IP UPDATE

Senate passes bill to improve CBP mechanisms to block importation of counterfeit goods

by Ian J. Howard | Aug 20, 2026 | Copyrights, Trademarks

Blocking the importation of counterfeit goods could soon become easier. On August 7, 2026, the US Senate unanimously passed S 2677, a bill that would allow greater coordination between US Customs & Border Protection (CBP) and relevant stakeholders in determining whether imported goods violate trademark or copyright law.

Sponsored by Senator Chuck Grassley and co-sponsored by Senator Margaret Wood Hassan, S 2677 would amend 19 U.S.C. § 1628a to authorize CBP to share nonpublic information to rightsholders for examination when assessing potential copyright or trademark violations. The bill would also expand the parties with which CBP may share information. While current law permits disclosure only to certain rightsholders, S 2677 would allow CBP to share information with “any other party with an interest in the merchandise, as determined appropriate by the Commissioner.” The bill would also permit such information sharing when CBP has a “reasonable suspicion” of a violation, rather than requiring officials to “suspect” one.

The US House of Representatives passed a very similar bill, HR 4930, on April 27, 2026, and the two versions will need to be reconciled. During House Ways and Means Committee proceedings, Chief Trade Counsel Joshua Snead and Representatives Blake Moore and Bradley Schneider explained that the legislation responds to concerns raised by CBP about constraints under existing law. According to Snead, CBP requested the changes and expressed concerns under both the Biden and Trump administrations that the Defend Trade Secrets Act could prevent it from sharing information useful to intellectual property enforcement. Representative Moore said the legislation would help CBP “recognize and flag patterns of behavior” by repeat offenders.

Ministerial requirements aren’t enough: Post-AIA prior art priority requires § 112 written description support

by Dexter Hamilton | Aug 20, 2026 | America Invents Act, Patents

The US Court of Appeals for the Federal Circuit vacated a Patent Trial & Appeal Board final written decision finding challenged claims obvious, concluding that the Board applied the wrong legal standard in determining whether an asserted prior art reference could obtain the filing date of an earlier provisional application based only on satisfaction of “ministerial requirements.” Dental Monitoring SAS v. Align Technology, Inc., Case No. 25-1752 (Fed. Cir. Aug. 10, 2026) (Lourie, Stall, Taranto, JJ.)

Dental Monitoring owns a patent directed to a method for acquiring and analyzing an image of a patient’s dental arch. Align Technology petitioned for inter partes review (IPR) of the patent based on three references: Salah, Carrier, and Maninis.

Carrier’s status as prior art was central to the dispute. Carrier claimed priority to a provisional application filed before the effective filing date of Dental Monitoring’s patent, but Carrier’s nonprovisional application was filed afterward. Thus, Carrier qualified as prior art only if it could obtain the benefit of its provisional application’s filing date under America Invents Act (AIA) § 102(d)(2).

Dental Monitoring argued that under the Federal Circuit’s 2015 decision in Dynamic Drinkware v. National Graphics, Carrier could rely on the provisional filing date only if the provisional provided written description support for at least one claim of Carrier. The Board disagreed, concluding that Dynamic Drinkware addressed only pre-AIA law. Instead, relying on its precedential decision in Penumbra v. RapidPulse, the Board determined that a reference patent receives the filing date of an earlier application for AIA prior art purposes if it satisfies the “ministerial requirements” of §§ 119 and 120 and the earlier application describes the subject matter relied upon in the reference. Because Carrier’s provisional described the relied-upon subject matter, the Board treated Carrier as prior art as of the provisional filing date.

On the merits, the Board found the claims unpatentable as obvious over a combination of three references. Dental Monitoring appealed.

The Federal Circuit reviewed the statutory question de novo, concluding that §§ 102(d)(2), 119(e)(1), and 112(a) foreclosed the Board’s ministerial requirements approach.

Section 102(d)(2) provides that a patent or patent application may be effectively filed for prior art purposes as of an earlier application’s filing date if it is “entitled to claim a right of priority” under § 119 or the benefit of an earlier filing date under § 120. Section 119(e)(1), in turn, permits a nonprovisional application to claim priority to a provisional only when the invention disclosed in the later application is disclosed in the provisional “in the manner provided by” § 112(a). The Federal Circuit therefore concluded that § 102(d)(2) incorporates § 112(a)’s substantive written description requirement. The Court also found further support in the phrase “entitled to claim a right of priority,” because an applicant would only be “entitled to claim priority” by fulfilling the statutory requirements, including § 112’s written description requirement.

Align argued that Dynamic Drinkware did not apply because its analysis was limited to the pre-AIA version of § [...]

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Keyword bidding alone doesn’t constitute trademark infringement

by Jolie B. Schenerman | Aug 13, 2026 | Trademarks

Addressing trademark infringement arising from online advertising, the US Court of Appeals for the Eleventh Circuit held that purchasing a competitor’s trademark as a keyword (keyword bidding), without displaying or otherwise referencing the mark in the resulting advertisement, does not constitute trademark infringement because the behind-the-scenes use is not likely to confuse consumers. The Court nevertheless upheld the jury’s infringement finding based on the defendant’s visible use of the protected mark in advertising copy, product descriptions, and customer communications. Deltona Transformer Corporation v. The NOCO Company, Case No. 24-13590 (11th Cir. Aug. 4, 2026) (Lagoda, Kidd, Newsom, JJ.)

Deltona Transformer Corporation manufactures vehicle battery chargers that charge a battery to capacity and then maintain the charge without overcharging it. Deltona owns federally registered trademarks for BATTERY TENDER and DELTRAN BATTERY TENDER. One of Deltona’s founders coined the term “battery tender,” drawing on the maritime use of “tender” for a vessel that services or supplies another vessel.

The NOCO Company makes similar battery chargers. Beginning in 2014, NOCO promoted its products using “battery tender” in several ways, including bidding on the term as a search keyword, placing the term in advertisements and product descriptions, and referring to its products as battery tenders in communications with customers and marketing firms. Deltona sued for federal and state trademark infringement and unfair competition. A jury found for Deltona and awarded damages, and the district court later ordered disgorgement of NOCO’s profits and entered a permanent injunction. NOCO appealed.

NOCO first argued that Deltona’s marks were generic and therefore unprotectable. The Eleventh Circuit disagreed. Federal registration provided prima facie evidence of validity, and the Court concluded that “battery tender” was at least descriptive (and potentially suggestive) because “tend” metaphorically rather than literally describes what the charger does. The Court further concluded that a reasonable jury could find secondary meaning based on Deltona’s decades of use, advertising, promotion, and industry recognition.

The Eleventh Circuit also rejected NOCO’s argument that “battery tender” had subsequently become generic. Although NOCO introduced survey evidence indicating that many respondents understood the term as identifying a type of product rather than a brand, the survey was not conclusive, and the jury was entitled to weigh it against the remaining evidence supporting trademark significance.

Turning to infringement, the Eleventh Circuit addressed for the first time whether purchasing another party’s trademark as an online advertising keyword can itself constitute infringement. The Court concluded that it cannot in circumstances such as those presented here. Keyword bidding occurs “behind the scenes,” meaning consumers do not see the purchased keyword and instead see the resulting advertisement. Accordingly, likelihood of confusion depends on what the consumer sees in the advertisement, not on the invisible mechanism that caused the advertisement to appear.

The result was different where NOCO visibly used Deltona’s marks. NOCO used “battery tender” and similar language in the text of advertisements, including advertisements describing NOCO products as battery tenders. The Eleventh Circuit found sufficient evidence for the jury to conclude that these uses were likely to [...]

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In the doghouse? Tarnishment requires proof of reputational harm

by Lauren Hong | Aug 13, 2026 | Trademarks

In the latest chapter of a long-running dispute, the US Court of Appeals for the Ninth Circuit vacated a permanent injunction against VIP Products’ “Bad Spaniels” dog toy, finding that Jack Daniel’s Properties, Inc., (JDPI) failed to establish that the parody was likely to harm the reputation of its famous marks. The Court also explained that although parody does not automatically escape dilution liability when used as a source identifier, a product’s parodic nature remains relevant to whether consumers are likely to form a damaging association with the famous mark. VIP Products LLC ⁠v. Jack Daniel’s Properties Inc., Case No. 25-2027 (9th Cir. August 4, 2026) (Berzon, Smith, Hurwitz, JJ.)

VIP Products sells a line of dog toys parodying well-known alcohol bottles. Its Bad Spaniels toy mimics the appearance of a Jack Daniel’s whiskey bottle but replaces “Jack Daniel’s” with “Bad Spaniels,” “Old No. 7” with “Old No. 2,” and “Tennessee Whiskey” with “Tennessee Carpet,” along with references to dog waste.

JDPI sued VIP for trademark infringement and dilution. The dispute ultimately reached the US Supreme Court, which in 2023 held that VIP could not invoke the Trademark Dilution Revision Act’s statutory parody exclusion because VIP used the challenged designations as source identifiers for its own goods.

On remand, the district court found no likelihood of confusion but concluded that Bad Spaniels diluted JDPI’s trademarks by tarnishment and entered a permanent injunction. VIP appealed.

The Ninth Circuit explained that a dilution-by-tarnishment claim requires the trademark owner to establish, among other things, that the asserted mark is famous and that the challenged use creates an association likely to harm the famous mark’s reputation. The Court emphasized that the analysis must be conducted on a mark-by-mark basis. Fame established for one mark cannot automatically be attributed to related marks.

Applying that framework, the Ninth Circuit found that JDPI had established fame for the Jack Daniel’s word mark and registered trade dress, but not for certain other asserted marks, including “Old No. 7.” That distinction was significant because some of Bad Spaniels’ more overt scatological references corresponded to marks that JDPI had not independently shown to be famous.

The Ninth Circuit also found JDPI’s evidence of likely reputational harm insufficient. JDPI’s expert relied on general consumer psychology research suggesting that associations between food or beverages and defecation may produce disgust, but he did not conduct a study examining consumer reactions to Bad Spaniels itself. The Court concluded that such generalized evidence did not establish that consumers would transfer negative associations from the parody dog toy to JDPI’s famous marks.

The Ninth Circuit further faulted the tarnishment analysis for failing to account for the toy’s parodic character. Although parody is not categorically exempt from dilution liability when the challenged use itself functions as a trademark, the Court explained that parody remains relevant to whether consumers are likely to make an association that harms the famous mark’s reputation. Because Bad Spaniels unmistakably mocked Jack Daniel’s, as opposed to presenting itself as Jack Daniel’s, the Court [...]

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Safety-enhancing color is functional, not protectable as trademark

by Taylor MacDonald | Aug 13, 2026 | Trademarks

The US Court of Appeals for the Eighth Circuit affirmed cancellation of a trademark covering chartreuse-colored water hoses, finding that the color was functional because it improved visibility and therefore enhanced safety. The Court also affirmed a $3 million attorneys’ fee award based on the trademark owner’s lack of candor before the United States Patent & Trademark Office (USPTO), litigation conduct, and continued reliance on an incorrect interpretation of the functionality standard. Weems Industries, Inc. d/b/a Legacy Manufacturing Co. v. Teknor Apex Co., Case No. 25-2956 (8th Cir. July 30, 2026) (Colloton, Arnold, Grasz, JJ.)

Weems Industries sued competing water hose manufacturer Teknor Apex for trademark infringement and other claims. Weems asserted a federally registered trademark covering the chartreuse color used on its water hoses. Teknor countered that the color was functional and sought cancellation of the registration. Teknor also requested attorneys’ fees.

The district court agreed with Teknor, finding that chartreuse served a functional purpose because the bright color made hoses more visible against dark grass and therefore improved product safety. The district court also concluded that Weems had not established acquired distinctiveness in the color. It cancelled the registration and awarded Teknor approximately $3 million in attorneys’ fees. The district court based the fee award on three categories of conduct: Weems’ lack of candor before the USPTO, its conduct during the litigation and trial, and its continued reliance on an incorrect interpretation of trademark functionality. Weems appealed.

The Eighth Circuit reviewed the district court’s functionality determination for clear error. A product feature is functional and therefore not subject to trademark protection if it is essential to the product’s use or affects the product’s cost or quality. The Court explained that a feature that improves product safety may affect product quality and therefore be functional.

The record contained substantial evidence supporting the district court’s finding that chartreuse improved hose visibility. Weems’ own promotional materials described the visibility and safety benefits of the color. The record also included patent-related materials describing the utility of chartreuse and expert testimony addressing the color’s visibility.

The Eighth Circuit rejected Weems’ argument that a feature is functional only if it improves the mechanical operation of the product. Functionality, the Court explained, is not limited to whether a feature makes a product operate better. A feature that improves safety can also affect product quality and therefore fall within the functionality doctrine.

The Court also rejected Weems’ argument that chartreuse should remain protectable because Teknor could have selected a different highly visible color for its hoses. The availability of alternative colors did not require a competitor to design around a functional safety feature. Because the Court affirmed the finding that chartreuse was functional, it did not need to address whether the color had acquired distinctiveness.

The Eighth Circuit next considered the attorneys’ fee award. The Lanham Act permits fee awards in “exceptional cases,” which courts evaluate based on the totality of the circumstances. A case may be exceptional because of the substantive weakness of a party’s [...]

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