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Mealey's Trademarks

  • June 24, 2019

    Supreme Court Strikes Down Ban On Immoral, Scandalous Trademarks

    WASHINGTON, D.C. — Drawing heavily on its 2017 holding in Matal v. Tam that the Lanham Act ban on registering disparaging marks is unconstitutional, a divided U.S. Supreme Court on June 24 found that the statute’s related prohibition on registrations for “immoral or scandalous” trademarks also “collides” with the First Amendment to the U.S. Constitution (Andrei Iancu v. Erik Brunetti, No. 18-302, U.S. Sup.).

  • June 20, 2019

    In Texas, Trademark Defendants Win Summary Judgment

    AUSTIN, Texas — Allegations of trademark dilution and infringement were rejected on summary judgment on June 18, when a federal judge in Texas found that confusion between Austin-area restaurants “Picnik” and “Bento Picnic” is possible, but not probable (Picnik Holdings LLC v. Bento Picnic LLC, et al., No. 18-897, W.D. Texas, 2019 U.S. Dist. LEXIS 101439).

  • June 19, 2019

    7th Circuit Affirms Cancellation Of ‘Capsule’ Mark For Phone Cases

    CHICAGO — In a June 11 holding, a panel of the Seventh Circuit U.S. Court of Appeals affirmed a determination by a federal judge in Illinois that the “capsule” trademark for use in connection with cellular phone cases is invalid as descriptive (Uncommon LLC v. Spigen Inc., No. 18-1917, 7th Cir., 2019 U.S. App. LEXIS 17350).

  • June 17, 2019

    In French Press Trade Dress Row, 7th Circuit Upholds Verdict

    CHICAGO — The Seventh Circuit U.S. Court of Appeals on June 12 found no error in an Illinois federal judge’s decision to deny a trade dress infringement defendant judgment as a matter of law (JMOL) that a plaintiff failed to prove that its “Chambord” French press coffeemaker features a nonfunctional design (Bodum USA Inc. v. A Top New Casting Inc., No. 18-3020, 7th Cir., 2019 U.S. App. LEXIS 17555).

  • June 14, 2019

    Travel Site To High Court: PTO’s Fees Award In Trademark Appeal Was Improper

    WASHINGTON, D.C. — In a May 30 reply supporting its petition for certiorari over an attorney fees award granted to the U.S. Patent and Trademark Office (PTO) after a successful challenge of a trademark registration denial, Booking.com B.V. asks the U.S. Supreme Court to consolidate its case with a similar already granted petition over a fees award in a patent validity lawsuit (Booking.com B.V. v. Andrei Iancu, No. 18-1309, U.S. Sup.).

  • June 14, 2019

    Fastener Maker Seeks High Court Review Of Trademark Award Willfulness Standard

    WASHINGTON, D.C. — A fastener manufacturer in a June 4 reply brief asks the U.S. Supreme Court to grant its second petition for certiorari in a long-running trademark dispute, arguing that a deep split exists among the circuit courts over whether the finding of willfulness is a prerequisite to an award of profits after a finding of trademark infringement (Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233, U.S. Sup.).

  • June 12, 2019

    Discovery Sanctions Granted In Suit Over Hong Kong Photos’ Copyrights, Trademarks

    OAKLAND, Calif. — A California federal judge on June 7 granted a motion for discovery sanctions to the widow of a photographer embroiled in a lawsuit over her husband’s works’ intellectual property rights, with the judge mostly adopting a magistrate’s report and recommendation related to the defendants’ ongoing failure to comply with their discovery obligations (Rita C. Ho v. Mark Pinsukanjana, et al., No. 4:17-cv-06520, N.D. Calif., 2019 U.S. Dist. LEXIS 96274).

  • June 11, 2019

    Recommended Relief Largely Adopted In New York ‘Subway’ Franchise Row

    BROOKLYN, N.Y. — In a June 4 ruling, a New York federal judge endorsed a magistrate judge’s earlier recommendation that a former Subway franchisee should be barred from any further use of the “Subway” trademarks and a related, copyrighted mural (Doctor’s Associates LLC, et al. v. Abdul Hai, No. 19-1968, E.D. N.Y., 2019 U.S. Dist. LEXIS 95417).

  • June 10, 2019

    9th Circuit Affirms Verdict Of Willful Trade Dress Infringement

    SAN FRANCISCO — In a June 7 unpublished decision, the Ninth Circuit U.S. Court of Appeals found no error in a Washington federal judge’s denial of a renewed motion for judgment as a matter of law (JMOL) of no willful trade dress infringement (National Products Inc. v. Arkon Resources Inc., Nos. 18-35220 and 18-35221, 9th Cir., 2019 U.S. App. LEXIS 17170).

  • June 7, 2019

    In Tennessee Trademark, Copyright Lawsuit, Dismissal Granted In Part

    NASHVILLE, Tenn. — In a June 5 decision, a federal judge in Tennessee found that failure by a trademark and copyright infringement plaintiff to establish that a foreign company is the parent company of a domestic co-defendant compels dismissal of the foreign company from the action (TailGate Beer LLC v. Boulevard Brewing Company, et al., No. 18-563, M.D. Tenn., 2019 U.S. Dist. LEXIS 94271).

  • June 7, 2019

    JUUL Warns Of ‘Tremendous Risk’ Posed By Counterfeits

    ALEXANDRIA, Va. — The maker of “JUUL”-brand nicotine extract pods on June 4 filed a trademark infringement lawsuit against various alleged counterfeiters in Virginia federal court; the same day, Juul Labs Inc. (JLI) moved to seal its related request for a temporary restraining order (TRO), citing a “strong interest in preventing Defendants from discovering the existence of the suit” (Juul Labs Inc. v. Unincorporated Associations, No. 19-715, E.D. Va.).

  • June 6, 2019

    Dungaree Firm Asks High Court To Hear Claim Preclusion Issue In Trademark Suit

    WASHINGTON, D.C. — In a nearly 20-year-old dispute over the “Get Lucky” clothing trademark, the defendant in the latest litigation argues in a June 4 reply brief to the U.S. Supreme Court that its defense over the effect of a release in a prior suit was never litigated or resolved and, thus, it was wrongly concluded from raising it below (Lucky Brand Dungarees Inc., et al v. Marcel Fashion Group Inc., No. 18-1086, U.S. Sup.).

  • June 4, 2019

    Unfair Competition, Patent Noninfringement Claims Survive Dismissal Request

    DETROIT — Efforts by a patent owner to obtain dismissal of an action seeking a declaration of noninfringement were unsuccessful on June 3, when a federal judge in Michigan instead ruled that the case will proceed (Myco Industries Inc. v. Blephex LLC, No. 19-10645, E.D. Mich., 2019 U.S. Dist. LEXIS 92204).

  • May 31, 2019

    In Lanham Act, Copyright Dispute Over ‘Narcos,’ Dismissal Partly Granted

    MIAMI — Allegations of copyright infringement by a journalist who authored a memoir of her relationship with the drug lord Pablo Escobar were largely dismissed without prejudice on May 24 by a Florida federal judge (Virginia Vallejo v. Narcos Productions LLC, et al., No. 18-23462, S.D. Fla., 2019 U.S. Dist. LEXIS 89008).

  • May 30, 2019

    Trademark Claim Survives, But Copyright Preemption Bars Unjust Enrichment Claim

    NASHVILLE, Tenn. — A Tennessee federal judge on May 28 found that allegations by Vanderbilt University that a professor at the school, along with Scholastic Inc., infringed the “Vanderbilt” trademark may proceed (Vanderbilt University v. Scholastic Inc., et al., No. 18-46, M.D. Tenn., 2019 U.S. Dist. LEXIS 89065).

  • May 30, 2019

    1st Circuit Affirms Rejection Of Nonprofit’s Trademark Claims

    BOSTON — In a May 29 ruling, the First Circuit U.S. Court of Appeals upheld a grant of summary judgment in favor of San Juan Mayor Carmen Yulín Cruz Soto and the municipality of San Juan on allegations of trademark infringement in connection with the 2015 Fiestas de la Calle San Sebastián celebration (The Comité Fiestas de la Calle San Sebastián, Inc. v. Carmen Yulín Cruz Soto, et al., No. 17-1723, 1st Cir., 2019 U.S. App. LEXIS 15918).

  • May 30, 2019

    PTO Tells Supreme Court To Hold Booking.com Trademark Attorney Fees Petition

    WASHINGTON, D.C. — In a May 16 respondent brief, the U.S. Patent and Trademark Office (PTO) asks the U.S. Supreme Court to hold a petition for certiorari filed by an online travel website operator, stating that a pending high court case over parallel attorney fee issues, but in the patent context, will likely resolve the trademark-related fees issues in the present case (Booking.com B.V. v. Andrei Iancu, No. 18-1309, U.S. Sup.).

  • May 28, 2019

    Copyright, Trademark Claims Levied Against BBC Dismissed In New York

    NEW YORK — Allegations that the British Broadcasting Corp. (BBC) and three of its employees violated a pro se plaintiff’s copyrights and trademarks when it used his music in a documentary and then credited him by his stage name were rejected May 23 by a New York federal judge (Juan Pablo Chavez v. British Broadcasting Corporation, et al., No. 17-9572, S.D. N.Y., 2019 U.S. Dist. LEXIS 87926).

  • May 23, 2019

    In Dispute Over Schlafly Intellectual Property, Panel Upholds Denial Of Relief

    ST. LOUIS — In a May 22 holding, the Eighth Circuit U.S. Court of Appeals dismissed an appeal of an order staying trademark litigation for lack of appellate jurisdiction and affirmed a Missouri federal judge’s denial of preliminary injunctive relief, in a dispute over the copyrights and trademarks associated with the conservative activist Phyllis Schlafly (Phyllis Schlafly Revocable Trust, et al. v. Anne Cori, et al., No. 17-2115, 8th Cir., 2019 U.S. App. LEXIS 15123).

  • May 22, 2019

    11th Circuit Upholds Infringement Finding But Vacates Damage Award

    ATLANTA — Although finding no error in a Georgia federal judge’s determination, following a bench trial, that a defendant infringed a plaintiff’s trademark, the 11th Circuit U.S. Court of Appeals on May 21 disagreed that the infringement was willful (PlayNation Play Systems Inc. v. Velex Corporation, No. 17-15226, 11th Cir., 2019 U.S. App. LEXIS 14956).