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

Mealey's Trademarks

October 03, 2023
Panel Affirms Lawsuit Over Defense, Enforcement Of Trademark Was Untimely

NEW ORLEANS — An action under Louisiana common law stemming from efforts to defend and enforce previously registered trade dress was filed “simply too late,” a panel of the Fifth Circuit U.S. Court of Appeals affirmed.
October 03, 2023
Certiorari Bid Denied In Dispute Over Challenge To Trademark Validity

WASHINGTON, D.C. — A California credit union on Oct. 2 failed to persuade the U.S. Supreme Court to review a decision by the Ninth Circuit U.S. Court of Appeals that found that a declaratory trademark invalidity claim was mooted by a grant of summary judgment in favor of a party accused of trademark infringement.
September 29, 2023
Dunkin’ Donuts Files Infringement Action Against E-Cig Company For ‘Vapin’ Logo

BROOKLYN, N.Y. — The parent company of the Dunkin’ Donuts chain and an affiliated company are suing an e-cigarette company and its CEO in New York federal court for trademark infringement, alleging that the defendants are illegally using a Dunkin’ Donuts-style logo design to boost sales of their “Vapin’ Donuts” e-cigarette products.
September 29, 2023
Sony Waives Response To Petition Over Trademark Rights In Celebrity Personas

WASHINGTON, D.C. — Sony Pictures Entertainment Inc. opted against responding to a petition for certiorari in which the executor of a deceased actor’s estate asks the U.S. Supreme Court to find that a celebrity owns trademark rights in his or her persona under the Lanham Act.
September 25, 2023
AI Company: Health Care Startup Stole Sci-Fi-Based Trademark

NEW YORK — A startup health care company that uses artificial intelligence to tailor treatments skipped the hard part of earning its own reputation and instead simply stole an existing and completely unique name and established trademark in an effort to confuse consumers, an artificial intelligence technology company tells a New York federal court.
September 22, 2023
Trademark Infringement Dispute Between Clothing Boutiques Is Reinstated

CINCINNATI — A divided panel of the Sixth Circuit U.S. Court of Appeals on Sept. 21 said a federal judge in Kentucky wrongly dismissed allegations of trademark infringement leveled by a boutique children’s clothing designer but rightly ruled in favor of a defendant with regard to functionality of the plaintiff’s claimed trade dress.
September 22, 2023
AI Health Care Company Seeks To Defend Common-Law Trademark

SAN FRANCISCO — A company’s registration of an already-in-use trademark and its intention to use the mark going forward sow confusion and tie the name’s existing goodwill to a disreputable entrepreneur in violation of the California unfair competition law (UCL), among others, a company hoping to use artificial intelligence in the medical education space says in a complaint.
September 21, 2023
Fee Request In Trademark Row Is ‘Meritless,’ Kentucky Federal Judge Concludes

FRANKFORT, Ky. — Upon finding that a plaintiff did not “show exceptionally problematic behavior” in seeking a declaration of trademark infringement, a federal judge in Kentucky on Sept. 20 denied a bid for attorney fees by two prevailing defendants.
September 20, 2023
Florida Federal Magistrate Judge: Trademark Owner Entitled To $284K Fee Award

ORLANDO, Fla. — Alan Parsons, co-founder of The Alan Parsons Project rock band, should be awarded $284,919.05 in attorney fees in connection with his successful litigation of a trademark infringement action against a former business associate, a federal magistrate judge in Florida found.
September 19, 2023
Judge Grants AI Image Company Default Judgment In Trademark Dispute

SAN FRANCISCO — A federal judge in California adopted a report and recommendation granting default judgment in a trademark case involving the “brazen conduct” of a “trademark pirate,” enjoining the defendants from infringing on artificial intelligence image generator Midjourney Inc.’s trademark and awarding $72,972 in attorney fees but denying a request for damages.
September 19, 2023
Bid For Trademark Cancellation Was Properly Dismissed, Panel Rules

NEW YORK — The Second Circuit U.S. Court of Appeals on Sept. 18 upheld dismissal of a lawsuit seeking cancellation of the “LEFT CENTER RIGHT” trademark, agreeing with a federal magistrate judge in New York that there is no case or controversy between the parties.
September 18, 2023
Government Urges High Court To Uphold ‘Bedrock Principle’ Of Chevron Deference

WASHINGTON, D.C. — The U.S. secretary of Commerce, two National Oceanic and Atmospheric Administration (NOAA) officials and the National Marine Fisheries Service (NMFS) (collectively, the government) urge the U.S. Supreme Court in a Sept. 15 brief to not overrule the doctrine of Chevron deference in a challenge to fishery regulations that were upheld by the District of Columbia Circuit U.S. Court of Appeals, writing that doing so could “cause disruption” to complex federal regulatory schemes.
September 18, 2023
Panel Articulates Standard For Comparison Prior Art In Design Patent Disputes

WASHINGTON, D.C. — Four years after vacating a summary judgment of infringement in a dispute over a patented heat reflecting material, the Federal Circuit U.S. Court of Appeals on Sept. 15 vacated a jury’s verdict, on remand, of noninfringement in the same dispute.
September 18, 2023
Defaulting Trademark Defendant Won’t Be Ordered To Pay Plaintiff’s Fees

MINNEAPOLIS — Although granting permanent injunctive relief and deeming a trademark defendant’s infringement willful, a federal judge in Minnesota on Sept. 15 denied the trademark owner’s request for attorney fees.
September 15, 2023
Declaratory Judgment Action Over ‘Impossible’ Trademark Reinstated

SAN FRANCISCO — A federal judge in California erred in dismissing, for lack of personal jurisdiction, a request by Impossible Foods Inc. for a declaration of noninfringement with regard to the “IMPOSSIBLE” trademark, a divided Ninth Circuit U.S. Court of Appeals has ruled.
September 15, 2023
Credit Union To High Court: Noninfringement Ruling Does Not Moot Invalidity Claim

WASHINGTON, D.C. — In a reply brief supporting its petition for certiorari, a California credit union asks the U.S. Supreme Court to take up “important trademark questions” related to whether a federal district court retains jurisdiction over a declaratory validity claim when an accompanying infringement allegation has been resolved.
September 14, 2023
Adidas Says Jury Instructions, Expert Testimony Rulings Require New Trademark Trial

NEW YORK — A trial court’s failure to instruct the jury on the proper trademark infringement standard and its errant conclusion on expert witness methodologies necessitate a new trial in a dispute over whether designer Thom Browne Inc. infringed or diluted its longtime “Three-Bar Signature” trademark, adidas America Inc. argues in a reply brief in the Second Circuit U.S. Court of Appeals.
September 08, 2023
Injunction Entered In Florida Trademark, Copyright Dispute Over ‘Masha And The Bear’

MIAMI — A federal judge in Florida on Sept. 7 adopted in full a Florida federal magistrate judge’s recommendation that the owner of copyrights and trademarks associated with the hit children’s television show “Masha and the Bear” be awarded a preliminary injunction while it proceeds with an infringement action against myriad online counterfeiters.
September 08, 2023
Panel Undoes JMOL, In Part, In ‘Rex Real Estate’ Trademark Row

NEW ORLEANS — A federal judge in Texas wrongly concluded that a reasonable jury could not find a likelihood of confusion between a real estate company and an artificial intelligence (AI)-based real estate website both operating as “Rex Real Estate,” the Fifth Circuit U.S. Court of Appeals has ruled, partially reversing and remanding a grant of judgment as a matter of law (JMOL).
September 07, 2023
Trademark Owner To High Court: Lanham Act’s Names Clause Violates 1st Amendment

WASHINGTON, D.C. — A man who was denied registration of the trademark “Trump Too Small” by the U.S. Patent and Trademark Office (PTO) argues in the U.S. Supreme Court that the Federal Circuit U.S. Court of Appeals properly reversed the registration denial by finding a Lanham Act provision against the trademark registration of public figures’ names to be in violation of the First Amendment to the U.S. Constitution as a content-based restriction on speech.
September 06, 2023
9th Circuit Nixes ‘Punchbowl’ Trademark Holding In Light Of Jack Daniel’s Ruling

PASADENA, Calif. — The U.S. Supreme Court’s recent trademark dilution decision in Jack Daniel’s Properties Inc. v. VIP Products LLC led a Ninth Circuit U.S. Court of Appeals panel to vacate its ruling in a dispute between two online-based companies over the “Punchbowl” trademark and designate the case for reargument.
August 31, 2023
After Jury Trial Over Swim School Trade Dress, Enhanced Damages Denied

HOUSTON — A federal magistrate judge in Texas has awarded a prevailing trade dress infringement plaintiff $482,863.75 in attorney fees on grounds that the case qualifies as exceptional but in the same order denied a request for enhanced damages.
August 29, 2023
Credit Unions Argue Trademark Invalidity, Jurisdiction In Supreme Court Briefs

WASHINGTON, D.C. — Two credit unions that had concurrent trademark proceedings in the Trademark Trial and Appeal Board (TTAB) and federal court argue in the U.S. Supreme Court as to whether certiorari is needed to establish when a summary judgment ruling in a trademark dispute moots federal jurisdiction for declaratory claims of trademark registration validity.
August 28, 2023
Injunction In ‘KitchenAid’ Trademark, Trade Dress Case Upheld By Panel

NEW ORLEANS — Efforts by a Chinese company and its subsidiaries to enter the stand mixer market with a product that bears a resemblance to the “iconic” KitchenAid stand mixer are likely to infringe the KitchenAid trade dress, the Fifth Circuit U.S. Court of Appeals said Aug. 25.
August 24, 2023
Judge Awards Spanish Company Attorney Fees After Confirming Award In Dog Meds Row

COLUMBIA, S.C. — A South Carolina federal judge awarded a Spanish company nearly $150,000 in attorney fees after confirming an arbitral award in which it was ordered to pay a nominal amount of 5,000 euros to two U.S. companies for a dog medication intellectual property dispute but was still determined to be the prevailing party and awarded nearly $1 million worth of attorney fees and arbitration costs.