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Mealey's Trademarks

  • February 25, 2021

    Panel Upholds Dismissal Of Oppositions To Trademark Applications

    WASHINGTON, D.C. — In a Feb. 23 holding, the Federal Circuit U.S. Court of Appeals found no error in a rejection by the Trademark Trial and Appeal Board of allegations that proposed “Liberty Bankers Life Insurance Company” and “Liberty Bankers Life The Capitol Life” trademarks would cause confusion with an existing “Bankers Life” trademark.

  • February 25, 2021

    Pennsylvania Federal Judge: Trademark Claims Against Nike Not Untimely

    PHILADELPHIA — A trademark owner prevailed, in part, on summary judgment Feb. 24 when a federal judge in Pennsylvania agreed that assertions by infringement defendant Nike Inc. that the claim is time barred will not be presented at an upcoming trial.

  • February 19, 2021

    2nd Circuit Says Color Scheme Trade Dress Is Functional

    NEW YORK — In a Feb. 18 holding, the Second Circuit U.S. Court of Appeals reversed and remanded a New York federal judge’s grant of summary judgment on behalf of a trade dress owner in a dispute over mixing tips for use in dental procedures.

  • February 18, 2021

    Panel Clarifies Standard Of Review For Unclean Hands Trademark Defense

    SAN FRANCISCO — The Ninth Circuit U.S. Court of Appeals on Feb. 16 issued a precedential opinion in which it said the correct standard of review on a grant of summary judgment on an unclean hands defense to trademark infringement claims is for abuse of discretion; that same day, the panel issued a memorandum disposition that such a grant of summary judgment in a dispute over the “METAL” mark was improper.

  • February 18, 2021

    Indian Incense Company Asks 9th Circuit To Rehear Bid To Compel Arbitration

    SAN FRANCISCO — An Indian incense company in a Feb. 3 petition for panel rehearing or rehearing en banc argues that a split Ninth Circuit U.S. Court of Appeals panel’s ruling that the company as nonsignatory to an arbitration agreement can’t rely on doctrines of equitable estoppel to compel arbitration with a former partner and his company contradicts U.S. Supreme Court and Ninth Circuit precedent.

  • February 17, 2021

    9th Circuit Upholds Grant Of Fee Request In Copyright Case

    SAN FRANCISCO — A plaintiff who prevailed at trial on allegations that a competitor infringed its copyrighted take-apart working toy engine was properly granted a request for reimbursement of its attorney fees, even though its related allegations of trade dress infringement and intentional interference with prospective economic advantage were rejected by jurors, the Ninth Circuit U.S. Court of Appeals ruled Feb. 16.

  • February 11, 2021

    11th Circuit Affirms Fee Award In Copyright, Trademark Case

    ATLANTA — The 11th Circuit U.S. Court of Appeals on Feb. 10 found no abuse of discretion in a Florida federal judge’s determination that a copyright and trademark dispute over billboard artwork and wording rises to the level of “exceptional,” thereby triggering an award of attorney fees and expert witness costs.

  • February 10, 2021

    Copyright, Trademark Claims Survive Dismissal Request In New York

    NEW YORK — In a Feb. 9 holding, a federal judge in New York granted dismissal of allegations by a plaintiff that its former employee was unjustly enriched by his formation of a competing company but allowed other allegations to proceed, including causes of action for copyright and trademark infringement.

  • February 08, 2021

    4th Circuit Says Nike’s Abandonment Of Slogan Moots Appeal

    RICHMOND, Va. — In a Jan. 26 holding, the Fourth Circuit U.S. Court of Appeals found “no good reason” to vacate a preliminary injunction entered against Nike Inc., while also dismissing Nike’s appeal of the relief as moot in light of the footwear maker’s decision to cease use of the slogan “Sport Changes Everything.”

  • February 03, 2021

    In Longstanding Lanham Act Row, 4th Circuit Reverses, Remands

    RICHMOND, Va. — A federal judge in Virginia erred in applying a common-law statute of limitations to a drugmaker’s allegations of federal unfair competition leveled in connection with the “Flanax” trademark, the Fourth Circuit U.S. Court of Appeals ruled Feb. 2.

  • January 29, 2021

    App Developer To 9th Circuit: Apple Used ‘Memoji’ Mark In Bad Faith

    SAN FRANCISCO — The developer of a mobile messaging app tells the Ninth Circuit U.S. Court of Appeals in a Jan. 19 reply brief that Apple Inc. cannot claim priority of use in the “Memoji” trademark, asking the court to reverse a trial court’s grant of summary judgment to Apple in a trademark infringement suit centering on the two companies’ competing Memoji apps.

  • January 28, 2021

    Judge Enjoins Merchants From Selling Counterfeit Vape Products Online

    NEW YORK — A federal judge in New York on Jan. 26 granted a tobacco vape-maker’s motion for a preliminary injunction to enjoin a group of online sellers from continuing to sell counterfeit vape products with the company’s logo through a Hong Kong-based website and ordered the sellers’ financial accounts frozen.

  • January 28, 2021

    3rd Circuit Grants Rehearing, Expounds On Trade Dress Ruling

    PHILADELPHIA — The Third Circuit U.S. Court of Appeals on Jan. 26 agreed to rehear a trade dress dispute following amicus curiae briefs from three interested parties that questioned the panel’s October finding of no protection for a thin, stick-shaped cookie; in their newly issued opinion the same day, however, the panel reached the same conclusion.

  • January 27, 2021

    Texas Federal Judge Allows Expert To Testify In Guitar Trademark Row

    SHERMAN, Texas — An expert may testify that Gibson Brands guitar shapes are generic in a trademark dispute pending in a Texas federal court, a judge ruled Jan. 22, finding that the arguments made are better resolved through cross-examination.

  • January 25, 2021

    Denial Of Disgorged Profit Award In Trademark Row Stands, High Court Says

    WASHINGTON, D.C. — A divided April 2020 ruling by the Ninth Circuit U.S. Court of Appeals that denied a request for $4.5 million in disgorged profits in connection with the “Stone Creek” trademark will not be disturbed, in view of the U.S. Supreme Court’s Jan. 25 denial of a petition for certiorari by the trademark owner.

  • January 25, 2021

    Franchisor’s Motion For Contempt Over Signage, Franchisees’ Webpages Denied

    MINNEAPOLIS — A federal judge in Minnesota on Jan. 4 denied without prejudice an acupuncture franchisor’s motion for a finding of contempt against franchisees in Colorado that have failed to cover exterior signage with the franchisor’s logo and remove from their webpages any reference to the franchisor, holding that franchisees are attempting in good faith to comply with the terms of an Oct. 28 preliminary injunction order.

  • January 22, 2021

    9th Circuit Majority Affirms Denial Of Nonsignatory’s Bid To Compel Arbitration

    SAN FRANCISCO — On remand from the U.S. Supreme Court, a split Ninth Circuit U.S. Court of Appeals panel on Jan. 20 again affirmed a district court’s denial of a motion to compel arbitration of a trademark dispute between two Indian incense companies after finding that equitable estoppel would not apply under federal law, while a dissenting judge said the case should be remanded for review under the state law of the parties’ contract.

  • January 22, 2021

    Insurer Has No Duty To Defend Trademark Infringement Suit, Panel Says In Reversal

    BROOKLYN, N.Y. — A  New York appeals panel held Jan. 20 that a lower court erred in denying a commercial general liability insurer’s motion for summary judgment in an insured’s lawsuit seeking coverage for an underlying trademark infringement action, reversing and remitting for the lower court to declare that the insurer has no duty to defend or indemnify its insured.

  • January 20, 2021

    Federal Circuit Upholds Refusal Of Application For ‘NORTH 61’ Mark

    WASHINGTON, D.C. — A determination by the Trademark Trial and Appeal Board that “NORTH 61” would cause confusion with an existing “66⁰NORTH” trademark was affirmed Jan. 13 by the Federal Circuit U.S. Court of Appeals.

  • January 20, 2021

    Anti-Malware Firm Again Seeks Dismissal Of Lanham Deception Claims By Competitor

    SAN JOSE, Calif. — On remand after a failed petition for certiorari, a malware detection software maker on Jan. 12 filed a renewed motion to dismiss claims brought against it by a competitor in California federal court, asserting that it has not engaged in deceptive acts or false advertising in its targeting of the plaintiff’s “Scareware.”