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Mealey's Trademarks

  • August 15, 2017

    New York Federal Judge Issues $19.35 Million Award In Trademark Case

    NEW YORK — A dispute over engagement rings marketed by Costco Wholesale Corp. with “Tiffany” signage ended in a $19.35 million award on Aug. 14, when a New York federal judge agreed that the jeweler is entitled to trebled damages (Tiffany and Company v. Costco Wholesale Corp., No. 13-1041, S.D. N.Y., 2017 U.S. Dist. LEXIS 128946).

  • August 10, 2017

    Virginia Federal Judge Directs Trademark Office To Register Booking.com

    ALEXANDRIA, Va. — In an Aug. 9 ruling, a Virginia federal judge declared “Booking.com” a descriptive trademark that has acquired secondary meaning in Class 43 for hotel reservation services (Booking.com B.V. v. Joseph Matal, No. 16-425, E.D. Va., 2017 U.S. Dist. LEXIS 126320).

  • August 9, 2017

    Dismissal Denied For Tobacco Product Distributor In Trademark Infringement Suit

    CHICAGO — A federal judge in Illinois on Aug. 7 denied a motion to dismiss brought by a counterdefendant in a tobacco product trademark infringement suit after finding that the court had jurisdiction over the counterclaims because the counterdefendant, which is based in California, has done business in Illinois (Republic Technologies, et al. v. BBK Tobacco & Foods, No. 16-CV-3401, N.D. Ill., 2017 U.S. Dist. LEXIS 124673).

  • August 7, 2017

    Judge Says UPS Franchisees Lack Standing To Bring False Advertising Claims

    NEW YORK — A New York federal judge on Aug. 2 granted summary judgment to The UPS Store Inc., United Parcel Service and owners of Manhattan UPS stores accused of false advertising under the Lanham Act, saying that UPS franchisees lacked standing to bring their claims (The UPS Store, Inc., et al. v. Robert Hagan, et al., No. 14-cv-1210, S.D. N.Y., 2017 U.S. Dist. LEXIS 121352).

  • August 4, 2017

    Clothier Tells 2nd Circuit 2003 Agreement Does Not Cover Subsequent Infringement

    NEW YORK — In a July 24 reply brief in the Second Circuit U.S. Court of Appeals, a clothing manufacturer argues that a 2003 agreement that settled a trademark dispute over a rival’s use of the “Lucky” mark did not serve to bar future infringement claims arising from future, distinct actions (Marcel Fashions Group Inc. v. Lucky Brand Dungarees Inc., et al., No. 17-0361, 2nd Cir.).

  • August 4, 2017

    Financial Firms Argue Jurisdiction In 7th Circuit ‘Ariel’ Trademark Suit

    CHICAGO — Two investment firms that use the “Ariel” trademark in their names filed briefs in the Seventh Circuit U.S. Court of Appeals, disputing whether an Illinois court properly exercised  jurisdiction over the Florida-based defendant in the trademark infringement lawsuit (Ariel Investments LLC v. Ariel Capital Advisors LLC, No. 17-1516, 7th Cir.).

  • August 4, 2017

    DJ, Rapper Argue Trademark Likelihood Of Confusion Factors To High Court

    WASHINGTON, D.C. — In a July 14 brief, a rapper and related parties asked the U.S. Supreme Court to deny a Michigan DJ’s petition for certiorari in a dispute over the trademark “DJ Logic,” contending that the Sixth Circuit U.S. Court of Appeals applied the proper standards in affirming that there was no likelihood of confusion between the parties’ respective marks (Lee Jason Kibler v. Robert Bryson Hall II, et al., No. 16-1365, U.S. Sup.).

  • August 2, 2017

    New York Federal Judge Sides With Trademark Owner, Issues Relief

    ALBANY, N.Y. — A dispute over the “FLAX” trademark was resolved Aug. 1 in favor of the mark owner, when a New York federal judge found that a defendant’s use of “Dr. Flax” was likely to cause confusion (Heartland Trademarks Ltd. v. Dr. Flax LLC, No. 17-795, N.D. N.Y., 2017 U.S. Dist. LEXIS 120440).

  • August 2, 2017

    9th Circuit Remands Trademark Case, Finds Confusion Likely

    SAN FRANCISCO — An Arizona federal judge erred in his assessment of likelihood of confusion following a trademark infringement bench trial but properly rejected a defendant’s effort to invoke a doctrine established by the U.S. Supreme Court in a pair of decisions issued in the early 20th century, the Ninth Circuit U.S. Court of Appeals ruled July 11 (Stone Creek Inc. v. Omnia Italian Design Inc., No. 15-17418, 9th Cir., 2017 U.S. App. LEXIS 12393).

  • August 1, 2017

    Mattress Seller, Review Website Settle, Dismiss False Advertising Lawsuit

    NEW YORK — In a July 28 stipulation of dismissal filed in New York federal court, an online mattress retailer and a mattress review website operator announced that they have settled their respective false advertising claims, brought under the Lanham Act and state law (Casper Sleep Inc. v. Derek Hales, et al., No. 1:16-cv-03223, S.D. N.Y.).

  • August 1, 2017

    Domain Registrar Appeals Fees Denial In False Advertising Suit To 4th Circuit

    RICHMOND, Va. — A domain registry firm that prevailed in a Lanham Act false advertising suit appealed a denial of its quest for attorney fees to the Fourth Circuit U.S. Court of Appeals, arguing in a July 31 brief that a trial court used the incorrect evidentiary standard and failed to consider evidence of the plaintiff’s improper motive in filing suit (Verisign Inc. v. XYZ.com LLC, et al., No. 17-1704, 4th Cir.).

  • August 1, 2017

    Texas Federal Judge Grants Motion To Amend Restaurant Franchisor’s Trademark Suit

    AUSTIN, Texas — A Texas federal judge on July 31 granted a motion to file a second amended complaint requested by restaurant franchisors and denied a restaurant group’s motion to dismiss the trademark infringement lawsuit, saying that the defendant would not suffer undue prejudice and that it did not appear to be an effort to circumvent the defendant’s motion to dismiss the suit (Stockade Cos. LLC, et al. v. Kelly Restaurant Group LLC, No. 1:17-cv-143, W.D. Texas, 2017 U.S. Dist. LEXIS 120012).

  • July 28, 2017

    Sears Home & Business Sues Ex-Franchisee For Alleged Use Of Marks And Trade Secrets

    CHICAGO — Sears Home & Business Franchises Inc. on July 14 filed a five-count complaint in Illinois federal court seeking a preliminary injunction enjoining a former franchisee from continuing to operate two businesses as if authorized by Sears Home and from using its marks, confidential information and trade secrets (Sears Home & Business Franchises Inc. v. Arizona Garage Doors & Repair Inc., et al., No. 1:17-cv-05239, N.D. Ill., Eastern Div.).

  • July 28, 2017

    Texas Federal Judge Cuts Fees For Salon Franchisor In Breach Of Contract Suit

    HOUSTON — A Texas federal judge on July 27 awarded a hair salon franchisor $26,900 in attorney fees and $8,649.42 in litigation expenses and court costs, less than the $62,344 the franchisor was seeking, in a case against a former franchisee alleging breach of contract, unfair competition and trademark and trade dress infringement, finding duplication of effort between the two law firms that worked on the case (Fantastic Sams Franchise Corporation v. Gerald Mosley, No. 16-2318, S.D. Texas; 2016 U.S. Dist. LEXIS 177941).

  • July 27, 2017

    Mr. Softee Inc. Sues Ex-Franchisee Over Use Of Name, Trademarks

    CAMDEN, N.J. — Mr. Softee Inc. on July 13 filed a trademark infringement lawsuit in New Jersey federal court against a former franchisee, alleging that he is operating ice cream stands at the Jersey Shore using the Mister Softee trademarks without permission (Mister Softee Inc. v. Carl Gallucci, No. 1:17-cv-05124, D. N.J.).

  • July 26, 2017

    Judge Vacates Default Ruling In Athletic Apparel Trademark Infringement Case

    SAN DIEGO — A California federal judge on July 24 set aside a default ruling entered against the chief operating officer of an apparel company that allegedly infringed on another entity's trademark in violation of federal trademark law and California's unfair competition law (UCL), finding that setting aside the default ruling would not prejudice the owner of the mark (Lights Out Holdings LLC v. Lights Out Apparel LLC, et al., No.16cv2195, S.D. Calif., 2017 U.S. Dist. LEXIS 115326).

  • July 21, 2017

    11th Circuit Upholds Rejection Of Copyright, Trademark Claims

    ATLANTA — Allegations that a copyright and trademark infringement defendant befriended a plaintiff under false pretenses in order to misappropriate portions of her autobiography for a line of perfumes were properly rejected by a Georgia federal judge, the 11th Circuit U.S. Court of Appeals ruled July 18 (Daisy Byrd Mobley v. Claire Fermont-Langlais, et al., No. 16-12340, 11th Cir., 2017 U.S. App. LEXIS 12841).

  • July 17, 2017

    Florida Federal Judge Dismisses Counterfeit Tobacco Pipe Lawsuit

    MIAMI. — A federal judge in Florida on July 7 denied a glass-pipe maker’s motion for default judgment in a copyright infringement suit and dismissed the suit without prejudice after finding that the plaintiff “lacks standing to pursue its federal claims” and the court lacks subject matter jurisdiction (Sream Inc. v. Mayasam, Inc., No. 16-cv-24825, S.D. Fla., 2017 U.S. Dist. LEXIS 106100).

  • July 14, 2017

    Day Care Firm Says National Marketing Did Not Violate Regional Trademark Order

    RICHMOND, Va. — In a July 5 reply brief to the Fourth Circuit U.S. Court of Appeals, a day care operator argues that a national marketing campaign in which it participated did not run afoul of a consent judgment prohibiting it from offering services under the “Rainbow” trademark in the Fayetteville, N.C., area and, thus, a contempt ruling against it should be reversed (Rainbow School Inc. v. Rainbow Early Education Holding LLC, et al., Nos. 17-1055 and 17-1123, 4th Cir.).

  • July 13, 2017

    Bourbon Seller Tells 5th Circuit Its Trademark Was Wrongly Deemed Abandoned

    NEW ORLEANS — A high-end bourbon whiskey distributor argues in a June 30 brief to the Fifth Circuit U.S. Court of Appeals that a jury incorrectly found its “Cowboy Little Barrel” trademark to be abandoned because it was wrongly precluded from presenting evidence of an intent to resume use of the mark (Allied Lomar Inc. v. Lone Star Distillery LLC, et al., No. 17-50148, 5th Cir.).