Mealey's Trademarks
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June 08, 2023
Jack Daniel’s Prevails Before High Court In Trademark Parody Case
WASHINGTON, D.C. — A unanimous U.S. Supreme Court held June 8 that parody of the Jack Daniel’s trademark in connection with a dog toy was wrongly deemed noncommercial by the Ninth Circuit U.S. Court of Appeals, in what Justice Elena Kagan called a “narrow” opinion that would not reach the question of whether Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1989), “has merit in other contexts.”
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June 07, 2023
Walmart Must Provide Attorney Emails In Trade Dress Dispute With Vans Inc.
SANTA ANA, Calif. — Protections under the attorney-client privilege and the work product doctrine in an email chain between Walmart Inc. and its counsel were waived by disclosure of those emails to a third party and the assertion of an advice of counsel defense, a California federal magistrate judge ruled, granting a motion to compel by Vans Inc., which alleges trade dress infringement of multiple shoe designs by the retailer and its suppliers.
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June 06, 2023
Meta Again Wins Dismissal Of Copyright, Lanham Act, DMCA Putative Class Action
SAN FRANCISCO — A federal judge in California granted a motion to dismiss a photographer’s amended class complaint against Meta Inc. alleging claims of copyright infringement and violation of the Lanham and Digital Millennium Copyright acts, this time without leave to amend, finding that the claims “fare no better” under the plaintiff’s new theories related to “a convoluted combination of the ‘check-in’ and ‘prefetching’ functionalities on Facebook.”
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June 06, 2023
Amended Settlement In Grubhub Faulty Info Class Suit Preliminarily Approved
DENVER — A federal judge in Colorado granted preliminary approval to a class settlement providing injunctive relief in a lawsuit accusing Grubhub Inc. of deceiving consumers by offering faulty information regarding restaurants that did not partner with it after the parties amended the agreement to state that claims for disgorgement of profits under the Lanham Act were not released.
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June 06, 2023
9th Circuit Again Revives Antivirus Firm’s False Advertising Suit Against Rival
PORTLAND, Ore. — For the second time, the Ninth Circuit U.S. Court of Appeals overturned the dismissal of an antivirus software company’s Lanham Act claim against a competitor, finding the defendant’s labels of “malicious” and “threats” for the plaintiff’s products to be statements of objective fact that could potentially support a false advertising claim, rather than “non-actionable statements of opinion,” as a trial court held.
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June 05, 2023
German Entity Defaulted In Trademark, Award Fight With Twitch, Magistrate Says
SAN JOSE, Calif. — A California federal magistrate judge recommended that a district judge grant a video-game streaming service’s motion for default judgment confirming a more than $1.5 million arbitral award against a German competitor that has not appeared in court and recommended denying a motion for leave to file an amicus curiae brief filed by German parties that claim that they own the rights to the award-debtor’s domain name.
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June 05, 2023
Supreme Court To Decide Whether Public Figures’ Names Can Be Trademarked
WASHINGTON, D.C. — Granting a petition for certiorari by the director of the U.S. Patent and Trademark Office (PTO), the U.S. Supreme Court on Junw 5 said it will consider whether declining to register a trademark that contains a criticism of a public figure violates the First Amendment to the U.S. Constitution.
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May 22, 2023
COMMENTARY: Intellectual Property Legal Issues Impacting Artificial Intelligence
By Edward D. Lanquist and Dominic Rota
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May 26, 2023
Sellers Of Disposable Vapes Ask 6th Circuit To Review Injunction In Trademark Row
CINCINNATI — A distributor of disposable e-cigarette products and several retailers on May 25 filed a notice of interlocutory appeal to the Sixth Circuit U.S. Court of Appeals seeking to challenge a district court’s ruling preliminarily enjoining them from sales of vapes with a mark “remarkably similar” to a trademark-holder’s without requiring the trademark-holder to post a $1.8 million bond for their alleged future lost sales.
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May 24, 2023
Judge Denies TRO Sought By Reptile Show For UCL, Trademark Claims
SACRAMENTO, Calif. — A California federal judge denied a reptile exhibitor’s ex parte application for a temporary restraining order (TRO) barring a rival reptile show host from continuing to operate using a logo the applicant says violates its registered trademark, with the judge finding that the applicant waited too long after learning of the alleged violation to claim that it is at risk of irreparable harm.
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May 24, 2023
2nd Circuit Affirms: Models’ False Endorsement Claims Foreclosed By Electra
NEW YORK — A Second Circuit U.S. Court of Appeals panel affirmed summary judgment for the operators of a gentlemen’s club that used images of models in social media posts without their permission, rejecting the models’ argument that the lower court “misstepped by treating recognizability as the ‘bottom line’ barometer for strength of mark in false endorsement claims” under the Lanham Act.
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May 22, 2023
Federal Magistrate Judge Weighs In On IV Drip Therapy Trademark Row
AUSTIN, Texas — A federal magistrate judge in Texas recommended that a motion to dismiss trademark infringement allegations be denied in a dispute over the use of “ThrIVe” in connection with intravenous drip therapy.
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May 17, 2023
In Illinois, Lanham Act Counterclaim Survives Motion To Dismiss
CHICAGO — Counterclaims that a plaintiff falsely passed off its floor preparation product as a defendant’s will proceed, for now, a federal judge in Illinois ruled May 16.
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May 16, 2023
Fastener Maker’s Claims Of ‘Up-Certing’ Partly Rejected In Trademark Row
CHICAGO — A federal judge in Illinois has trimmed allegations of trademark infringement and counterfeiting leveled by a maker of commercial and military-compliant fasteners against a reseller accused of falsely certifying that the commercial fasteners are military grade.
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May 15, 2023
Panel Says Cab Conversion Kit’s Trade Dress Could Still Be Nonfunctional
CINCINNATI — A federal judge in Tennessee must revisit a dispute over trade dress associated with a kit for converting the cab of a tractor-trailer, the Sixth Circuit U.S. Court of Appeals ruled, because genuine issues of material fact should have precluded summary judgment in favor of a defendant.
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May 15, 2023
10th Circuit: Confusion Over Credit Union Trademarks Unlikely
DENVER — The 10th Circuit U.S. Court of Appeals affirmed findings by a federal judge in Utah that competing trademarks used by two credit unions in distinct geographic markets and with differing eligibility restrictions are unlikely to create confusion among consumers.
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May 10, 2023
In Cheats Software Row, Video Game Maker’s Request For Award Largely Granted
SEATTLE — In a May 9 judgment, a federal judge in Washington said a copyright and trademark infringement plaintiff is entitled to a more than $6.7 million award in connection with sales of software that allows users to cheat while playing the video game “Destiny 2.”
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May 05, 2023
Amended Lanham Act Claims Against Meta Survive Motion To Dismiss
SAN FRANCISCO — Allegations by a copyright owner that advertisements on Facebook mislead customers into thinking that the advertisers sell her artwork will proceed, a federal judge in California ruled May 4 in denying a motion to dismiss by Meta Platforms Inc.
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May 04, 2023
Cuban Tobacco Company Says Cigar Competitor Can’t Fight Trademark’s Cancellation
ALEXANDRIA, Va. — Cuba’s state-owned tobacco company filed its answer and affirmative defenses in Virginia federal court to an American cigar company’s appeal seeking the reversal and vacatur of a Trademark Trial and Appeal Board (TTAB) decision canceling its trademarks, arguing that the American company is barred from challenging the ruling based on a Federal Circuit U.S. Court of Appeals ruling and the American company’s decades of use of a trademark that originated in Cuba.
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May 04, 2023
Panel Says Jurisdiction Lacking In ‘Baby Shark’ Copyright, Trademark Row
NEW YORK — A July 2021 ruling by a federal judge in New York denying entry of a default judgment in a copyright and trademark infringement case was neither a “final decision” nor an order that can be appealed on an interlocutory basis, the Second Circuit U.S. Court of Appeals said May 3.
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May 04, 2023
In New York Trademark, Patent Case, Inequitable Conduct Counterclaim Is Allowed
CENTRAL ISLIP, N.Y. — An infringement defendant has secured permission from a federal magistrate judge in New York to file amended counterclaims challenging the enforceability of a patented proprietary system for mixing liquid components for dental applications.
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May 03, 2023
Bribery Claim By Failed Copyright, Trademark Plaintiffs Leads To Sanction
BROOKLYN, N.Y. — Two pro se copyright and trademark plaintiffs were each sanctioned $500 on May 2 following their December claim that bribery led a New York federal judge to refuse to seek input from the Register of Copyrights about the validity of a registration.
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May 01, 2023
Alabama Federal Magistrate Judge: Dismiss Copyright, Trademark Claims
MOBILE, Ala. — In an April 28 report and recommendation, a federal magistrate judge in Alabama said a copyright and trademark dispute over dog shampoo marketed as “pet friendly” should be dismissed.
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May 01, 2023
Bid For Discovery Conference In Trademark, Copyright Row Denied In New York
NEW YORK — A dismissal in September 2022 of a counterclaim for copyright infringement means a plaintiff is not entitled to seek additional discovery on the claim, “presumably” in anticipation of a forthcoming request for attorney fees, a federal magistrate judge in New York ruled.
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April 28, 2023
False Advertising Plaintiff Suffered No Injuries, 11th Circuit Concludes
ATLANTA — A per curiam panel of the 11th Circuit U.S. Court of Appeals said it lacks jurisdiction to entertain an appeal by a cybersecurity company of a grant of summary judgment in favor of Microsoft Corp. because the appellant submitted no evidence that it “suffered any injury at all.”