Mealey's Trademarks : Mealey's : Legal News & Analysis

Mealey's Trademarks

September 28, 2022
United States Backs Certiorari In Dispute Over Foreign Application Of Lanham Act

WASHINGTON, D.C. — A question raised by a group of foreign companies, which were hit with a $100 million trademark infringement judgment, “is an important and recurring one,” the U.S. government asserts in an amicus curiae brief, urging the U.S. Supreme Court to grant their petition for certiorari and asking the high court to “provid[e] greater clarity” on when the foreign use of a domestic party’s trademark is likely “to cause U.S. consumer confusion” justifying extraterritorial application of the Lanham Act.
September 28, 2022
Lanham, Sherman Act Claims Filed Over ‘.Wallet’ Blockchain Domain, Trademark

WILMINGTON, Del. — The owner of the “.wallet” top-level domain (TLD) within a particular blockchain domain sued a competitor in Delaware federal court, claiming that the defendant was unlawfully attempting to monopolize the TLD, despite its use in distinct, self-contained areas of cryptocurrency transactions.
September 27, 2022
Adidas Wins Partial Summary Judgment In New York On Trademark Counterclaims

BROOKLYN, N.Y. — A federal judge has sided primarily with Adidas America and Adidas AG (Adidas, collectively) in their countersuit against a declaratory judgment plaintiff who asserted that the shoemaker’s famous trademarks were abandoned via naked licensing and, alternatively, not infringed.
September 26, 2022
Nevada Federal Judge Says Trademark Damages Unavailable At Trial

LAS VEGAS — A defendant won summary judgment by a Nevada federal judge that a trademark owner is unable to seek actual damages or disgorged profits in connection with allegations that the “ProDoc” trademark was infringed, following a 2006 settlement.
September 23, 2022
In ‘Zioness’ Trademark, Copyright Row, Third-Party Complaint Receives OK

NEW YORK — A dispute between a think tank and a former executive over copyrighted images and the right to use the “Zioness” trademark will proceed with the nonprofit’s third-party claims of infringement in place, a federal judge in New York ruled Sept. 22.
September 22, 2022
Trademark Counterclaims Against Former Bandmate Survive Dismissal Bid

MIAMI — A federal judge in Florida rejected a motion by the current owner of the “Linear” trademark to dismiss allegations that his efforts to renew the registration were premised on fraudulent supporting documentation.
September 20, 2022
6th Circuit: Safe Distance Rule May Apply In Trade Dress Dispute

CINCINNATI — A federal judge in Michigan did not adequately support his denial of a request to apply the safe-distance rule when assessing a motion for permanent injunctive relief in a dispute over the trade dress of Jeep vehicles, the Sixth Circuit U.S. Court of Appeals ruled Sept. 19.
September 20, 2022
‘Violet Crown’ Trademark Case Will Proceed Without Injunctive Relief

AUSTIN, Texas — A federal judge in Texas on Sept. 15 said the owner of a movie theater failed to establish a likelihood of success on the merits of its trademark infringement claim against the developer of a planned amphitheater.
September 14, 2022
New York Federal Judge Stands By Dismissal In Copyright, Trademark Row

NEW YORK — A request by two pro se copyright and trademark infringement plaintiffs for reconsideration of a New York federal judge’s recent dismissal of the case against Sony Pictures Entertainment Inc. and others was denied Sept. 11.
September 13, 2022
Florida Federal Judge Cites Patent, Declares Trade Dress Functional

FORT MYERS, Fla. — In a Sept. 9 decision, a federal judge in Florida granted a defendant’s motion for judgment on the pleadings that allegations that it infringed trade dress associated with a floating dock system fail.
September 12, 2022
Copyright Counterclaim, Trademark Preemption Defense Dismissed In New York

NEW YORK — A dispute between two similarly named organizations centered on the modern architect Paul Rudolph will proceed without a counterclaim for copyright infringement in place, a federal judge in New York ruled Sept. 8.
September 12, 2022
Consent Order Modification Sought In Suit Over Alleged Counterfeit Policies

LOUISVILLE, Ky. — After plaintiffs and intervening plaintiffs in a suit over allegations of fraud, trademark counterfeiting and trademark infringement involving captive reinsurance programs filed an Aug. 29 motion in Kentucky federal court seeking to lift portions of a consent order to allow novation settlements regarding one defendant to proceed, the court issued a Sept. 8 text order directing that defendant to state its position by Sept. 22.
August 31, 2022
Panel: University Licensees Properly Awarded Dismissal Of Trademark Claims

NEW ORLEANS — The Fifth Circuit U.S. Court of Appeals on Aug. 24 said a Louisiana federal judge correctly deemed the licensing arm of Jackson State University entitled to dismissal of trademark infringement allegations where the university cannot be joined to the action pursuant to the doctrine of sovereign immunity.
August 29, 2022
9th Circuit Reinstates Trade Dress Claims Over ‘Four-In-A-Row’ Game

SAN FRANCISCO — Secondary meaning is acquired whenever a consumer links trade dress to a single source or company, even one that is anonymous, a Ninth Circuit U.S. Court of Appeals panel ruled Aug. 24.
August 26, 2022
Jack Daniel’s Again Seeks Certiorari In Dog Chew Toy Trade Dress Infringement Suit

WASHINGTON, D.C. — In the wake of a second ruling against it by the Ninth Circuit U.S. Court of Appeals in a trade dress dispute with a dog toy manufacturer, Jack Daniel’s Properties Inc. on Aug. 5 filed its second petition for certiorari in as many years, asking the U.S. Supreme Court to provide guidance on when a humorous item’s use of another’s trademark or trade dress constitutes infringement and when it is protected under the First Amendment to the U.S. Constitution.
August 26, 2022
5th Circuit Affirms ‘Across The Board’ In Protracted Trademark Row

NEW ORLEANS — In its third ruling in the case, the Fifth Circuit U.S. Court of Appeals on Aug. 23 upheld several rulings by a Louisiana federal judge in a longstanding dispute over the “Camellia Grill” trademark.
August 26, 2022
7th Circuit: Shipment Of Counterfeit Product Conferred Jurisdiction

CHICAGO — Entry of a default judgment by an Illinois federal judge against a defendant accused of trademark infringement by NBA Properties Inc. was upheld Aug. 16, when the Seventh Circuit U.S. Court of Appeals agreed that the defendant’s shipment of a counterfeit product to Illinois constituted purposeful availment.
August 24, 2022
Insurer Has No Duty To Defend, Indemnify Technology Company, 11th Circuit Affirms

ATLANTA — The 11th Circuit U.S. Court of Appeals on Aug. 23 affirmed a lower federal court’s ruling that an insurer has no duty to defend or indemnify two underlying lawsuits against a technology company insured because the claims in the second lawsuit relate to the claims in the first lawsuit that occurred before the policy’s inception.
August 18, 2022
Panel: Reverse Confusion Theory Of Trademark Infringement Fails

SAN FRANCISCO — The Ninth Circuit U.S. Court of Appeals on Aug. 9 upheld a California federal judge’s determination that no reasonable juror could find in favor of a trademark owner on its reverse confusion theory of infringement by a popular yoga apparel maker.
August 17, 2022
1st Circuit Partly Reinstates Lanham Act Claims Against Drug Compounder

BOSTON — Dismissal by a Massachusetts federal judge of allegations of false advertising leveled against a drug compounding company was vacated, in part, by the First Circuit U.S. Court of Appeals on Aug. 12.
August 17, 2022
3rd Circuit Upholds Denial Of Injunction In Pesticide Trademark Row

PHILADELPHIA — In a ruling affirming a Delaware federal judge’s decision to deny a trademark owner a preliminary injunction in its infringement litigation with a competitor, the Third Circuit U.S. Court of Appeals on Aug. 12 articulated a three-step test for district courts applying the rebuttable presumption of irreparable harm under a recently enacted statute.
August 15, 2022
Magistrate Recommends Transfer Of Infringing Domains To Debevoise

ALEXANDRIA, Va. — A Virginia federal magistrate judge on Aug. 10 found that law firm Debevoise & Plimpton LLP had sufficiently established that the registrants of two internet domains incorporating its trademark had violated the Anti-Cybersquatting Consumer Protection Act (ACPA) by registering them in bad faith, recommending permanent transfer of the domains to the plaintiff.
August 09, 2022
11th Circuit: Summary Judgment Not Warranted On False Advertising Claims

ATLANTA — A federal judge in Florida wrongly awarded more than 30 plaintiffs summary judgment on their allegations of false advertising and false endorsement by the managing members of a Miami nightclub, the 11th Circuit U.S. Court of Appeals said Aug. 4.
August 09, 2022
8th Circuit: Single Online T-Shirt Sale Does Not Confer Jurisdiction

ST. LOUIS — Upholding a trial court’s dismissal of a trademark infringement lawsuit for lack of jurisdiction, an Eighth Circuit U.S. Court of Appeals panel on Aug. 2 ruled that a California T-Shirt company’s sale of one shirt via its website to a Missouri customer was not sufficient to constitute purposeful availment that would establish specific jurisdiction over the out-of-state defendant.
August 02, 2022
Following Bench Trial, Florida Federal Judge Says Trademark Not Abandoned

MIAMI — A federal judge in Florida on July 31 awarded a franchisor $271,250 in connection with allegations that a franchisee continued to use the “Navaka” trademark after an implied license between the parties was rescinded.