitron’s domestic behavior only. Id. [Supreme]The Takeaway[]: Confirmation that the Lanham Act is territorial and foreign sales are likely unrecoverable in a U.S. litigation.
Ninth Circuit Urges Protection of Artistic Expression Absent Application of Rogers
One of the biggest trademark cases in 2023 was Jack Daniel’s Properties v. VIP Products LLC, 599 U.S. 140 (2023), where the U.S. Supreme Court held that Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. The test for assessing trademark infringement involving expressive works, as set forth by 1989), does not apply when the senior user’s marks are used to identify a product and not only used with expressive work. In 2024., many district and appellate court applied the Jack Daniel’s decision. For example, the Ninth Circuit re-examined its decision in Punchbowl, Inc. v. AJ Press, LLC, 1990 F.4th 10022 (9th Cir. The Rogers v. Grimaldi Test was previously used in 2024. Punchbowl, Inc., a company that specializes in online greeting cards and invitations, filed a trademark infringement lawsuit against AJ Press, LLC, a publisher of “Punchbowl News” which provides newsletters, podcasts, videos, and other content related to government and current affairs. The district court applied Rogers’ test and granted AJ Press’s motion for summary judgement, concluding that the name “PUNCHBOWL”, which is protected expression, was not misleading in its source. See Punchbowl, Inc. v. AJ Press LLC,549 F. Supp. 3d 1061 (C.D. Cal. 2021). In November 2022 the Ninth Circuit confirmed. Id., 52 F.4th 1091 (9th Cir. Id., 52 F.4th 1091 (9th Cir. After Jack Daniel’s, The Ninth Circuit reconsidered their earlier decision, reversed it and remanded the case, holding that Rogers was not applicable because AJ Press used PUNCHBOWL to identify the source of their own goods. Punchbowl, Inc., 1990 F.4th, at 1031. In remanding to the district court to review the claims using the likelihood of confusion analysis, the Ninth Circuit strongly suggested that the district court come to the same conclusion of no infringement, noting that “the expressive nature of AJ Press’s use of the Punchbowl Mark and the fact that ‘punchbowl’ is a common word will certainly be relevant in the likelihood-of-confusion analysis. . . . The Takeaway
: The extent of Jack Daniel’s remains to be seen, especially since a defendant continues to have the ability assert a parody defense. The Takeaway
: The extent of Jack Daniel’s remains to be determined, especially because a defendant can continue to assert a defense of parody. Dewberry Engineers was originally a civil engineering firm that also provided surveying services. Later, the company expanded to provide real estate development on a nationwide basis. Dewberry Group provides real estate development services to Georgia through affiliates that are owned by John Dewberry. The parties sought judicial assistance in 2006, and then settled the dispute in 2007. Dewberry Engineers filed a lawsuit in 2020 for trademark infringement and breach of contract. The district court ruled in favor of Dewberry Engineers, and ordered the disgorgement of profits from Dewberry Group under common ownership. The court considered Dewberry Group, its affiliates and their common ownership as a single corporate entity when calculating profits from the use of infringing marks. The Fourth Circuit upheld this decision. The Supreme Court granted cert to determine whether an award of “defendant profits” under Lanham Act may include an order that the defendant disgorge profits of legally distinct non-party corporate affiliates. During oral arguments, the Justices questioned whether the $43,000,000 profits award affirmed in the Fourth Circuit was allowed under the just-sum provision of 15 U.S.C. SS 1117(a), given the circuit court’s scant consideration of equity considerations and the facts of the case. This case is one to watch because of the potential implications – a decision as to whether an affiliate’s profits can be included in a damages award may have an impact beyond trademark disputes.
Hermes Int’l et al. v. Rothschild appeal: The Second Circuit will soon decide on the Hermes Int’l et. al. v. Rothschild appeal, Case No. 23-1081. A jury found defendant Rothschild responsible for trademark infringement by selling “Metabirkins”, NFTs that used Hermes’ trademarks. During oral arguments held in October this year, the Second Circuit considered Rothschild’s apparent intention to mislead the consumer (as opposed purely to creating the NFTs out of artistic reasons), and whether affirming the verdict for Hermes could chill future artistic expression.
