Mealey's Trademarks

  • April 03, 2020

    Storm Shelter Firm Seeks Review Of Manufacturer-Distributor Trademark Standard

    WASHINGTON, D.C. — In a March 16 reply brief supporting its petition for certiorari, a maker of storm shelters asks the U.S. Supreme Court to consider the application of a manufacturer-distributor test in its dispute over the ownership of the “LifeSaver Storm Shelters” trademark with a former dealer of its products (Southern Illinois Storm Shelters Inc., et al. v. 4SEMO.Com Inc., No. 19-990, U.S. Sup.).

  • April 02, 2020

    Parties Debate Assignability Of Trademark Consent Decree In Supreme Court Briefs

    WASHINGTON, D.C. — In an April 2 opposition brief, a water quality firm tells the U.S. Supreme Court that the Sixth Circuit U.S. Court of Appeals correctly found that it was the assignee of a 2003 consent judgment that pertained to trademarks and trade secrets at issue in the present suit, asking the high court to deny a petition for certiorari raising questions of assignability and enforcement of such consent decrees (M.W. Watermark LLC, et al. v. Evoqua Water Technologies LLC, No. 19-1079, U.S. Sup.).

  • April 02, 2020

    In Trademark Case, Panel Undoes Injunction Barring Dog Toy Sales

    SAN FRANCISCO — Although agreeing with an Arizona federal judge’s determination that the Jack Daniel’s trademark and related bottle design trade dress are valid, the Ninth Circuit U.S. Court of Appeals on March 31 reversed findings that the trademark and trade dress are infringed and diluted by a squeaking dog toy in the shape of a liquor bottle (VIP Products LLC v. Jack Daniel’s Properties Inc., No. 18-16012, 9th Cir., 2020 U.S. App. LEXIS 10037).

  • April 02, 2020

    New Jersey Federal Judge Enters $11M Award In Trademark Case

    TRENTON, N.J. — In an April 1 memorandum, a federal judge in New Jersey ordered a nonprofit organization to pay a fellow nonprofit more than $11 million in disgorged profits for trademark infringement (Kars 4 Kids Inc. v. America Can!, Nos. 14-7770, 16-4232, D. N.J., 2020 U.S. Dist. LEXIS 56857).

  • April 02, 2020

    PTO Asks Supreme Court To Find ‘Generic.com’ Trademarks Unprotectable

    WASHINGTON, D.C. — In a March 13 merits reply brief, the U.S. Patent and Trademark Office (PTO) tells the U.S. Supreme Court that longstanding case law teaches that the adding of a top-level domain (TLD), such as “.com,” to a generic term does not create a registrable, protectable trademark, asking the high court to reverse a Fourth Circuit U.S. Court of Appeals ruling to the contrary in favor of Booking.com B.V. (U.S. Patent and Trademark Office, et al. v. Booking.com B.V., No. 19-46, U.S. Sup.).

  • March 31, 2020

    Dispute Between Miller, Craft Brewer To Proceed In California Court

    SAN DIEGO — A federal judge in California on March 27 denied a motion for summary judgment by MillerCoors LLC, which stands accused of willfully infringing the “STONE®” trademark when “refreshing” the packaging for its sub-premium “Keystone” beer (Stone Brewing Company LLC v. MillerCoors LLC, No. 18-331, S.D. Calif., 2020 U.S. Dist. LEXIS 54864).

  • March 31, 2020

    Judge Excludes Expert And His Confusion Survey In Trademark Competition Suit

    ORLANDO, Fla. — A consumer survey to determine the likelihood of confusion of trademarks was rendered meaningless when the expert who conducted the survey removed the marks from the two products used in the comparison, a Florida federal judge held March 30 in granting a defendant company’s motion to exclude the expert’s testimony (Pro Video Instruments, LLC v. Thor Fiber, Inc., No. 6:18-cv-1823, M.D. Fla., 2020 U.S. Dist. LEXIS 54876).

  • March 30, 2020

    Panel Affirms Summary Judgment In Favor Of Trade Dress Defendant

    RICHMOND, Va. —The Fourth Circuit U.S. Court of Appeals on March 27 agreed with a North Carolina federal judge that an appellant’s claimed trade dress for its chicken feeder is functional, and thus qualifies for protection only via utility patent (CTB Inc. v. Hog Slat Inc., No. 18-2107, 4th Cir., 2020 U.S. App. LEXIS 9642).

  • March 26, 2020

    Kansas Federal Judge: Trade Dress Claims Not Preempted By Patent Clause

    KANSAS CITY, Kan. — A request for summary judgment by the maker of an accused bridesmaid gown was denied March 24 by a federal judge in Kansas, who rejected as “not well taken” arguments by the defendant that trade dress infringement claims are preempted by the patent clause of the U.S. Constitution (Jenny Yoo Collection Inc. v. Essense of Australia Inc., No. 17-2666, D. Kan., 2020 U.S. Dist. LEXIS 50486).

  • March 24, 2020

    Counterclaims, Affirmative Defenses Dismissed In Kentucky Trademark Row

    BOWLING GREEN, Ky. — A federal judge in Kentucky on March 23 sided with Maker’s Mark Distillery Inc., in part, in its case against a defendant who continued selling cigars seasoned with the plaintiff’s bourbon after the parties’ license agreement was terminated (Maker’s Mark Distillery Inc. v. Spalding Group, et al., No. 19-14, W.D. Ky., 2020 U.S. Dist. LEXIS 49161).

  • March 24, 2020

    Walmart, Hoverboard Maker Can Proceed With Texas Counterclaims

    DALLAS — In a March 20 ruling, a federal judge in Texas denied efforts by three plaintiffs to obtain dismissal of allegations that they engaged in inequitable conduct before the U.S. Patent and Trademark Office (PTO) when securing two hoverboard patents (Unicorn Global Inc., et al. v. GoLabs Inc., et al., No. 19-754, N.D. Texas, 2020 U.S. Dist. LEXIS 48315).

  • March 18, 2020

    8th Circuit Upholds OK Of Voluntary Dismissal In Lanham Act Case

    ST. LOUIS — A Missouri federal judge did not abuse his discretion in granting a trademark owner’s request to voluntarily dismiss its action under the Lanham Act in a dispute over an alleged knockoff cat toy, the Eighth Circuit U.S. Court of Appeals ruled March 17 (SnugglyCat Inc. v. Opfer Communications Inc., et al., No. 18-3500, 8th Cir., 2020 U.S. App. LEXIS 8338).

  • March 17, 2020

    Sugar Daddy Site Owner Must Supplement Jurisdictional Discovery In Trademark Row

    SANTA ANA, Calif. — Granting a dating website operator’s motion to compel, a California federal magistrate judge on March 11 found that a Cyprus-based defendant that allegedly engaged in trademark infringement did not provide sufficient declarations and explanation in its responses to discovery requests related to establishing U.S. jurisdiction over the purported competing “sugar daddy” site operator (Reflex Media Inc., et al. v. Apiriliaco Ltd., et al., No. 8:16-cv-00795, C.D.  Calif.).

  • March 13, 2020

    Media Streaming Patent Should Be Canceled As Obvious, Petitioners Say

    ALEXANDRIA, Va. — A claimed process for automatically generating top-level index files for use in adaptive bitrate streaming is obvious to a person of skill in the art, two popular streaming services assert in a March 11 petition for inter partes review (IPR) (Netflix Inc., et al. v. Divx LLC, No. IPR2020-00648, PTAB).

  • March 12, 2020

    Federal Circuit:  False Use Of Certification Renders Mark Spurious

    WASHINGTON, D.C. — In a March 11 ruling, a panel of the Federal Circuit U.S. Court of Appeals found that a defendant who falsely communicated to consumers that imported butane gas canisters had satisfied the applicable safety standard was rightly subjected to a redelivery demand by the U.S. Customs and Border Protection (ICCS USA Corporation v. United States, No. 19-1561, Fed. Cir., 2020 U.S. App. LEXIS 7538).

  • March 11, 2020

    No New Trial, Injunction For Prevailing Trademark Infringement Plaintiff

    SAN FRANCISCO — A California federal judge on March 9 denied a plaintiff’s request for a new trial following a June verdict that awarded no damages for what jurors nonetheless deemed willful trademark infringement (TechShop Inc. v. Dan Rasure, et al., No. 18-1044, N.D. Calif., 2020 U.S. Dist. LEXIS 40536).

  • March 10, 2020

    Celebrity Cruises Wins Transfer Of Trademark Claims To Florida

    LOS ANGELES — A federal judge in California on March 9 agreed that allegations that Celebrity Cruises Inc. used in its fleet skin and hair products that infringe the “Lather” trademark should proceed in Florida (Lather Inc. v. Gilchrist & Soames Inc., et al., No. 19-5868, C.D. Calif., 2020 U.S. Dist. LEXIS 40442).

  • March 10, 2020

    Pennsylvania Federal Judge Won’t Dismiss PSU Trademark, Cybersquatting Claims

    HARRISBURG, Pa. — A request by two defendants for dismissal of allegations that they infringed the “PSU” trademark owned by The Pennsylvania State University was denied March 5 by a federal judge in Pennsylvania (The Pennsylvania State University v. Keystone Alternatives LLC, et al., No. 19-2039, M.D. Pa., 2020 U.S. Dist. LEXIS 38617).

  • March 05, 2020

    In Dispute Over ‘SPAN’ Trademark, Naked Licensing Claim Rejected

    CHICAGO — Allegations by former licensees of the “SPAN” trademark that the licensor and owner of the mark engaged in trademark misuse and naked licensing were rejected March 4 by a federal judge in Illinois (Chicago Mercantile Exchange Inc. v. ICE Clear US Inc., et al., No. 18-1376, N.D. Ill., 2020 U.S. Dist. LEXIS 37150).

  • March 03, 2020

    Panel Upholds Rejection Of Trademark Applications For ‘The Joint’

    WASHINGTON, D.C. — In a Feb. 28 decision, the Federal Circuit U.S. Court of Appeals agreed with the Trademark Trial and Appeal Board that “The Joint” as applied to a trademark applicant’s services is merely descriptive and, thus, generic (In re:  JC Hospitality LLC, Nos. 2018-2048, -2049, Fed. Cir., 2020 U.S. App. LEXIS 6107).