Mealey's Trademarks
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December 13, 2018
Scandalous Trademark Ban Not Unconstitutional, PTO Argues To Supreme Court
WASHINGTON, D.C. — In a Dec. 11 reply brief supporting its petition for certiorari, the U.S. Patent and Trademark Office (PTO) defends its decision to deny registration of a trademark it deemed vulgar, asking the U.S. Supreme Court to decide whether the scandalous-marks provision of the Lanham Act violates the First Amendment to the U.S. Constitution (Andrei Iancu v. Erik Brunetti, No. 18-302, U.S. Sup.).
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December 13, 2018
Trademark Licensee Tells High Court Bankruptcy Filings Do Not Rescind Contracts
WASHINGTON, D.C. — A licensee of certain trademark and distribution rights argues in a Dec. 10 merits brief to the U.S. Supreme Court that a bankruptcy filing does not empower a debtor to rescind any agreements or revoke any licensed intellectual property rights that it could not do outside of the bankruptcy context (Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, U.S. Sup.).
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December 12, 2018
Domain Registrar Again Denied Attorney Fees In Lanham Act False Advertising Suit
ALEXANDRIA, Va. — With remand instructions from the Fourth Circuit U.S. Court of Appeals on the proper standard for considering attorney fees awards under the Lanham Act, a Virginia federal judge on Nov. 28 denied an internet domain registrar’s fees motion for a second time, determining that although the defendant prevailed on the false advertising claims brought by Verisign Inc., it did not establish that the case was exceptional (Verisign Inc. v. XYZ.com LLC, et al., No. 1:14-cv-01749, E.D. Va., 2018 U.S. Dist. LEXIS 203037).
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December 11, 2018
False Patent Marking, False Advertising Claims Are Precluded
WASHINGTON, D.C. — A North Carolina federal judge’s decision to dismiss claims of false patent marking and false advertising under the Lanham Act, 15 U.S.C. § 1125, was affirmed Dec. 10 by a per curiam panel of the Federal Circuit U.S. Court of Appeals (Gordon Gravelle v. Kaba Ilco Corp. et al., No. 18-1937, Fed. Cir., 2018 U.S. App. LEXIS 34613).
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December 10, 2018
Federal Circuit: ITC Erred In Denying Relief On Trade Dress Claims
WASHINGTON, D.C. — Allegations that various defaulting respondents imported spine boards, cervical collars, CPR masks, training manikins and product literature that infringed the trade dress of two medical device makers were erroneously rejected by the International Trade Commission (ITC) as inadequately pleaded, the Federal Circuit U.S. Court of Appeals ruled Dec. 7 (Laerdal Medical Corp., et al. v. International Trade Commission, No. 17-2445, Fed. Cir., 2018 U.S. App. LEXIS 34465).
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December 7, 2018
11th Circuit: Lanham Act Claims Over Protein Powder Label Can Proceed
ATLANTA — The 11th U.S. Circuit Court of Appeals on Dec. 3 disagreed with a Georgia federal judge that allegations that a protein-powder supplement label violates the Lanham Act, 15 U.S.C. § 1125(a), fail (Hi-Tech Pharmaceuticals Inc. v. HBS International Corp., No. 17-13884, 11th Cir., 2018 U.S. App. LEXIS 34051).
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December 5, 2018
Trademark Defendant’s Appeal Of Sanctions Rebuffed By 7th Circuit
CHICAGO — In a Nov. 30 ruling, the Seventh Circuit U.S. Court of Appeals wrote that it “cannot say” a Wisconsin federal judge abused her discretion in awarding attorney fees and costs to a plaintiff as a sanction for a defendant’s contempt of a consent judgment that resolved claims of trademark infringement (Seventh Avenue Inc. v. Shaf International Inc., No. 18-1829, 7th Cir., 2018 U.S. App. LEXIS 33595).
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December 5, 2018
Nonprofit Game Charity Asserts Trademark, UCL Claims In Federal Court
LOS ANGELES — A nonprofit organization that provides services in the gaming industry sued another gaming entity on Dec. 3 in a California federal court, asserting claims for trademark infringement and violation of California’s unfair competition law (UCL) in relation to the alleged use of its trademarks (GameChanger Charity v. PlayNext Inc., No. 8:18cv2142, C.D. Calif.).
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December 5, 2018
Maine Federal Judge Temporarily Restrains Trademark Defendant
PORTLAND, Maine — On Dec. 4, hours after docketing a complaint for trademark infringement, a Maine federal judge entered a temporary restraining order (TRO) in the case, enjoining a defendant from using any trademark, logo, design or source designation online that is a copy, reproduction, colorable imitation or simulation of a plaintiff’s trademarks, trade dress and logos (Symetra Life Insurance Co. v. Guy Emerson, No. 18-492, D. Maine, 2018 U.S. Dist. LEXIS 205039).
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December 5, 2018
Insurer Says It Has No Duty To Defend In Trademark Infringement Lawsuit
MADISON, Wis. — The Wisconsin Supreme Court is scheduled to hear oral arguments on Dec. 11 in an insurance dispute where an insurer sought a declaration that it did not owe a duty to defend a medical supply company in an underlying lawsuit for trademark infringement based on an exclusion in the commercial general liability policy at issue (West Bend Mutual Insurance Company v. Ixthus Medical Supply Inc., et al., No. 2017AP909, Wis. Sup.).
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November 30, 2018
Trademark Dispute Over ‘Drifters’ Won’t Be Reopened In North Carolina
CHARLOTTE, N.C. — A North Carolina federal judge on Nov. 29 rejected efforts by a trademark owner to intervene in a dispute over the “Drifters” mark that was originally filed in 1982 (Larry Marshak v. Michael Bridge, No. 82-566, W.D. N.C., 2018 U.S. Dist. LEXIS 200951).
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November 28, 2018
Federal Circuit Affirms Brewery’s Registration For ‘Schlafly’ Trademark
WASHINGTON, D.C. — Efforts by the family of the late conservative icon Phyllis Schlafly to block a relative from trademarking “Schlafly” in connection with a craft brewery were unsuccessful on Nov. 26, when the Federal Circuit U.S. Court of Appeals found that the mark meets the requirements for registration (Phyllis Schlafly Revocable Trust and Bruce Schlafly v. The Saint Louis Brewery, No. 17-1468, Fed. Cir., 2018 U.S. App. LEXIS 33093).
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November 28, 2018
2nd Circuit Adopts Octane Standard For Fee Awards Under Lanham Act
NEW YORK — In a Nov. 27 ruling, the Second Circuit U.S. Court of Appeals vacated a New York federal judge’s determination that a prevailing defendant is entitled to an award of attorney fees under the Lanham Act (Sleepy’s LLC v. Select Comfort Wholesale Corporation, et al., Nos. 15-3560, 16-3595, 2nd Cir., 2018 U.S. App. LEXIS 33202).
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November 21, 2018
$5 Million In Punitive Damages Awarded In California Trademark Case
LOS ANGELES — In a verdict rendered Nov. 16, a California federal jury sided primarily with Monster Energy Co. on claims that a defendant infringed the “Monster” trademarks on a variety of products, including food, clothing, hats, gloves and more (Monster Energy Company v. Integrated Supply Network LLC, No. 17-548, C.D. Calif.).
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November 21, 2018
9th Circuit Rehears Trademark Case, Issues Superseding Opinion
SAN FRANCISCO — In a decision issued Nov. 20, the Ninth Circuit U.S. Court of Appeals ruled that under the balancing test established in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), the Lanham Act, 15 U.S.C. § 1051 et seq., applies to expressive works only where the public interest in free expression is outweighed by the public interest in avoiding consumer confusion (Christopher Gordon v. Drape Creative Inc., et al., No. 16-56715, 9th Cir., 2018 U.S. App. LEXIS 32796).
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November 16, 2018
Dismissal Of Opposition To Trademark Application Vacated By Federal Circuit
WASHINGTON, D.C. — On Nov. 15, the Federal Circuit U.S. Court of Appeals vacated and remanded a dismissal by the Trademark Trial and Appeal Board of opposition by appellant Omaha Steaks International Inc. to an application to register the “Greater Omaha Providing The Highest Quality Beef” trademark (Omaha Steaks International Inc. v. Greater Omaha Packing Co. Inc., No. 18-1152, Fed. Cir., 2018 U.S. App. LEXIS 32317).
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November 12, 2018
Clothing Maker Requests High Court Review Of Scandalous Trademark Standard
WASHINGTON, D.C. — In a Nov. 8 respondent brief, a clothing manufacturer who had his trademark registration denied by the U.S. Patent and Trademark Office (PTO) as too offensive supports the federal government’s petition for certiorari, telling the U.S. Supreme Court that a definitive standard is needed as to what constitutes a scandalous and nonregistrable mark under the Lanham Act (Andrei Iancu v. Erik Brunetti, No. 18-302, U.S. Sup.).
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November 9, 2018
Copyright, Lanham Act Claims Over Technical Drawing Rejected
DETROIT — In a Nov. 8 holding, a Michigan federal judge granted three defendants summary judgment because the manufacture of a machine from a copyrighted technical drawing cannot form the basis of an infringement action (RJ Control Consultants Inc., et al. v. Multiject LLC, et al., No. 16-10728, E.D. Mich., 2018 U.S. Dist. LEXIS 191187).
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November 6, 2018
2nd Circuit Affirms: ‘Universal Church’ Trademarks Are Generic
NEW YORK — In a Nov. 2 holding, the Second Circuit U.S. Court of Appeals agreed that the trademarks “Universal Church” and “The Universal Church” are generic in the context of ministerial and religious worship services and that a New York federal judge did not err in granting summary judgment in favor of various defendants accused of infringement (The Universal Church Inc. v. Calvin Toellner, et al., No. 17‐2960, 2nd Cir., 2018 U.S. App. LEXIS 31153).
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November 5, 2018
8th Circuit Orders New Trial On Allegations Of Cybersquatting
ST. LOUIS — In a Nov. 2 ruling, the Eighth Circuit U.S. Court of Appeals partly found in favor of both parties embroiled in a protracted trademark dispute, upholding a South Dakota federal judge’s rejection of post-trial motions by a defendant accused of infringing the registered “Sturgis Bike Week” mark while also finding that a plaintiff failed to establish that its related registered “Sturgis” and unregistered “Sturgis Motorcycle Rally” and “Sturgis Rally & Races” marks are valid (Sturgis Motorcycle Rally Inc. v. Rushmore Photo & Gifts Inc., et al., Nos. 17-1762, -1869, -2712 and -2731, 8th Cir., 2018 U.S. App. LEXIS 31147).