Mealey's Trademarks

  • January 21, 2020

    11th Circuit:  In Trademark Forfeiture, Chrysler Interests Served By Government

    ATLANTA — A Georgia federal judge’s rejection of a car maker’s request to intervene in a forfeiture proceeding involving counterfeit replacement grilles will not be disturbed, the 11th Circuit U.S. Court of Appeals ruled Jan. 15 (FCA US LLC v. LKQ Corporation, No. 19-12023, 11th Cir., 2020 U.S. App. LEXIS 1336).

  • January 16, 2020

    Relief Affirmed, In Part, In LEGO Patent, Trademark Copyright Dispute

    WASHINGTON, D.C. — In a Jan. 15 ruling, the Federal Circuit U.S. Court of Appeals found that a federal judge in Connecticut did not abuse his discretion in granting LEGO A/S a preliminary injunction barring a competitor from selling action figures that infringe LEGO’s “minifigure” copyrights (LEGO A/S v. ZURU Inc., No. 19-2122, Fed. Cir., 2020 U.S. App. LEXIS 1282).

  • January 15, 2020

    California Federal Judge Won’t Enjoin USVA Use Of Trademarks

    SAN DIEGO — In a Jan. 13 order, a federal judge in California found that the nonprofit veterans advocacy group “Veterans 360” is not entitled to a preliminary injunction barring the U.S. Department of Veterans Affairs (USVA) from using the “Vet360” and “Veteran 360” trademarks (Rick Collins, et al. v. U.S. Department of Veterans Affairs, No. 19-867, S.D. Calif., 2020 U.S. Dist. LEXIS 5625).

  • January 14, 2020

    High Court Hears Dispute Over Disgorged Infringer’s Profits

    WASHINGTON, D.C. — An attorney for a manufacturer of handbag fasteners on Jan. 14 argued before the U.S. Supreme Courtt hat an innocent trademark infringer can nonetheless be subject to an award of disgorged profits under the Lanham Act and that the Federal Circuit U.S. Court of Appeals erred in reaching a contrary conclusion (Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233, U.S. Sup.).

  • January 13, 2020

    Parties Debate Defense Preclusion In ‘Lucky’ Trademark Row

    WASHINGTON, D.C. — The U.S. Supreme Court on Jan. 13 heard oral arguments in a trademark dispute over whether federal preclusion principles bar a defendant from raising defenses that were not actually litigated and resolved in any prior case between the parties, when a plaintiff asserts new claims against the same defendant (Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., No. 18-1086, U.S. Sup.).

  • January 09, 2020

    In Trademark Dispute, 9th Circuit Affirms Terminating Sanctions

    SAN FRANCISCO — A Nevada federal judge’s decision to impose case terminating sanctions was affirmed Dec. 27 by the Ninth Circuit U.S. Court of Appeals, which found that various trademark infringement defendants’ “overall conduct” over “several months” justified the district court’s action (Seiko Epson Corp. v. Artem Koshkalda, et al., Nos. 18-15124, -15125, 9th Cir., 2019 U.S. App. LEXIS 38703).

  • January 09, 2020

    Recommendations In Tim Hortons Trademark, Franchise Row Adopted

    MIAMI — In a Jan. 7 order, a federal judge in Florida adopted in full an October recommendation that the franchisors of Tim Hortons restaurants should prevail in a dispute with former franchisees over, among other things, subleases and the right to use the “Tim Hortons” trademark (Tim Hortons USA, Inc., States, et al. v. Tims Milner LLC, et al., No. 18-24152, S.D. Fla., 2020 U.S. Dist. LEXIS 3015).

  • January 09, 2020

    PTO To Supreme Court: Adding ‘.Com’ Does Not Make Generic Trademark Protectable

    WASHINGTON, D.C. — In its Jan. 6 opening merits brief, the U.S. Patent and Trademark Office (PTO) opposes the Fourth Circuit U.S. Court of Appeals’ finding that “Booking.com” is a protectable trademark, asking the U.S. Supreme Court to find that the combination of a generic top-level domain (TLD), such as “.com,” and a generic term does not create a registrable mark (U.S. Patent and Trademark Office, et al. v. Booking.com B.V., No. 19-46, U.S. Sup.).

  • January 07, 2020

    In New Hampshire, Trademark Claims Over Photograph Tossed

    CONCORD, N.H. — In a Jan. 6 holding, a federal judge in New Hampshire agreed with a defendant that allegations that it infringed a trademarked headstock design as depicted in a photograph used by the defendant without authorization fail because the design in question is not entitled to trademark protection (D’Pergo Custom Guitars Inc. v. Sweetwater Sound Inc., No. 17-747, D. N.H., 2020 U.S. Dist. LEXIS 1358).

  • January 07, 2020

    9th Circuit Partly Affirms, Partly Reverses In Trademark Row

    SAN FRANCISCO — In a Dec. 27 holding, the Ninth Circuit U.S. Court of Appeals reversed the dismissal by a California federal judge, on claim preclusion grounds, of allegations that a trademark relating to sesame seed oil was infringed (V.V.V. & Sons Edible Oils v. Meenakshi Overseas LLC, No. 18-16071, 9th Cir., 2019 U.S. App. LEXIS 38551).

  • January 02, 2020

    In California Copyright Row, False Advertising Counterclaim Dismissed

    SAN FRANCISCO — A federal magistrate judge in California on Dec. 20 dismissed a declaratory judgment counterclaim of false advertising alleged in a dispute over co-authorship of the documentary “Sign My Name to Freedom” (Focal Point Films LLC, et al. v. Arjot Sandhu, No. 19-2898, N.D. Calif., 2019 U.S. Dist. LEXIS 219314).

  • December 31, 2019

    Willfully Defaulting Trademark Defendants Spared Default Judgment

    ROCHESTER, N.Y. — Despite a purposeful failure by two defendants to enter an appearance in a trademark infringement case, the trademark owner was denied a default judgment Dec. 26 by a federal judge in New York who found that the defendants’ accused use of the “Deep” trademark is unlikely to cause consumer confusion (Deep Foods Inc. v. Deep Foods Inc., et al., No. 18-1256, W.D. N.Y., 2019 U.S. Dist. LEXIS 221101).

  • December 20, 2019

    Fossil Defends Willfulness Standard For Infringer’s Profits Award To High Court

    WASHINGTON, D.C. — In a respondent brief filed Nov. 27, Fossil Inc. tells the U.S. Supreme Court that the Lanham Act and long-standing precedent support the Federal Circuit U.S. Court of Appeals’ finding that disgorgement of a trademark infringer’s profits requires proof that the infringement was willful, rather than innocent (Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233, U.S. Sup.).

  • December 16, 2019

    Supreme Court Won’t Review Dispute Over French Press Trade Dress

    WASHINGTON, D.C. — In its Dec. 16 orders list, the U.S. Supreme Court denied certiorari in a case that poses the question of whether nonfunctionality of claimed trade dress can be established upon demonstrating that a particular feature or set of features did not affect the cost or quality of a product (A Top New Casting Inc. v. Bodum USA Inc., No. 19-462, U.S. Sup.).

  • December 13, 2019

    Petitioner To High Court:  Unresolved Trademark Defenses Are Allowed In Second Suit

    WASHINGTON, D.C. — With U.S. Supreme Court oral arguments a month away, a clothing manufacturer argues in its Dec. 12 reply brief that claim preclusion did not prevent it from asserting a release defense to trademark claims against it because the present law suit involves different claims and facts from a previous lawsuit between the same parties, asking the high court to overturn an “unprecedented decision” to the contrary by the Second Circuit U.S. Court of Appeals (Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., No. 18-1086, U.S. Sup.).

  • December 10, 2019

    9th Circuit Dismisses Appeal In Tribal Name, Leadership Row

    SAN FRANCISCO — The latest appellate challenge in a long-running dispute over who is the rightful leader of a California Indian tribe ended Dec. 9 before it began when the Ninth Circuit U.S. Court of Appeals dismissed an appeal by another tribe seeking to intervene for failure to prosecute (Shingle Springs Band of Miwok Indians v. Cesar Caballero v. Wopumnes Nisenan-Mewuk Tribe, No. 19-16576, 9th Cir., 2019 U.S. App. LEXIS 36433).

  • December 10, 2019

    Panel Upholds Limited Injunction In Trademark Dispute Between Brothers

    CHICAGO — In entering relief following a jury trial, a Wisconsin federal judge did not abuse his discretion in requiring a trademark infringer to run only a disclaimer that makes clear it is not associated with a trademark owner, a Seventh Circuit U.S. Court of Appeals panel ruled Dec. 9 (Fabick Inc. v. JFTCO Inc., Nos. 19-1760 & 19-1872, 7th Cir., 2019 U.S. App. LEXIS 36418).

  • December 10, 2019

    Panel Affirms:  Petitioner Lacks Standing To Seek Trade Dress Cancellation

    WASHINGTON, D.C. — The Federal Circuit U.S. Court of Appeals on Dec. 9 found that it lacks appellate jurisdiction over an appeal of a dismissal, on standing grounds, by the Trademark Trial and Appeal Board (TTAB) of a trade dress cancellation petition (Todd C. Bank v. Al Johnson’s Swedish Restaurant & Butik Inc., No. 19-1880, Fed. Cir.).

  • December 09, 2019

    Permanent Injunction Issued Barring Defendant From Using ‘Bok Bok’

    SEATTLE — On the heels of a September summary judgment ruling in favor of a trademark infringement counterclaimant, a federal judge on Dec. 6 permanently enjoined further use of the “Bok Bok” unregistered mark by a plaintiff in the state of Washington (BBC Group NV LLC v. Island Life Restaurant Group LLC, No. 18-1011, W.D. Wash., 2019 U.S. Dist. LEXIS 210866).

  • December 05, 2019

    In Delaware, Statutory Damages Awarded For Counterfeit Sneakers

    WILMINGTON, Del. — In a Dec. 4 holding, a federal judge in Delaware granted New Balance Athletics Inc. summary judgment on allegations the domestic distributor of Chinese counterfeit New Balance sneakers is liable for trademark infringement and dilution (New Balance Athletics Inc. v. USA New Bunren International Co. Ltd., No. 17-1700, D. Del., 2019 U.S. Dist. LEXIS 208759).