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Mealey's Trademarks

  • April 15, 2019

    Arguments Held In Challenge To ‘Scandalous’ Trademark Provision

    WASHINGTON, D.C. — At oral arguments before the U.S. Supreme Court April 15, an attorney for the U.S. Patent and Trademark Office (PTO) told the justices that the Federal Circuit U.S. Court of Appeals erred in declaring the agency’s ban on registrations for “immoral and scandalous” trademarks unconstitutional (Andrei Iancu v. Erik Brunetti, No. 18-302, U.S. Sup.).

  • April 11, 2019

    Religious Amici To High Court: ‘Universal Church’ Mark Is Protectable, Not Generic

    WASHINGTON, D.C. — A group of five disparate religious organizations teamed up to file an amicus curiae brief April 5, asking the U.S. Supreme Court to consider a standard used by the Second Circuit U.S. Court of Appeals in finding the “Universal Church” trademark to be generic, arguing that religious trademarks merit the same consideration and protection as any other trademarks and suggesting that issues of religious liberty are implicated in the present case (The Universal Church Inc. v. Calvin Toellner, et al., No. 18-1159, U.S. Sup.).

  • April 11, 2019

    Judge Enters Default On Musician’s Trademark, UCL Claims, Enters Injunction

    LOS ANGELES — A California federal judge on April 8 entered a default judgment and granted an injunction in favor of a musician and against a concert promoter on claims for trademark infringement, violation of California’s unfair competition law (UCL) and other causes of action, ordering the promotor to return all domain names and social media accounts using the singer’s marks (James Todd Smith v. Guerilla Union, Inc., et al., No. 18-9902, C.D. Calif., 2019 U.S. Dist. LEXIS 60309).

  • April 11, 2019

    Gatorade, Consulting Firm Debate Fair Use Of ‘Sports Fuel’ Mark In 7th Circuit

    CHICAGO — The Seventh Circuit U.S. Court of Appeals heard oral arguments April 9 from The Gatorade Co. and a sports nutrition consulting firm as to whether the sports drink maker’s use of the term “sports fuel” in its marketing constituted trademark use and whether such use was fair under the Lanham Act (SportFuel Inc. v. PepsiCo Inc., et al., No. 18-3010, 7th Cir.).

  • April 10, 2019

    Trade Dress Claims By Bridalwear Designer Dismissed In Kansas

    KANSAS CITY, Kan. — A defendant won dismissal on April 8 of allegations asserted in the District of Kansas that it infringed the trade dress of Jenny Yoo Collection Inc. (JY) with a line of bridesmaid gowns that allow the wearers to change the style of their necklines (Jenny Yoo Collection Inc. v. Essense of Australia Inc., No. 17-2666, D. Kan., 2019 U.S. Dist. LEXIS 59611).

  • April 9, 2019

    Rehearing Request Denied But Stay Entered By Panel In Trademark Dispute

    RICHMOND, Va. — In an April 5 order, the Fourth Circuit U.S. Court of Appeals rejected efforts by the U.S. Patent and Trademark Office (USPTO) to undo a February divided holding that trademark applications by Booking.com are not generic; the same day it denied en banc rehearing, however, the panel stayed its mandate requiring Booking.com to reimburse the USPTO its attorney fees, pending resolution of Iancu v. NantKwest, Inc., No. 18-801, (U.S. Sup.), by the U.S. Supreme Court (Booking.com v. Andre Iancu, Nos. 17-2458, -2459, 4th Cir., 2019 U.S. App. LEXIS 10191).

  • April 8, 2019

    PTO Tells Supreme Court Scandalous Marks Ban Does Not Violate 1st Amendment

    WASHINGTON, D.C. — With April 15 oral argument approaching in a dispute over whether the Lanham Act’s ban on the registration of scandalous or immoral trademarks violates the First Amendment to the U.S. Constitution, the U.S. Patent and Trademark Office (PTO) filed its reply brief with the U.S. Supreme Court on April 2, asking the high court to find the provision constitutional and to overturn a ruling by the Federal Circuit U.S. Court of Appeals that held to the contrary (Andrei Iancu v. Erik Brunetti, No. 18-302, U.S. Sup.).

  • April 3, 2019

    5th Circuit Largely Affirms In Restaurant Trade Dress Row

    NEW ORLEANS — A bill of sale executed in regard to the “Camellia Grill” restaurant assigned all “Camellia Grill” trademarks and trade dress to the new owner, the Fifth Circuit U.S. Court of Appeals ruled March 29 (Uptown Grill LLC, et al. v. Camellia Grill Holdings Inc., et al., No. 18-30515, 5th Cir., 2019 U.S. App. LEXIS 9396).

  • April 3, 2019

    Panel: Trademark Licensee Not Authorized To Sue For Infringement

    ATLANTA — A panel of the 11th Circuit U.S. Court of Appeals on April 1 upheld findings by a Florida federal judge that the former European distributor of a cosmetic line is not authorized by the terms of its trademark license agreement to maintain an infringement action in the United States against the Kardashian sisters (Kroma Makeup EU LLC v. Boldface Licensing & Branding Inc., et al., No. 17-4211, 11th Cir., 2019 U.S. App. LEXIS 9458).

  • March 29, 2019

    11th Circuit Dismisses Appeal Of Injunction In Cybersquatting Case

    CHICAGO — In a March 22 ruling, the 11th Circuit U.S. Court of Appeals dismissed as moot an appeal of a preliminary injunction that prohibited four trademark infringement and cybersquatting defendants from registering various domain names (Heron Development Corporation v. Vacation Tours Inc., et al., No. 17-13351, 7th Cir., 2019 U.S. App. LEXIS 7904).

  • March 29, 2019

    No Disgorged Profits In False Advertising Case, 5th Circuit Says

    NEW ORLEANS — In a March 26 divided ruling the Fifth Circuit U.S. Court of Appeals found no abuse of discretion in a Texas federal judge’s determination that a prevailing false advertising plaintiff is not entitled to disgorged profits (Retractable Technologies Inc. v. Becton Dickinson & Co., No. 17-40960, 5th Cir., 2019 U.S. App. LEXIS 9020).

  • March 25, 2019

    Longstanding Trademark Case Ends In Award Of Profits, Attorney Fees

    MILWAUKEE — In a trademark case she said has “stuck around much longer than the pesky mosquitos the parties’ products sought to repel,” a Wisconsin federal judge on March 22 recommended that the maker of “Off” insect repellant reimburse a competitor $630,449.82 in attorney fees, eight years after filing suit (S.C. Johnson & Son Inc. v. Nutraceutical Corp., et al., No. 11-861, E.D. Wis., 2019 U.S. Dist. LEXIS 47937).

  • March 25, 2019

    Ohio Federal Judge Sides With Franchisor In Trademark Dispute

    CLEVELAND — In a March 12 order addressing competing motions for preliminary injunctive relief, an Ohio federal judge found that a plaintiff-franchisor will likely prevail on its allegation of trademark infringement by former franchisees, thereby triggering a presumption of irreparable harm (Marco’s Franchising LLC, et al. v. Soham Inc., et al., No. 19-301, N.D. Ohio, 2019 U.S. Dist. LEXIS 45072).

  • March 22, 2019

    Amicus Asks High Court To Find Lanham Act’s Scandalous Marks Ban Unconstitutional

    WASHINGTON, D.C. — The Pacific Legal Foundation (PLF) filed an amicus curiae brief with the U.S. Supreme Court on March 21, supporting the owner of the “fuct” clothing line, whose trademark application was denied by the Patent and Trademark Office (PTO) as immoral and scandalous, arguing that this standard violates the First Amendment to the U.S. Constitution (Andrei Iancu v. Erik Brunetti, No. 18-302, U.S. Sup.).

  • March 22, 2019

    Attorney Fee Award In Trademark Dispute Partly Upheld On Appeal

    NEW ORLEANS — Although agreeing with a Louisiana federal judge that a prevailing trademark infringement defendant is entitled to reimbursement of its attorney fees under Section 1117 of the Lanham Act, the Fifth Circuit U.S. Court of Appeals on March 21 remanded to the district judge to “reassess” the amount of fees to be awarded (Alliance for Good Government v. Coalition for Better Government, No. 18-30759, 5th Cir., 2019 U.S. App. LEXIS 8511).

  • March 19, 2019

    Denial Of Fee Award Upheld By 2nd Circuit In Copyright, Trademark Row

    NEW YORK — The Second Circuit U.S. Court of Appeals on March 15 affirmed a decision by a New York federal judge to deny an award of attorney fees on behalf of a prevailing trademark infringement defendant (Louis Vuitton Malletier S.A. v. My Other Bag Inc., No. 18-293, 2nd Cir., 2019 U.S. App. LEXIS 7638).

  • March 14, 2019

    Judge Issues Permanent Injunction To RE/MAX LLC In Trademark Case

    DENVER — RE/MAX LLC was awarded a permanent injunction by a Colorado federal judge on Feb. 27 against a Chinese company from use of its trademark in the sale of its products (RE/MAX LLC v. Shenzhen Remax Co. Ltd., et al., No. 15-02496, D. Colo., 2019 U.S. Dist. LEXIS 39687).

  • March 14, 2019

    Bar Associations Tell High Court Scandalous Marks Ban Was Properly Invalidated

    WASHINGTON, D.C. — In recently filed amicus curiae briefs, two bar associations that specialize in intellectual property law asked the U.S. Supreme Court to affirm the Federal Circuit U.S. Court of Appeals’ finding that the Lanham Act’s prohibition on the registration of immoral or scandalous trademarks violated the First Amendment to the U.S. Constitution because it was viewpoint-based discrimination (Andrei Iancu v. Erik Brunetti, No. 18-302, U.S. Sup.).

  • March 11, 2019

    UPS Wins Injunction In Trademark Dispute With Marijuana Sellers

    LOS ANGELES — A California federal judge on March 8 agreed with United Parcel Service Inc. that incorporation of “UPS” in a logo used connection with the sale and shipment of marijuana is likely to harm the valuable UPS brand (United Parcel Service Inc. v. Brendon Kennedy, et al., No. 19-284, C.D. Calif., 2019 U.S. Dist. LEXIS 37881).

  • March 11, 2019

    2nd Circuit Hears Arguments In Attorney Fees Dispute Over Louis Vuitton Parodies

    NEW YORK — Louis Vuitton Malletier S.A. (LV) and a company that sells tote bags that parody the luxury designer’s products presented arguments on March 4 to the Second Circuit U.S. Court of Appeals as to whether a trial court properly denied the smaller firm’s request for an award of attorney fees, despite its prevailing in a trademark infringement suit brought by LV (Louis Vuitton Malletier S.A. v. My Other Bag Inc., No. 18-293, 2nd Cir.).