Rochford in Law360: Trademark Cases to Watch in 2018

01/05/2018

Law360 quoted Richard Rochford, co-head of Haynes and Boone’s Trademark Practice Group, in a preview of big cases ahead in the field.

Law360 reported that it's going to be another busy year in the world of trademark law, featuring Tiffany and Costco's ongoing fight over rings, Adidas' efforts to shut down a Skechers look-alike, and many more important courtroom battles. ... 

The years-long case filed by Tiffany & Co. against Costco Wholesale Corp. over the unauthorized use of "Tiffany" on signage for diamond engagement rings will finally shift to the Second Circuit in 2018.

A federal judge ruled way back in 2015 that Costco was liable for trademark infringement and counterfeiting for using the name, but the case has been meandering through district court over damages. Costco was denied an immediate trip to the Second Circuit.

Following a damages trial in 2016, U.S. District Judge Laura Taylor Swain ordered the big-box retailer in August to pay $11.1 million in profits and $8.25 million in punitive damages, an unusually high number for a trademark case.

That cleared the way for Costco to finally lodge an appeal in early September to the Second Circuit, where experts expect an interesting examination of that eye-popping award. ...

One thing to watch? How the Second Circuit deals with Swain's decision to impute a portion of Costco's membership revenues when calculating the profits it needed to fork over to Tiffany. Costco has argued it lacked a basis in the record.

"They could argue that this imputation didn't really take place in any kind of scientific way that you often see in damages analysis," said Richard Rochford, co-head of the trademark practice at Haynes and Boone, LLP. "It'll be interesting to see how closely the Second Circuit looks at that."

The case is Tiffany & Co. v. Costco Wholesale Corp., case number 17-2798, at the U.S. Court of Appeals for the Second Circuit. ...

In a case pitting Adidas AG against Skechers USA Inc., the Ninth Circuit could provide an answer in 2018 to a major open question in trademark law: How does a plaintiff show enough irreparable harm for a preliminary injunction?

That question has been a source of aggravation for trademark attorneys since the U.S. Supreme Court's 2006 ruling in eBay Inc. v. MercExchange LLC, which overturned a long-standing presumption of "irreparable harm" when a plaintiff can show infringement is likely.

In 2013, the Ninth Circuit applied eBay to reverse a preliminary injunction granted in a trademark case filed by the estate of musician Herb Reed, saying a lower court's "cursory and conclusory" look at irreparable harm had lacked "any evidence or showing." More than mere "platitudes" about harm to reputation and goodwill are needed, the court said.

But satisfying that standard is difficult in the context of a trademark case, where the kind of evidence that shows you will eventually win the case on the merits almost inherently overlaps with evidence of irreparable harm. It's one thing to say more than that must be shown; it's another thing to figure out what that is.

"It's a big lingering question," Rochford said. "If it's infringing our brand, of course it's going to hurt us. But what do you say that's not a tautology to support that?" ...

The case is Adidas America Inc. et al. v. Skechers USA Inc., case number 16-35204, in the U.S. Court of Appeals for the Ninth Circuit. ...

Excerpted from Law360. To read the full article, click here (Subscription required).

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