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

Mealey's Trademarks

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.
August 24, 2023
No Trademark Retrial In Nevada Row Between Airline Charter, Airplane Maker

LAS VEGAS — A bid for a jury trial by a counterclaimant who lost at a bench trial on its allegations of trademark infringement and unfair competition was denied by a federal magistrate judge in Nevada Aug. 23.
August 24, 2023
Trademark Dispute Between Isley Brothers Will Proceed, Illinois Federal Judge Rules

CHICAGO — A bid by Ronald Isley for dismissal of his brother Rudolph Isley’s lawsuit seeking a declaration of 50% ownership of “The Isley Brothers” was denied Aug. 23 by a federal judge in Illinois.
August 23, 2023
Dismissal Motion Ordered For J&J Former Debtor’s Suit Over Asbestos Talc Study

TRENTON, N.J. — The author of an asbestos talc study who is accused of fraud by Johnson & Johnson (J&J) spinoff LTL Management LLC must file her proposed motion to dismiss the case by Sept. 8, according to a docket entry by a New Jersey federal judge, who also rejected a pre-motion conference.
August 23, 2023
11th Circuit: Trademark Licensee Can Sue For Federal Unfair Competition

ATLANTA — A federal judge in Georgia erred when deciding that a trademark licensee lacks sufficient ownership rights to maintain an action for federal unfair competition without express authorization from the trademark licensor, the 11th Circuit U.S. Court of Appeals ruled Aug. 22.
August 22, 2023
Judge Adopts Report As To Expert Testimony In ‘Vitamin Energy’ Coverage Suit

PHILADELPHIA —A federal judge in Pennsylvania adopted a magistrate’s report that recommended denying the manufacturer and marketer of a vitamin energy shot’s motion to exclude the testimony of the insurer’s expert to the extent it seeks to exclude the expert from testifying altogether in a coverage dispute arising from an underlying false advertising lawsuit brought by a competitor.
August 22, 2023
2nd Circuit Vacates $2M Damage Award In ‘Kirby’ Sailboat Trademark Row

NEW YORK — Although upholding findings by a federal judge in Connecticut that two former licensees of a sailboat design misappropriated the designer’s name in violation of Connecticut common law, the Second Circuit U.S. Court of Appeals vacated an award of $2,056,736.33 for willful trademark infringement.
August 18, 2023
AI Legal Application Founder Says Japanese Company Is Infringing Trademark

SAN FRANCISCO — A Japanese company and its United States-based entity are a single enterprise that sucked up all available venture capital funding in the artificial intelligence based legal applications by using an already trademarked name, a Arizona-based intellectual property law firm told a federal judge in California in opposing a motion to dismiss California unfair competition law and other claims.
August 15, 2023
OpenAI Says Name Of Competitor ‘Transparent’ Attempt To Leverage Reputation

SAN FRANCISCO — Artificial intelligence company OpenAI Inc. says in a complaint that a competitor adopted a nearly identical name in a “transparent” attempt to “sow consumer confusion” and trade on its hard work and reputation in the wake of the release of ChatGPT.
August 11, 2023
Counterclaim For Trademark Cancellation Dismissed By Massachusetts Federal Judge

BOSTON — A dispute over the “NuSpeech” trademark will proceed without a counterclaim for trademark cancellation, a federal judge in Massachusetts ruled Aug. 10, because the counterclaimant fails to assert a commercial interest that has been harmed by the registration.
August 10, 2023
$43M Profit Disgorgement Award In Trademark Row Affirmed By 4th Circuit

RICHMOND, Va. — A judgment by a federal judge in Virginia that included a $43 million award of disgorged profits and a permanent injunction barring a real estate development group led by an individual with the surname “Dewberry” from rebranding itself as “Dewberry Group” will stand, a divided Fourth Circuit U.S. Court of Appeals ruled Aug. 9.
August 04, 2023
Food Manufacturer Defends 3rd Circuit Appeal Of Default, Injunction Denials

PHILADELPHIA— A manufacturer and distributor of Indian foods that owns the U.S. rights to the “Bournvita” trademark tells the Third Circuit U.S. Court of Appeals that a trial court’s denials of its motions for default judgment against purported counterfeiters and a motion for reconsideration constituted final rulings that establish jurisdiction in the appeals court.
August 03, 2023
Amici Brief High Court On 1st Amendment Issues Over ‘Trump Too Small’ Trademark

WASHINGTON, D.C. — The Motion Picture Association Inc. (MPA) filed one of five amicus curiae briefs in a case where the U.S. Supreme Court will consider the constitutionality of a decision by the U.S. Patent and Trademark Office (PTO) to deny registration for trademarks that include the name of a public figure, with the amici weighing in on balancing the interests of the First Amendment to the U.S. Constitution with the protections of the Lanham Act.
August 02, 2023
Orders Related To Proposed Settlement Vacated In Grubhub Faulty Info Class Suit

DENVER — A federal magistrate judge in Colorado issued a minute order vacating orders related to an amended proposed settlement agreement in a class lawsuit by restaurants accusing Grubhub Inc. of deceiving consumers by offering faulty information regarding restaurants that did not partner with it after the parties filed a notice of termination of settlement.
August 02, 2023
Ex-Coach Wins Fee Award In Trademark Dispute With University

CHICAGO — A federal judge in Illinois on Aug. 1 deemed trademark infringement allegations leveled by Saint Xavier University (SXU) against its former head men’s baseball coach sufficiently baseless to warrant an award of attorney fees.
August 01, 2023
Emergency TRO Entered In Trademark, Copyright Row Between Shein, Temu

CHICAGO — A federal judge in Illinois said July 31 that Roadget Business Pte. Ltd., operator of the low-cost fashion and home goods website Shein.com, is likely to succeed on its contributory and vicarious trademark infringement and copyright infringement claims against the operators of the competing website Temu.com.
July 28, 2023
Copyright, Trademark Claims Leveled Over Kushner Documentary Tossed

ROANOKE, Va. — A Virginia federal judge on July 27 granted dismissal of allegations of copyright and trademark infringement by the author of “Slumlord Millionaire,” a how-to book about the real estate industry, in connection with an identically-titled episode of the Netflix Inc. series “Dirty Money.”
July 28, 2023
Award Of Fees, Profits In ‘La Bamba’ Trademark Row Upheld By 6th Circuit

CINCINNATI — A restaurant that incorporated “La Bamba” into its name without the permission of the owner of the trademark for use in connection with restaurant services was correctly ordered by a federal judge in Kentucky to pay $22,907.26 in infringer’s profits, the Sixth Circuit U.S. Court of Appeals said July 27.
July 25, 2023
9th Circuit Clarifies Standard For Willful Blindness In Trademark Cases

SAN FRANCISCO — General knowledge that a party is using a product to engage in trademark infringement is not enough to sustain a finding of willful contributory infringement, the Ninth Circuit U.S. Court of Appeals ruled July 24; instead, according to the panel, a defendant must have knowledge of “specific infringers or instances of infringement.”
July 24, 2023
Dispute Over Alleged Infringement Of ‘Taser’ Trademark Will Go To Trial

LAS VEGAS — A federal judge in Nevada has rejected claims that the term “Taser” has become generic for a class of conducted-energy weapons (CEWs), clearing a path for an upcoming trial on allegations of trademark infringement.
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.