Mealey's Trademarks
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May 16, 2024
Despite Phonetic Similarity, Confusion Unlikely Between ‘SUNSAUCE,’ ‘SON SAUCE’
SAN FRANCISCO — Litigation between two sauce makers will proceed without preliminary injunctive relief in place, a federal judge in California has ruled, because the Thailand-based plaintiff, owner of the “SUNSAUCE” trademark, has not shown that it is likely to succeed on the merits of its allegation that a California company infringes with its “SON SAUCE” product.
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May 16, 2024
Appellants Say Court’s OpenAI Secondary Meaning Ruling Was In Error
SAN FRANCISCO — A trial court erred in finding that the OpenAI mark acquired a secondary meaning with the release of its Dall-E website and before the release of the vastly more popular ChatGPT while ignoring analogous uses of the mark and that all the allegedly irreparable harm was speculative, a company tells the Ninth Circuit U.S. Court of Appeals.
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May 15, 2024
PUMA Design Patent Claim Survives Early Challenge In Washington
SEATTLE — A motion for judgment on the pleadings by Brooks Sports Inc. was partly granted May 14 when a federal judge in Washington ordered a purported trademark licensor to be joined to an infringement action initiated by a rival athletic footwear company.
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May 15, 2024
Grubhub Calls Likelihood Of Confusion Cert Petition ‘Unremarkable,’ Poor Vehicle
WASHINGTON, D.C. — A trial court’s determination of whether there is a likelihood of confusion between two trademarks is due “great deference,” Grubhub Inc. tells the U.S. Supreme Court in a brief opposing a petition for certiorari in a trademark dispute, representing that nothing about the case is noteworthy or in need of attention from the high court.
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May 14, 2024
Judge Orders Discovery In Bid To Enforce $1.5M Award Against Bankrupt German CEO
SAN JOSE, Calif. — A California federal judge refused to dismiss a video game streaming platform’s petition to confirm a JAMS award worth nearly $1.5 million against two German entities and their shareholder, the former CEO of the original award-debtor, and ordered further jurisdictional discovery to determine whether the court can exercise jurisdiction over the German defendants.
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May 14, 2024
AI Health Company Seeks Dismissal Of Counterclaims In Sci-Fi-Based Trademark Case
NEW YORK — An artificial intelligence health care company named in honor of a word created by science fiction author Robert A. Heinlein asked a federal judge in New York to dismiss counterclaims against it, saying courts lack jurisdiction over trademark applications and that the lone exception to the rule does not apply.
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May 13, 2024
Judge Orders $1.4M Supersedeas Bond Pending Tobacco Rolling Papers Appeal
ATLANTA — A Georgia federal judge granted a motion filed by rolling papers companies and ordered defendants found liable for trademark infringement to post a supersedeas bond worth more than $1.4 million pending their appeal of jury verdicts against them to the 11th Circuit U.S. Court of Appeals.
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May 10, 2024
Trademark Holder Defends Disgorged Profits Award In Supreme Court Brief
WASHINGTON, D.C. — The Lanham Act gives courts broad discretion to award disgorged profits to prevailing parties in trademark infringement suits, an engineering firm tells the U.S. Supreme Court in a brief opposing a petition for certiorari by a firm that says a $43 million disgorgement award against it was improperly based on the profits of its affiliates, which are separate corporate entities.
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May 10, 2024
Verdict Clearing Thom Browne Of Trademark Infringement Won’t Be Undone, Panel Says
NEW YORK — In a summary order, the Second Circuit U.S. Court of Appeals found no reversible error in the jury instructions given by a federal judge in New York assigned to oversee litigation over the signature stripe trademark owned by adidas America Inc.
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May 09, 2024
Plaintiff Given 1 Week To Hand Over Social Media Logins To Gown Designer
NEW YORK — A federal judge in New York on May 8 dissolved in part and revised in part her March 1 preliminary injunction in a trademark dispute between a bridal gown company and a former designer, upon finding that the plaintiff company “failed to carry its burden of demonstrating a clear or substantial likelihood of success in establishing that it was the original owner or transferee of” two social media accounts, extinguishing a “crucial element” of its claim for conversion.
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May 09, 2024
6th Circuit Reverses Dismissal Of Trademark Case On Jurisdiction Grounds
CINCINNATI — Findings by a Tennessee federal judge that his court lacks jurisdiction over an Arizona-based trademark infringement defendant were reversed May 8 by a divided Sixth Circuit U.S. Court of Appeals, which said “longstanding precedent establishes that a company’s choice to welcome customers from and regularly sell products into a state subjects the company to that state’s jurisdiction.”
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April 30, 2024
Panel: Discretion Not Abused By Board In Sustaining Trademark Opposition
WASHINGTON, D.C. — A panel of the Federal Circuit U.S. Court of Appeals on April 30 said it will not disturb a decision by the Trademark Trial and Appeal Board that turned away an application to register the “#TODECACHO” trademark.
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April 30, 2024
Temu Beats Trademark Claims In Illinois, But Leave To Amend Granted
CHICAGO — Allegations by the maker of a hand grip strengthener that the retail platform Temu sells counterfeit products bearing the “FitBeast” trademark were dismissed without prejudice on April 29 by a federal judge in Illinois, who said the accused conduct is not a use in commerce.
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April 29, 2024
Trademark Owner Tells High Court Jurisdiction Requires Causal Link To Venue
WASHINGTON, D.C. — Impossible Foods Inc. “pushe[s] the minimum-contacts test” for jurisdiction “past its breaking point,” a petitioner argues in a reply supporting its petition for certiorari, in which it asks the U.S. Supreme Court to clarify when specific jurisdiction over a trademark defendant requires a causal relationship between the venue and purported infringement.
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April 26, 2024
N.Y. Federal Magistrate Judge Recommends Fee Denial In Clash Between Music Schools
NEW YORK — A request by a music school and its founder for reimbursement of the attorney fees they incurred in successfully defending allegations of copyright infringement, unfair competition and trade secret misappropriation should not be granted, a federal magistrate judge in New York has recommended.
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April 24, 2024
Professors Tell High Court Disgorged Profits Shouldn’t Include Separate Affiliates
WASHINGTON, D.C. — Filing an amicus curiae brief in support of a company that was hit with a $43 million disgorgement of profits award in a trademark infringement dispute, two law professors tell the U.S. Supreme Court that the Fourth Circuit U.S. Court of Appeals erred in upholding the award, which exceeded the trial court's authorization under the Lanham Act to award a defendant’s profits “subject to the principles of equity.”
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April 24, 2024
Copyright, Trademark, Trade Dress Case Against TikTok Will Largely Proceed
SAN FRANCISCO — Although a motion to dismiss by TikTok Inc. was partly granted April 23, the copyright, trademark and trade dress claims by a China-based company can be repleaded in a fourth amended complaint (FAC), a federal judge in California ruled.
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April 24, 2024
On Remand From SCOTUS, Panel Takes 2nd Look At Foreign Conduct, Sales
DENVER — In a revised opinion issued April 23, the 10th Circuit U.S. Court of Appeals, acting on remand from the U.S. Supreme Court, clarified that downstream, foreign sales and steps taken domestically to facilitate foreign sales cannot factor into the analysis of disgorged profits in a trademark infringement case.
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April 23, 2024
California Federal Judge Disqualifies Defense Counsel In Trademark, Antitrust Case
SAN FRANCISCO — The nearly decade-long assistance to HDMI Licensing Administrator Inc. (HDMI LA) by members of a law firm’s Beijing office bars the firm’s New York office from representing a trademark infringement defendant that has leveled antitrust counterclaims against HDMI LA, a federal judge in California ruled April 22.
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April 19, 2024
Bank Of America Beats Trademark Claims By Search Engine Operator
DENVER — Almost three years after reinstating a trademark infringement action against Bank of America Corp. (BofA), the 10th Circuit U.S. Court of Appeals on April 18 affirmed a Colorado federal judge’s decision on remand to again reject the allegations.
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April 18, 2024
Laches Presumption Not Rebutted, 3rd Circuit Says, Barring Relief, Award
PHILADELPHIA — A federal judge in New Jersey in a case on remand for a second time failed to properly apply the presumption in favor of laches, the Third Circuit U.S. Court of Appeals ruled April 17 in a win for a nonprofit ordered to pay more than $7.8 million in disgorged trademark infringer’s profits it earned in Texas.
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April 17, 2024
In Trademark Row Over Conference Name, 2nd Circuit Vacates Injunction
NEW YORK — A federal judge in New York abused her discretion in preliminarily enjoining New York City and Fire Department of New York (FDNY, collectively) from using the “Medical Special Operations Conference” trademark, the Second Circuit U.S. Court of Appeals ruled April 16, deeming the term descriptive.
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April 16, 2024
Panel: Features Singled Out In Trade Dress Application Lack Distinctiveness
RICHMOND, Va. — An application to register the tube-shaped ankle collar, hexagonal eyelets and other features of Timberland boots was properly rejected by the U.S. Patent and Trademark Office for lacking the distinctiveness required for trade dress protection, the Fourth Circuit U.S. Court of Appeals decided April 15 in a case that drew the interest of the International Trademark Association (INTA) as amicus curiae.
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April 16, 2024
Panel: Ad Use Of Flag, Plea To Buy American Is Not Literally False
DENVER — A request for damages in connection with the use of a construction equipment company’s copyrighted photographs in alleged false advertisements that implored consumers to buy a competitor’s American-made products was rightly rejected by a federal judge in Oklahoma, the 10th Circuit U.S. Court of Appeals has ruled.
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April 15, 2024
Leap Year Dooms Bid For Certiorari In Vans Trademark Litigation
WASHINGTON, D.C. — An opposed motion for leave to file a petition for a writ of certiorari out of time by the maker of “Wavy Baby” shoes accused of infringing Vans Inc.’s trademarks and trade dress was denied April 15 by the U.S. Supreme Court.