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A longer version of this blog post originally published in March 2023 online by Retail TouchPoints. Reproduced with permission. Further duplication is not permitted.

Retailers often face brand policing challenges on online resale platforms such as Wayfair, Overstock.com, and eBay. Third-party resellers account for a significant portion of sales on these websites, where they are able to reach a large number of US consumers, and problems arise daily, often relating to brand owners’ dissatisfaction with the resellers and their sales practices. How can trademark and copyright laws help?
Continue Reading Policing Your Brand On Online Marketplaces: A Brief IP Overview For Retailers

Signed into law on December 27, 2020, the Trademark Modernization Act of 2020 (TMA) provides amendments to existing federal trademark law that will assist US retailers and other businesses with branding decisions. Congress passed the TMA as part of the COVID-19 relief and government-funding bill.
Continue Reading How Does the Trademark Modernization Act of 2020 Help You Protect Your Brand?

Trade dress, which includes the total look of a product (size, shape, color) is registrable as a trademark if, like a trademark, it identifies the source of a product. Thanks to a recent decision, In re Forney Industries Inc., Appeal No. 2019-1073, by the US Federal Circuit Court of Appeals (Federal Circuit), it may now be easier for businesses to obtain federal trademark registration for some color-based product packaging trade dress.
Continue Reading Your Color-Based Product Packaging Mark Might Be Protectable Trade Dress

Innovation and developments in technology bring both opportunities and challenges for retailers, and Hunton Andrews Kurth has a sophisticated understanding of these issues and how they affect retailers. On January 23, 2020, our cross-disciplinary retail team, composed of over 200 lawyers, released our annual Retail Industry Year in Review. …
Continue Reading 2019 Retail Industry Year in Review

A federal court in Pennsylvania has held that Liberty Mutual must defend its insured, Hershey Creamery Company, in an intellectual property infringement lawsuit because the suit raises claims that potentially implicate coverage under the policies’ personal and advertising injury coverages. The court further found that the alleged wrongful conduct was not subject to the policies’ IP infringement exclusion.
Continue Reading IP Lawsuit Triggers Insurers’ Duty to Defend

Branded keyword advertising—bidding for your company’s website to feature prominently near a search engine’s results for branded or trademarked terms—has been around for over a decade. But a recent line of cases concerning branded keyword advertising should be of concern to all online vendors. …
Continue Reading Exposure for Branded Keyword Advertising in Hospitality and Retail

The Ninth Circuit will decide whether Great Lakes Reinsurance must defend clothing company, In and Out, against a trademark infringement suit by Forever 21. The dispute focuses on exclusionary language in the general liability policy issued by Great Lakes to In and Out, which broadly bars coverage for claims stemming from violations of intellectual property rights, but which also excepts from the exclusion claims for copyright, trade dress and slogan infringement occurring in the company’s advertisements. …
Continue Reading Ninth Circuit to Decide Whether IP Exclusion Applies to Forever 21 Trademark Suit

On August 8, 2016, the Federal Trade Commission sued 1-800 Contacts, alleging that it entered into anticompetitive bidding agreements with 14 of its rivals. According to the administrative complaint, these bidding agreements are an unfair method of competition because they unreasonably restrain competition for bidding on online search advertising auctions and restrict truthful, non-misleading ads. Previously, 1-800 Contacts alleged that its rivals had engaged in trademark infringement by purchasing advertising space from online search engines when consumers searched for “1-800 Contacts.” Most of 1-800 Contacts’ rivals agreed to settle or avoid lawsuits by entering into the allegedly anticompetitive bidding agreements, which prohibit parties from bidding on their rivals’ trademarked terms. Additionally, all but one of the contracts also require the use of “negative keywords,” which will prevent an advertiser’s name from appearing if a rival’s name is used as a search term.
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Continue Reading FTC Sues 1-800 Contacts, Alleges Anticompetitive Agreements Among Competitors for Online Search

On June 14, 2016, two partners in Hunton’s Insurance Coverage Counseling and Litigation practice, Syed Ahmad and Jennifer White, published an article in Risk Management Magazine about how commercial general liability policies may help policyholders looking to recover attorney’s fees or fund settlements in trademark infringement litigation.
Continue Reading How Your CGL Policy May Help with Trademark Infringement Litigation

On Tuesday, December 22, 2015, the US Court of Appeals for the Federal Circuit issued a much-anticipated opinion regarding the constitutionality of the prohibition against “disparaging” trademarks. In an 9-3 en banc opinion, the Federal Circuit held that the exclusion of disparaging trademarks under Section 2(a) of the Lanham Act violates the First Amendment.

Many of the marks rejected as disparaging convey hurtful speech that harms members of stigmatized communities. But the First Amendment protects even hurtful speech …. The  government cannot refuse to register disparaging marks because it disapproves of the expressive  messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others.…

Continue Reading First Amendment Protects Hurtful Speech, Even Hurtful Trademarks