Mealey's Trademarks

  • February 23, 2017

    Judge Orders BMW To Show Cause As To Why UCL Case Should Not Be Transferred

    LOS ANGELES — A California federal judge on Feb. 21 ordered a car manufacturer to show cause as to why its claims for violation of California's unfair competition law and trademark infringement should not be transferred to another venue (BMW of North America, LLC, et al. v. Michael Chambers, et al., No. 17-0846, C.D. Calif., 2017 U.S. Dist. LEXIS 24096).

  • February 23, 2017

    Michigan Federal Judge Denies Relief, Dismisses False Advertising Case

    DETROIT — A request for preliminary and permanent injunctive relief barring the host of a training program on tinnitus care from providing participants with a “Tinnitus Care Provider Certificate” upon completion of the program was rejected Feb. 21 by a Michigan federal judge, who found instead that the plaintiff lacks standing to levy claims of false advertising under Section 1125(a) of the Lanham Act (Academy of Doctors of Audiology v. International Hearing Society, No. 16-13839, E.D. Mich., 2017 U.S. Dist. LEXIS 23652).

  • February 23, 2017

    Judge Excludes Expert In Trademark Lawsuit For Lack Of Experience

    GREENBELT, Md. — A federal judge in Maryland on Feb. 21 excluded the testimony of an expert in a trademark infringement lawsuit on grounds that his opinions were “non-substantiated proclamations on the ultimate questions of law and he lacked the requisite training education or experience in the relevant field of proffered expertise” (JFJ Toys Inc., et al. v. Sears Holdings Corporation, et al., No. 14-3527, D. Md.).

  • February 16, 2017

    New York Magistrate Judge: Deny Sanctions In Copyright, Trademark Case

    NEW YORK — A request for sanctions pursuant to 28 U.S.C. § 1927 by a prevailing copyright and trade dress infringement defendant should be denied, according to a Feb. 13 ruling by a New York federal magistrate judge, who found that plaintiff’s counsel did not commit fraud upon by failing to quickly correct perjured depositions (Crown Awards Inc. v. Trophy Depot Inc., No. 15-1178, S.D. N.Y., 2017 U.S. Dist. LEXIS 20393).

  • February 16, 2017

    Alumni Association: 1st Amendment Bars Trademark Case Over Use Of Name

    WASHINGTON, D.C. — The First Amendment to the U.S. Constitution protects an alumni association from trademark infringement claims in connection with its use of the words “alumni association” in conjunction with the university’s name, the alumni association argues in its Jan. 30 reply brief to the U.S. Supreme Court, because it cannot identify who its members are without using the university’s name (Alumni Association of New Jersey Institute of Technology v. New Jersey Institute of Technology, No. 16-798, U.S. Sup.).

  • February 16, 2017

    Belmora Argues Courts Recognize Limits To Suing For Trademark Cancellation

    WASHINGTON, D.C. — In a Feb. 8 reply brief, Belmora LLC argues to the U.S. Supreme Court that courts “generally recognized that the principle of territoriality imposed a real limit on who could sue for cancellation of a trademark or unfair competition under the Lanham Act” (Belmora LLC and Jamie Belcastro v. Bayer Consumer Care AG, et al., No. 16-548, U.S. Sup.).

  • February 14, 2017

    Federal Judge Remands Company's UCL Claims Related To Trademark

    OAKLAND, Calif. — A California federal judge on Feb. 10 granted an exclusive licensee's motion to remand its claims for violation of California's unfair competition law (UCL) and other claims related to the alleged unauthorized use of a trademark, finding that it did not waive its right to remand the action (SWC Inc. v. Elite Promo Inc., No. 16-cv-07071, 2017 U.S. Dist. LEXIS 19513).

  • February 13, 2017

    Company Seeks High Court Review Of Res Judicata Ruling Under B&B Hardware

    WASHINGTON, D.C. — A software company in a Jan. 18 petition for writ of certiorari asks the U.S. Supreme Court to decide whether the Fifth Circuit U.S. Court of Appeals is bound by B&B Hardware Inc. v. Hargis Industries Inc., 135 S.Ct. 1293 (2015), “in a trademark declaratory action brought solely to relitigate the likelihood of confusion issue after the Trademark Trial and Appeal Board had already rendered a final judgment determining likelihood of confusion” (M2 Software Inc. v. M2 Technology Inc., No. 16-909, U.S. Sup.).

  • February 10, 2017

    Judge Refuses Dismissal Of Claims Related To Online Sale Of Hair Products

    SAN DIEGO — A California federal judge on Feb. 7 refused to dismiss a hair product company's claims for violation of California's unfair competition law (UCL) and intentional interference with contractual relations, finding that a retailer had notice that it was potentially selling unauthorized products online and that it showed that a valid contract exists (Unite Eurotherapy Inc. v. Walgreens Co., et al., No. 16-cv-01706, S.D. Calif., 2017 U.S. Dist. LEXIS 18116).

  • February 10, 2017

    Firearms Seller Seeks Review Over Denial To Assert Profits Claim In Trademark Suit

    WASHINGTON, D.C. — A seller and distributor of firearms, in a trademark infringement lawsuit, petitioned on Jan. 25 for writ of certiorari to ask the U.S. Supreme Court whether a district court’s refusal to allow it to amend a proposed pretrial order to assert a profits claim was an abuse of discretion (Clyde Armory Inc. v. FN Herstal S.A., No. 16-936, U.S. Sup.).

  • February 9, 2017

    Panel Upholds Lanham Act Judgment Without Expert Testimony On Actual Injury

    RICHMOND, Va. — Without expert testimony, a seller of internet domain names could not establish the elements of its Lanham Act claim, the Fourth Circuit U.S. Court of Appeals ruled Feb. 8, finding that there was no evidence that the seller suffered an actual injury as a direct result of a competitor’s conduct (Verisign Inc. v. XYZ.com LLC and Daniel Negari, No. 15-2526, 4th Cir., 2017 U.S. App. LEXIS 2264).

  • February 8, 2017

    California Federal Judge: Plaintiff Not Barred From Calling Products Similar

    LOS ANGELES — A defense motion in limine seeking to prevent a plaintiff from referring to an allegedly infringing jewelry line as “similar” to a jewelry line made by the plaintiff was denied Feb. 6 by a California federal judge (Brighton Collectibles LLC v. Believe Production Inc., No. 15-579, C.D. Calif., 2017 U.S. Dist. LEXIS 16594).

  • February 8, 2017

    Counterclaims Did Not Allege Advertising Injury, 10th Circuit Affirms

    ATLANTA — The 10th Circuit U.S. Court of Appeals on Feb. 8 found that underlying counterclaims against an insured failed to assert facts that constituted an "advertising injury" under general liability and excess insurance policies, affirming a lower federal court’s finding that the insurer did not have a duty to defend its insured (IVFMD Florida, Inc. v. Allied Property & Casualty Insurance Co., No. 16-15127, 11th Cir., 2017 U.S. App. LEXIS 2218).

  • February 6, 2017

    6th Circuit Reverses Cancellation Of Trademark Ab Initio

    CINCINNATI — An Ohio federal judge’s grant of summary judgment on a counterclaim seeking to void the “IntelliJet” trademark was reversed Feb. 3 by the Sixth Circuit U.S. Court of Appeals (NetJets Inc. v. IntelliJet Group LLC, No. 15-4230, 6th Cir., 2017 U.S. App. LEXIS 2062).

  • February 3, 2017

    Trademark Dispute Between Competing Restaurants Ends With Defense Verdict

    BALTIMORE — A Maryland federal jury on Jan. 19 sided squarely with a restaurant accused of unfair competition and trademark infringement by a competitor (Cava Group Inc. v. Mezeh-Annapolis LLC, et al., No. 14-355, D. Md.).

  • February 2, 2017

    University Opposes Supreme Court Review Of Trademark Case Over Use Of Name

    WASHINGTON, D.C. — A New Jersey university argues in a Jan. 20 opposition brief that the U.S. Supreme Court should not review whether the First and 14th Amendments to the U.S. Constitution protect an alumni association from trademark infringement claims in connection with its use of the words “alumni association” in conjunction with the university’s name (Alumni Association of New Jersey Institute of Technology v. New Jersey Institute of Technology, No. 16-798, U.S. Sup.).

  • February 2, 2017

    Government Tells High Court Not To Review Drug Trademark Dispute

    WASHINGTON, D.C. — The federal government argues in a Jan. 24 opposition brief that the U.S. Supreme Court should not review a ruling that held Bayer Consumer Care AG (BCC) and Bayer Healthcare LLC (Bayer, collectively) could sue under Sections 14(3) and 43(a) of the Lanham Act over a foreign brand name the company never used in the United States because concerns that it would dramatically change U.S. trademark law were “overblown” (Belmora LLC and Jamie Belcastro v. Bayer Consumer Care AG, et al., No. 16-548, U.S. Sup.).

  • February 2, 2017

    $500M Verdict Returned In Trade Secrets Trial Involving Virtual Reality Software

    DALLAS — A Texas federal jury on Feb. 1 ordered four defendants — including Facebook Inc. — to pay a combined $500 million in actual damages to two virtual reality (VR) technology companies for copyright and trademark infringement, conversion, violations of a nondisclosure agreement and false designation (ZeniMax Media Inc., et al. v. Oculus VR Inc., et al., No. 14-cv-1849, N.D. Texas, Dallas Div.).

  • February 1, 2017

    Lanham Act Claims Over Political Ad Dismissed; Copyright Claims Survive

    WASHINGTON, D.C. — A District of Columbia federal judge on Jan. 31 refused to decide the question of whether inclusion of an altered, copyrighted song in a 30-second advertisement critical of former Wisconsin Sen. Russ Feingold qualifies as a fair use under the Copyright Act, 17 U.S.C. § 107, deeming such a determination inappropriate in response to a motion to dismiss (Roger Nichols, et al. v. Club for Growth Action, No. 16-220, D. D.C., 2017 U.S. Dist. LEXIS 12820).

  • January 31, 2017

    New Jersey Federal Judge Dismisses Complaint In Tony Luke’s Name Battle

    CAMDEN, N.J. — A New Jersey federal judge on Jan. 30 granted a defendants’ motion to dismiss a trademark infringement and unfair competition complaint in a family feud over control of the name of the Tony Luke’s sandwich empire for lack of subject matter jurisdiction (TR Worldwide Phillyfood LLC v. Tony Luke Inc., et al., No. 1:16-cv-01185, D. N.J.).