Mealey's Trademarks
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December 01, 2023
Law Firm Tells 9th Circuit Rival’s Use Of Mark In Keyword Ad Was Infringing
SAN FRANCISCO — Asking the Ninth Circuit U.S. Court of Appeals to reverse a lower court’s summary judgment finding that a competitor’s use of its trademark in a Google keyword advertisement did not infringe, an Arizona law firm in its appellant brief expressed its concern that if the judgment is permitted to stand, it will “severely erode the ability of trademark holders to protect against the misuse of their marks online.”
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November 30, 2023
No Coverage Owed For Breach Of Franchise Agreement, Trademark Infringement Claims
SAN FRANCISCO — The Ninth Circuit U.S. Court of Appeals affirmed a lower federal court’s ruling in favor of insurers in an insured’s breach of contract and bad faith lawsuit seeking coverage for an underlying action alleging that it breached a franchise agreement and infringed on trademarks, finding that some of the underlying claims “clearly fell outside the policy's coverage” and that the policy’s intellectual property (IP) exclusion also barred coverage.
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November 29, 2023
Panel Upholds Denial Of Fees For Jaegermeister In Dispute Over ‘Kühl’ Mark
DENVER — Less than three months after affirming a grant of summary judgment in favor of Mast-Jaegermeister US Inc. (MJUS) on allegations that the spirits maker infringed the “kühl” trademark, the 10th Circuit U.S. Court of Appeals on Nov. 28 also upheld a decision that the case does not qualify as exceptional, rendering MJUS not entitled to an award of attorney fees.
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November 28, 2023
New York Federal Judge Tosses Trademark Claims In ‘Surf Lodge’ Spat
WASHINGTON, D.C. — Although a second amended complaint (SAC) by the owners and operators of “The Surf Lodge” in Montauk, N.Y., adequately state a claim for false designation of origin against a former business associate, their allegations of trademark infringement and dilution must be dismissed, a federal judge in New York concluded Nov. 27.
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November 27, 2023
Hawaii Federal Judge: Accused Use Of ‘Skydive Hawaii’ Mark Is Fair
HONOLULU — Although ordering additional briefing on a claim for breach of settlement agreement, a federal judge in Hawaii on Nov. 22 granted a defense motion to dismiss allegations of trademark infringement leveled over the use of “Skydive Hawaii” in connection with a Hawaii-based skydiving business.
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November 27, 2023
Panel: Trademark Board Ruling Departed From Established Waiver Practice
WASHINGTON, D.C. — The Federal Circuit U.S. Court Appeals on Nov. 22 rejected a joint motion by two parties to vacate a decision by the Trademark Trial and Appeal Board that sustained opposition to the “Get Ordained” trademark in two classes of services in light of their subsequent settlement of parallel district court litigation.
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November 27, 2023
Lloyd’s And U.S. Subsidiary File Trademark Infringement, Defamation Lawsuit
HOUSTON — Two entities connected with “an insurance and reinsurance market that is the most famous brand in the insurance underwriting field” have filed a suit in Texas federal court asserting claims including defamation and trademark infringement against an individual and a corporation and LLC they say he registered in Texas and California.
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November 22, 2023
In Florida Trademark Row, Federal Infringement Claim Survives Bid To Dismiss
MIAMI — A federal judge in Florida said that because a counterclaimant has not received a state trademark registration, its allegation of common-law infringement would be dismissed; in the same ruling, the judge denied dismissal as it relates to federal trademark infringement.
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November 21, 2023
California Trademark Row Won’t Be Stayed During Cancellation Proceedings
SAN FRANCISCO — A federal magistrate judge in California has denied a bid to stay a declaratory judgment action over the “Karmapoint” trademark while the Trademark Trial and Appeal Board considers a pending request for cancellation.
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November 17, 2023
Trek Can’t Persuade Federal Circuit To Undo Trademark Board Ruling
WASHINGTON, D.C. — Weighing by the Trademark Trial and Appeal Board of the relevant factors for a likelihood of confusion was not erroneous, the Federal Circuit U.S. Court of Appeals has ruled in a blow to Trek Bicycle Corp.
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November 14, 2023
Refusal To Register ‘Everybody Vs Racism’ Mark Upheld By Panel
WASHINGTON, D.C. — A decision by the U.S. Patent and Trademark Office (PTO) Trademark Trial and Appeal Board that upheld a refusal to register “Everybody Vs Racism” pursuant to the “Informational Matter Doctrine” was affirmed Nov. 13 by the Federal Circuit U.S. Court of Appeals, which agreed that the applied-for mark does not act as a source identifier for the applicant’s goods.
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November 13, 2023
9th Circuit Upholds Scope Of Relief In Row Over ‘Northpointe’ Mark
SAN FRANCISCO — A federal judge in Arizona had “an ample basis for finding” that a defaulting defendant’s use of “NorthPointe” would likely cause confusion with a plaintiff’s “Northpointe at Vistancia” trademark, the Ninth Circuit U.S. Court of Appeals has concluded.
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November 10, 2023
In IP Litigation Between Pharmacies, Both Sides Lose Daubert Challenges
SAN DIEGO — A federal judge in California has weighed in on competing motions to exclude expert testimony in a dispute over a compounding pharmacy’s alleged false advertising, unfair competition and copyright infringement, deeming the proposed experts for both sides “duly qualified” to render their opinions, which the judge said are based on “sufficiently reliable” methodologies.
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November 09, 2023
Illinois Federal Judge Denies Bid To Execute Infringement Judgment
CHICAGO — The owner of various copyrights and trademarks associated with the horror film “The Texas Chainsaw Massacre,” which in December 2022 won a $200,000 default judgment in an infringement action, saw its motion to compel execution of that judgment denied Nov. 8 by a federal judge in Illinois, to whom the case was recently reassigned.
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November 03, 2023
High Court Wants Furniture Maker’s Response In Trade Dress Secondary Meaning Spat
WASHINGTON, D.C. — A high-end furniture designer, which prevailed in its trade dress infringement lawsuit against a competitor, has been asked by the U.S. Supreme Court to file a response to the competitor‘s petition for certiorari on the topic of when intentional copying constitutes evidence of secondary meaning and a finding of infringement.
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November 03, 2023
Dunkin’ Donuts Settles Infringement Suit Against ‘Vapin’ Donuts’ E-Cig Company
BROOKLYN, N.Y. — The parent company of the Dunkin’ Donuts chain and an affiliated company filed in New York federal court a joint notice of settlement of claims against an e-cigarette company and its CEO for trademark infringement by using a logo “nearly identical” to that of Dunkin’ Donuts to boost sales of their “Vapin’ Donuts” e-cigarette products.
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November 01, 2023
High Court Holds Oral Arguments In ‘Trump Too Small’ Trademark Row
WASHINGTON, D.C. — In oral arguments before the U.S. Supreme Court on Nov. 1, counsel for the U.S. Patent and Trademark Office (PTO) defended a provision in federal trademark law that bars registrations that incorporate the names of certain public figures.
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November 01, 2023
Panel Orders Transfer Of False Advertising, Copyright Claims Against TikTok
NEW ORLEANS — The Fifth Circuit U.S. Court of Appeals on Oct. 31 granted a petition for writ of mandamus by TikTok Inc. and others, agreeing that allegations that the popular video sharing app engages in false advertising and copyright infringement should proceed in California federal court.
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October 26, 2023
California Federal Judge Allows Expert In Trademark Dispute Over Shades Of Blue
SAN FRANCISCO — A California federal judge found that a “color consultant” expert can testify in a dispute over a trademark but ruled that she cannot opine on a likelihood of confusion between the two products.
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October 24, 2023
Video Game Companies Argue Whether Supreme Court Ruling Affects ‘Warzone’ Mark Row
PASADENA, Calif. — In supplemental briefs filed at the behest of the Ninth Circuit U.S. Court of Appeals, two video game companies dispute whether the recent U.S. Supreme Court ruling in Jack Daniel’s Properties Inc. v. VIP Products LLC has any impact on the present reverse confusion trademark dispute pertaining to the “Warzone” mark used by both companies.
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October 24, 2023
Rebuttal Witness To Survey Results Ruled Admissible In Trademark Dispute
SOUTH BEND, Ind. — Forest River Inc., a manufacturer of recreational vehicles, lost its bid to exclude an expert witness retained to rebut conclusions reached by its expert who conducted a consumer survey when an Indiana federal judge found that the expert’s opinions are admissible in the trademark infringement dispute.
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October 24, 2023
Motion To Strike Jury Demand In Trademark Row Denied In Pennsylvania
PHILADELPHIA — A federal judge in Pennsylvania on Oct. 23 addressed the “thorny” question of whether a request for an accounting of profits in connection with allegations of trademark infringement and counterfeiting is strictly equitable, but ultimately found that he need not definitively answer because “many” other claims in the case are legal in nature.
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October 23, 2023
Cancellation Of ‘Captain Cannabis’ Trademark Upheld On Appeal
WASHINGTON, D.C. — The Trademark Trial and Appeal Board’s determination that a pro se petitioner has priority of use of the “Captain Cannabis” trademark in connection with comic books was affirmed by the Federal Circuit U.S. Court of Appeals.
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October 20, 2023
Panel: No Irreparable Harm If Relief Denied In Trademark Dispute
NEW YORK — A March order by a federal judge in Connecticut that denied a request by two trademark infringement counterclaimants for a preliminary injunction in their row with former sublicensees will stand, the Second Circuit U.S. Court of Appeals ruled Oct. 19.
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October 19, 2023
Board Exceeded Authority When Canceling Mark, Divided Panel Concludes
WASHINGTON, D.C. — A panel majority of the Federal Circuit U.S. Court of Appeals on Oct. 18 reversed and remanded cancellation of the “DANTANNA’S” trademark by the Trademark Trial and Appeal Board, clarifying that the board’s authority to take such action is limited to instances of fraud that occur during registration.