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

Mealey's Trademarks

April 21, 2023
Request For $34M In Disgorged Profits Rejected In Rolling Paper Row

CHICAGO — A rolling paper company deemed liable by jurors for copyright and trademark infringement that nonetheless prevailed on its own claim for common-law unfair competition will not be awarded disgorged profits, a federal judge in Illinois ruled.
April 21, 2023
Oklahoma Federal Judge Enjoins Franchises From Using ‘Pizza Inn’ Mark

OKLAHOMA CITY — A dispute between a franchisor and two former franchisees over continued use of the “Pizza Inn” trademarks in connection with two Oklahoma restaurants yielded a preliminary injunction, when a federal judge said consumers would likely be confused if relief is not entered.
April 19, 2023
In Minnesota Trademark Row, Judge Sanctions ‘Contumacious’ Conduct

MINNEAPOLIS — A trademark infringement and dilution plaintiff’s request for sanctions against a former licensee and his company was granted April 18 by a federal judge in Minnesota, who said the defendants “contumacious, repeated and dilatory conduct” warrants entry of a default judgment.
April 18, 2023
Judgment On The Pleadings In Copyright, Trademark Case Denied In Florida

TAMPA, Fla. — A bid by a defendant embroiled in a dispute over ownership of copyrights and common-law trademarks associated with the television series “The Seahunter” for judgment on the pleadings was denied April 17 by a Florida federal judge, who said the parties should instead complete discovery.
April 18, 2023
Wisconsin Federal Judge Trims Lanham Act Claims Over ‘Prevagen’ Sales

MADISON, Wis. — In responding to a Wisconsin federal judge’s order requiring it to bolster its jurisdictional allegations that a trademark owner revealed that the sales upon which it based its infringement claims involved genuine products, dooming the bulk of the operative complaint, the judge recently found.
April 17, 2023
Board Denial Of ‘Spark Living’ Trademark Registration Affirmed

WASHINGTON, D.C. — The Federal Circuit U.S. Court of Appeals found no error in a determination by the U.S. Patent and Trademark Office (USPTO)’s Trademark Trial and Appeal Board that a proposed “Spark Living” trademark for residential real estate services would cause confusion with an existing registration for “Spark.”
April 12, 2023
Copyright, Trade Secret, Lanham Act Case Against TikTok To Remain In Texas

WACO, Texas — Efforts by TikTok Inc. and others to transfer copyright infringement, trade secret and false advertising claims leveled against them to California federal court failed April 11, when a Texas federal magistrate judge said the defendants failed to show that a different venue would clearly be more convenient.
April 12, 2023
Panel Reverses Finding That Trademarks Are Functional, Utilitarian

SAN FRANCISCO — A federal judge in California erred in finding that various color-coded dental retention inserts have utilitarian functionality without also asking whether other colors could serve to differentiate the inserts’ retention strengths “equally well,” the Ninth Circuit U.S. Court of Appeals has ruled.
April 04, 2023
Federal Circuit: Trademark Board Erred In Dismissing Opposition To ‘Apple Music’

WASHINGTON, D.C. — In an April 4 holding it deemed a case of first impression, the Federal Circuit U.S. Court of Appeals said the Trademark Trial and Appeal Board wrongly dismissed opposition by the longtime user of “Apple Jazz” to an application by Apple Inc. to trademark “Apple Music.”
April 04, 2023
Copyright, Trademark UCL Claims Over ‘Tangle’ Toy Dismissed In California

SAN FRANCISCO — A federal judge in California on April 3 granted a defendant’s motion to dismiss on personal jurisdiction grounds allegations that it infringed the “Tangle” trademark when selling a similar, competing “Twist & Tangle” toy.
March 30, 2023
In ‘Restaurantware’ Mark Row, Keyword Advertising- Related Claim Tossed

CHICAGO — A federal judge in Illinois on March 29 granted a defendant partial summary judgment that its actions relating to keyword advertising cannot be used as a basis by a trademark owner to assert infringement at trial.
March 28, 2023
‘Socios’ Trademark Usage By Fan Engagement Company Enjoined In United States

SAN FRANCISCO — A trademark dispute between competing providers of professional soccer “fan engagement” programs will proceed with a preliminary injunction in place, a California federal judge ruled March 27.
March 28, 2023
High Court Won’t Review Trademark Case Involving Role Of Licensors

WASHINGTON, D.C. — In its March 27 orders list, the U.S. Supreme Court denied a petition for writ of certiorari that posed the question of whether a trademark licensor is a necessary defendant in a trademark infringement suit against licensees.
March 27, 2023
Counterclaim Seeking Cancellation Of Trademark Application Denied In Florida

ORLANDO, Fla. — A federal judge in Florida on March 24 dismissed as procedurally improper a first amended counterclaim for antitrust violations in a dispute over the “Worlds” trademark as used in connection with cheerleading competitions.
March 22, 2023
Dog Toy Maker, Distillery Square Off At High Court In Trademark Parody Row

WASHINGTON, D.C. — An attorney for Jack Daniel’s Properties Inc. today urged the U.S. Supreme Court to remand to the Ninth Circuit U.S. Court of Appeals an infringement dispute over a chewable dog toy resembling a bottle of Old No. 7 Black Label Tennessee Whiskey, telling the justices, “‘ha ha ha’ is not a standard” under federal trademark law.
March 21, 2023
Attorneys Debate Lanham Act Applicability To Foreign Trademark Infringement

WASHINGTON, D.C. — The U.S. Supreme Court heard oral arguments today in a dispute that poses the question of whether foreign sales by foreign defendants can nonetheless serve as the basis for an award of damages and injunctive relief in favor of a domestic trademark owner.
March 21, 2023
Georgia Federal Judge Dismisses Trademark Case Against Contractor

ROME, Ga. — Claims by the former warranty provider for a bedframe manufacturer that an independent contractor for the manufacturer committed trademark infringement were dismissed March 20 by a federal judge in Georgia, who deemed the allegations conclusory.
March 20, 2023
In Dispute Over Similarly Named Treatment Centers, Defendant Prevails

SEATTLE — Following an October bench trial, a federal judge in Washington on March 17 issued findings of fact and conclusions of law that a defendant’s name and logo do not constitute false designation of origin.
March 17, 2023
Trademark Relief Modified, Reissued Following 2nd Circuit Order

NEW YORK — In accordance with a February directive from the Second Circuit U.S. Court of Appeals, a federal judge in New York has modified and reissued her July 2022 preliminary injunction.
March 13, 2023
Jack Daniel’s Tells High Court Lanham Act Applies To Trademark Use In Parodies

WASHINGTON, D.C. — In its March 10 merits reply brief in a trademark infringement and tarnishment dispute, Jack Daniel’s Properties Inc. asks the U.S. Supreme Court to find that the artistic expression test of Rogers v. Grimaldi conflicts with the Lanham Act’s purpose of “regulat[ing] confusing and misleading uses of trademarks,” thereby “enabling profiteers to misappropriate marks to create their own brands, regardless of serious consumer confusion or mistaken association with incompatible brands.”
March 10, 2023
Federal Circuit Affirms: ‘Oxipurity’ Mark Likely To Cause Confusion

WASHINGTON, D.C. — In a March 9 ruling, the Federal Circuit U.S. Court of Appeals said the Trademark Trial and Appeal Board did not err in upholding a refusal to register “Oxipurity” in connection with chemical products.
March 09, 2023
Domain Expert’s Opinion Excluded In Cybersquatting Dispute With Penn State

HARRISBURG, Pa. — A website domain expert proffered by a recreational vehicle (RV) company accused of trademark infringement and cybersquatting by Pennsylvania State University (Penn State) did not establish a reliable methodology for his opinion that the defendant’s GoPSUrv.com domain did not imply affiliation with the university, a Pennsylvania federal judge found, granting Penn State’s motion to exclude his opinion.
March 07, 2023
United States May Argue At Trademark Arguments, But MPA Will Not

WASHINGTON, D.C. — The U.S. Supreme Court on March 6 granted an unopposed request by the United States to participate in upcoming oral arguments over the free speech implications of parodying a trademark but denied a similar motion by the Motion Picture Association Inc. (MPA).
March 03, 2023
Panel Upholds Patent, False Advertising Rulings By Delaware Federal Judge

WASHINGTON, D.C. — A denial by a federal judge in Delaware of judgment as a matter of law (JMOL) that two patents directed to caller ID are infringed was affirmed by the Federal Circuit U.S. Court of Appeals, along with a grant of JMOL in favor of the defendant, which was also accused of false advertising.
March 03, 2023
Citing Patent Precedents, Virginia Federal Judge Rejects Trademark Manual Challenge

ALEXANDRIA, Va. — Efforts by an unsuccessful trademark applicant to seek judicial review were turned away by a Virginia federal judge, who agreed with the U.S. Patent and Trademark Office (PTO) that administrative remedies in the dispute have not been exhausted.