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

Mealey's Trademarks

July 21, 2023
After Remand From Supreme Court, 9th Circuit Asks Parties To Brief Trademark Row

SAN FRANCISCO — Jack Daniel’s Properties Inc. and the maker of a dog toy that parodies the “Jack Daniel’s” trademark have been directed by the Ninth Circuit U.S. Court of Appeals to brief, within 21 days, how to proceed following a June vacatur and remand by the U.S. Supreme Court.
July 21, 2023
On Remand, Michigan Federal Judge Again Denies Relief In Trade Dress Case

DETROIT — A renewed motion to enjoin sales of the post-2020, redesigned “ROXOR” off-road vehicle was denied by a federal judge in Michigan, who said application of the safe-distance rule to the trade dress dispute is not warranted.
July 20, 2023
2nd Circuit Affirms: Plaintiff Failed To Show Trademark Ownership

NEW YORK — A federal judge in New York correctly granted a trademark infringement defendant judgment on the pleadings that the action against it fails for lack of ownership, the Second Circuit U.S. Court of Appeals ruled.
July 14, 2023
11th Circuit Affirms Court’s Ruling In Coverage Dispute Over False Advertising Suit

ATLANTA — The 11th Circuit U.S. Court of Appeals on July 13 affirmed a lower federal court’s ruling that a general liability insurance policy’s “failure to conform” exclusion relieved insurers of their duty to defend a generic pharmaceutical manufacturer insured against an underlying lawsuit alleging that it “falsely or misleadingly” advertised its products as generic equivalents to a competitor’s product, further affirming the lower court’s finding that the insurers are not entitled to reimbursement of the legal costs they incurred in defending the insured pursuant to a reservation of rights.
July 14, 2023
Patent, Copyright, False Advertising Claims Won’t Proceed In Utah Dispute

SALT LAKE CITY — A lawsuit by two companies that assert a variety of intellectual property-related claims against a competitor and former employee was trimmed substantially by a federal judge in Utah at the summary judgment stage.
July 14, 2023
Online Firms Brief 9th Circuit On Jack Daniel’s Relevance In ‘Punchbowl’ Mark Row

PASADENA, Calif. — In post-decision, supplemental briefs, two internet-based companies debate in the Ninth Circuit U.S. Court of Appeals whether the U.S. Supreme Court’s recent ruling in Jack Daniel’s Properties Inc. v. VIP Products LLC mandates that their dispute over their uses of the “Punchbowl” trademark merits remand for a trial court to determine whether the Rogers v. Grimaldi test should be applied.
July 12, 2023
‘WallStreetBets’ Creator’s UCL Suit Dismissed Due To Lack Of Trademark Rights

SAN FRANCISCO — A California federal judge on July 11 granted online forum host Reddit Inc.’s motion to dismiss a lawsuit filed against it by an investor and entrepreneur who claims that it violated California’s unfair competition law (UCL) and his trademark in part by banning him from the “WallStreetBets” forum on its platform, which he created, finding that he did not establish trademark rights and that Reddit was immune from his other claims as an online publisher.
July 12, 2023
$6.5M Default Judgment In Trademark Dispute Will Stand, Panel Rules

PHILADELPHIA — Trademark infringement defendants whose misconduct led two law firms to withdraw their representation were properly found to be in default by a U.S. circuit judge sitting by designation in the District of Delaware, the Third Circuit U.S. Court of Appeals said July 11.
July 11, 2023
Panel: Trademark Abandonment Defense Rightly Rejected By Florida Federal Judge

ATLANTA — The 11th Circuit U.S. Court of Appeals has upheld a ruling in favor of a franchisor that alleged that a former franchisee used the “Navaka” trademark after the parties’ implied license was rescinded.
July 06, 2023
9th Circuit: Online Sale, Shipment Of Infringing Product Confers Jurisdiction

SAN FRANCISCO — An Arizona federal judge erred in finding a lack of personal jurisdiction over defendants accused of trademark infringement, the Ninth Circuit U.S. Court of Appeals ruled July 5, because the defendants’ sale and subsequent shipment of allegedly infringing, physical products to Arizona caused an Arizona-based plaintiff harm.
July 06, 2023
‘WallStreetBets’ Creator’s UCL Suit May Proceed While TTAB Case Paused, Judge Says

SAN FRANCISCO — A California federal judge denied online forum host Reddit Inc.’s motion to stay a lawsuit filed by an investor and entrepreneur accusing it of violating California’s unfair competition law (UCL) and violating his trademark in part by banning him from the “WallStreetBets” forum on its platform, citing a suspension of a related proceeding ordered by the Trademark Trial and Appeal Board (TTAB).
June 26, 2023
COMMENTARY: Parody Proves To Be “Whiskey” Business—But U.S. Supreme Court Sidesteps Clarifying The Rogers Test In Recent Trademark Decision

By Paula Hopkins and Victoria Villella
June 29, 2023
High Court: Only Domestic Trademark Uses In Commerce Are Actionable

WASHINGTON, D.C. — The 10th Circuit U.S. Court of Appeals wrongly applied federal trademark law to infringing uses in commerce of a disputed trademark that took place entirely abroad, the U.S. Supreme Court ruled today.
June 27, 2023
Federal Circuit Vacates, Remands Trademark Board Likely Confusion Findings

WASHINGTON, D.C. — In sustaining opposition to a proposed registration for the “FL FLEX” trademark on grounds of likely confusion with three existing trademarks making use of the word “FLEX” the Trademark Trial and Appeal Board made several “errors of significance,” the Federal Circuit U.S. Court of Appeals ruled June 26.
June 26, 2023
Panel Affirms: Priority Of Use For ‘Larissa Love’ Trademark Not Established

SAN FRANCISCO — A federal judge in California correctly determined, following a bench trial, that a trademark infringement counterclaimant failed to place her “Larissa Love” branded hair care products in commerce before a plaintiff registered the mark with the U.S. Patent and Trademark Office, the Ninth Circuit U.S. Court of Appeals ruled June 23.
June 21, 2023
‘Objectively Frivolous’ Trademark Claims Tossed, Sanctions Entered In Florida

TAMPA, Fla. — Counsel for a trademark infringement plaintiff “wasted both Defendants’ and the Court’s time and made misrepresentations to the Court which were objectively frivolous and which she knew to be false,” a federal judge in Florida ruled June 20, granting sanctions in the form of attorney fees and costs.
June 20, 2023
N.J. Panel: Insurers Have No Duty To Defend Dental Practices Against Underlying Suits

TRENTON, N.J. — A New Jersey appeals panel on June 19 affirmed a lower court’s ruling that general liability and directors and officers liability insurers have no duty to defend 14 dental practice insureds against lawsuits alleging trademark infringement, breach of contract and other claims, finding that “based on the clear and unambiguous exclusionary language in the policies, plaintiffs were not obligated to defend or indemnify defendants.”
June 20, 2023
Sculptor Beats Copyright Claims, But Trademark Claims Will Proceed In N.Y.

NEW YORK — The sculptor of Fearless Girl — a young girl staring down the famed Charging Bull sculpture near Wall Street in New York City — has won summary judgment in New York federal court on allegations that she engaged in direct copyright infringement when she sold a replica of Fearless Girl to a Wall Street executive who then used the work at a corporate event focused on gender diversity.
June 20, 2023
Disney Suffers Setback With High Court Order Vacating Trademark Win

WASHINGTON, D.C. — In its June 20 order list, the U.S. Supreme Court rejected the position taken by Disney Store USA LLC in a respondent brief that Jack Daniel’s Properties Inc. v. VIP Products LLC has no bearing on allegations that Disney infringed a trademark with a character in “Toy Story 3.”
June 20, 2023
In Mixed Ruling, Copyright, Trademark Owner Prevails In Part In California

SAN DIEGO — A dispute over various trademarks and copyrighted technical drawings will proceed while allegations that other trademarks and copyrights were infringed by three defendants will be dismissed in a dispute between a security company and its former employees, a California federal judge has ruled.
June 19, 2023
Copyright, Trademark Case By A&E Survives Motion To Dismiss In New York

NEW YORK — A trademark dispute over “Live PD” will proceed, a New York federal judge decided June 16 upon finding that A&E Television Networks LLC credibly asserts that three defendants willfully and intentionally confused the public as to their affiliation with and sponsorship of the former hit television show.
June 14, 2023
In Trademark Dispute, University Failed To Explain Delay For Seeking Injunction

ATLANTA — A university failed to adequately explain why it waited six months to move for a preliminary injunction to stop an alumni association from using the university’s trademarks because all the evidence cited in support of the injunction was available when the university filed its complaint, an 11th Circuit U.S. Court of Appeals panel found in a per curiam opinion affirming a trial court’s denial of the injunction.
June 12, 2023
In ‘PlasmaCar’ IP Row, Florida Federal Magistrate Judge Recommends Relief

MIAMI — A design patent, trademark and copyright owner should be granted a preliminary injunction while it pursues infringement allegations against more than 150 e-tailers, a federal magistrate judge in Florida said June 9.
June 09, 2023
Judge Awards Juul $2M Against Counterfeiters After Bench Trial

LOS ANGELES — A California federal judge on June 8 filed findings of fact and conclusions of law after a bench trial, finding in favor of Juul Labs Inc. (JLI) on its claims for violation of federal trademark statutes and California’s unfair competition law (UCL) against a Chinese national and his companies in relation to the sales of counterfeit Juul products and awarding JLI $2 million in damages plus attorney fees.
June 08, 2023
Judgment Entered Resolving Years-Long Rolling Papers Trademark Dispute

CHICAGO — An Illinois federal judge entered an amended judgment after a jury trial, ending a seven-year litigation between the makers of “Raw” and “OCB” rolling papers, with Raw’s maker awarded more than $1.5 million on its counterclaims for copyright infringement and lost profits while agreeing to pay $665,000 in attorney fees to OCB’s makers for fees incurred on its designation-of-origin claim.