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

Mealey's Trademarks

January 17, 2024
High Court Told ‘Chaos’ Will Ensue ‘In A World Without Chevron’ Deference

WASHINGTON, D.C. — The U.S. Supreme Court was told Jan. 17 that “chaos” will ensue “in a world without Chevron” deference by government attorneys, who urged it to apply stare decisis and uphold Chevron, which is being challenged in two cases arising out of federal fishing regulations.
January 18, 2024
Law Firm To 9th Circuit: ‘Common Practice’ Of Keyword Ads Infringed No Trademarks

SAN FRANCISCO — Asking the Ninth Circuit U.S. Court of Appeals to affirm a trial court’s judgment that its purchasing of a competitor’s trademark in Google keyword ads was not trademark infringement, an Arizona law firm contends in its appellee brief that the purchasing of such online advertisements is a “common practice” that, at best, resulted in de minimis consumer confusion.
January 17, 2024
On Remand, Judge Awards Fees To Copyright, Trademark Defendants

ANN ARBOR, Mich. — A federal judge in Michigan on Jan. 16 rejected the “quixotic” positions advanced by a copyright and trademark owner and his company in opposing a request for attorney fees by prevailing infringement defendants, declining what he said was a call to “unwind the entire litigation and revisit almost every substantive ruling that has been rendered to date.”
January 16, 2024
Per Jack Daniel’s Ruling, 9th Circuit Reverses In ‘Punchbowl’ Trademark Suit

PASADENA, Calif. — The U.S. Supreme Court’s recent ruling in Jack Daniel’s Properties Inc. v. VIP Products LLC “altered the law that governed” when it previously found that an online news service’s use of the “Punchbowl” mark did not dilute a party-planning firm’s trademark, a Ninth Circuit U.S. Court of Appeals panel held Jan. 12, leading it to, after rehearing, issue a revised opinion reversing a trial court’s dismissal and remanding for further consideration under the traditional likelihood of confusion test.
January 12, 2024
Appellant: Dismissal Of Patent, Copyright, Lanham Act Claims Was Error

WASHINGTON, D.C. — A patent owner is seeking reinstatement of its lawsuit against a former employee and his new company, asserting in an appellant brief filed with the Federal Circuit U.S. Court of Appeals that a Utah federal judge wrongly construed “positioned between” and “formed between” in relation to a claimed air gap in the steel core of a buckling-restrained brace (BRB).
January 10, 2024
Panel Reinstates Unfair Competition Claim, Opens Door To Trade Dress Claim

NEW YORK — A dispute over alleged knock-off coats was revived Jan. 9 by the Second Circuit U.S. Court of Appeals, which said that although the owners of the fashion label Mackage cannot assert trade dress infringement and dilution by a defendant, their claim of common-law unfair competition was wrongly dismissed by a New York federal judge.
January 09, 2024
Early Challenge To Validity Of ‘Beverly Hills Hotel’ Trademark Rebuffed

LOS ANGELES — Allegations made in a motion to dismiss that “Beverly Hills Hotel” is aesthetically functional and thus unprotectable as a trademark have been rejected by a federal judge in California.
January 08, 2024
High Court Won’t Weigh In On Trade Dress Row Between Furniture Companies

WASHINGTON, D.C. — Several months after requesting a response from a high-end furniture designer and trade dress owner, the U.S. Supreme Court on Jan. 8 denied a petition for a writ of certiorari in the case, which posed the question of when intentional copying constitutes evidence of secondary meaning and warrants a finding of infringement.
January 08, 2024
Pet Brush Maker May Subpoena Meta To Obtain Online Counterfeiters’ Identities

SAN FRANCISCO — A group of website operators accused of selling and advertising counterfeit goods lost their bid to quash a discovery subpoena on Meta Platforms Inc., with a California federal judge finding that the plaintiff demonstrated that good cause exists to obtain the defendants’ identifying information for the purpose of serving them with its complaint for intellectual property infringement and unfair competition.
January 05, 2024
Caesars Wins Dismissal Of ‘Suite Series’ Trademark Infringement Claims

LOS ANGELES — A federal judge in California has granted a motion by Caesars Entertainment Inc. to dismiss allegations that it infringed a common-law trademark, rejecting a plaintiff’s claim that its use of “Suite Series” in a 2018 press release qualifies it as trademark owner.
January 03, 2024
Challenge To Trademark Validity Survives Dismissal Bid In Hair Product Row

SEATTLE — A federal judge in Washington has denied a motion by a plaintiff to dismiss a declaratory judgment counterclaim by Bosely Inc., a provider of hair loss treatments, that a federal trademark registration for “ADVANCED HAIR RESTORATION” is invalid.
January 02, 2024
Injunction Denied In ‘Flora’ Cannabinoid-Infused Beverage Case

CHICAGO — A plaintiff that makes a cannabinoid-infused beverage under the “Flora” trademark must litigate its common-law infringement claim against a competitor without a preliminary injunction in place, a federal judge in Illinois has ruled.
January 02, 2024
N.Y. Federal Judge: Dispute Over ‘Air Jordan,’ ‘Dunk’ Trade Dress Will Proceed

NEW YORK — A bid for dismissal has been denied by a federal judge in New York, who said a November 2022 complaint by Nike Inc. adequately identifies not only the trade dress associated with its famed “Air Jordan I” and “Dunk” sneakers but also which elements were allegedly copied by a defendant.
January 02, 2024
Panel: Right To Bench Trial On Disgorgement Waived In Trademark Case

NEW YORK — The Second Circuit U.S. Court of Appeals will not undo a jury’s award of $1.6 million in disgorged profits in a trademark case, agreeing with a New York federal judge that an infringement defendant waived its right to a bench trial.
December 22, 2023
In Delaware, Dispute Over ‘Ugliest House’ Mark Will Continue

WILMINGTON, Del. — A federal judge in Delaware on Dec. 21 adopted the recommendation of a Delaware federal magistrate judge that Warner Bros. Discovery Inc. must face allegations of trademark infringement and trademark dilution leveled in connection with the HGTV show “Ugliest House in America.”
December 22, 2023
Florida Federal Judge Tosses Trademark Claims By Hospice Provider

FORT MYERS, Fla. — Several groups devoted to ensuring access to abortion care for women in Texas on Dec. 21 won dismissal of allegations that they infringe a hospice provider’s trademark, with a Florida federal judge concluding that the case fails on jurisdiction grounds.
December 21, 2023
In Copyright, Trademark Row, Judge Allows Fourth Amended Complaint

SAN FRANCISCO — A federal judge in California on Dec. 20 ruled that a third amended complaint (TAC) seeking cancellation of two trademarks adequately pleads that the underlying applications contained false and misleading information but failed to provide “sufficient factual context” that the applicants knew or had reason to believe that their registrations were procured by fraud.
December 13, 2023
New York Federal Judge: Copyright, Trademark Claims Barred By Res Judicata

NEW YORK — Allegations by a plaintiff that a beekeeping supply company, its owners, operators and others infringed his copyrighted advertising text and made unauthorized references to his trademark while advertising a competing product were dismissed Dec. 12 by a federal judge in New York, who adopted a 2019 report and recommendation for the same by a New York federal magistrate judge.
December 12, 2023
Restaurants Voluntarily Dismiss Claims Accusing Grubhub Of Providing Faulty Info

DENVER — A motion for voluntary dismissal filed by restaurants that accused Grubhub Inc. in a putative class complaint of deceiving consumers by offering faulty information regarding restaurants that did not partner with it was granted by a federal judge in Colorado.
December 07, 2023
Opposition To Trademark Application Correctly Rejected, Panel Rules

WASHINGTON, D.C. — The Trademark Trial and Appeal Board did not err in finding that confusion was unlikely to result from the use of “VÉRITÉ DU TERROIR” in connection with “wines made from grapes from Côtes de Provence” and “VÉRITÉ” in connection with “alcoholic beverages except beers,” the Federal Circuit U.S. Court of Appeals has affirmed.
December 06, 2023
In Appeal Involving Vans Trademarks And Trade Dress, Injunction Upheld

NEW YORK — Writing that “the central issues” presented in an appeal by a trademark infringement defendant of a temporary restraining order (TRO) and preliminary injunction “are governed” by a recent U.S. Supreme Court decision, the Second Circuit U.S. Court of Appeals on Dec. 5 upheld the relief entered by a New York federal judge.
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.”
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.
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.
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.