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Mealey's Trademarks

  • 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).

  • December 04, 2019

    Pennsylvania Federal Judge Enjoins Petitions For Trademark Cancellation

    PITTSBURGH — A trademark infringement counterclaimant on Dec. 3 won a preliminary injunction barring a false advertising plaintiff from prosecuting a petition to cancel “The Big Switch” and “Big Switch” trademarks with the U.S. Patent and Trademark Office (USPTO) (Mazcon v. BEG Group LLC, et al., No. 19-40, W.D. Pa., 2019 U.S. Dist. LEXIS 207942).

  • December 03, 2019

    IP Exclusion ‘Unequivocally Bars Coverage’ For Trademark Suit, Federal Judge Says

    CHARLOTTE, N.C. — A federal judge in North Carolina held Nov. 26 that an insurance policy’s intellectual property exclusion “unequivocally bars coverage” for an underlying trademark lawsuit brought against the insured, granting the insurer’s motion for summary judgment (Direct Technologies International, Inc. v. Maxum Indemnity Co., No. 19-81, W.D. N.C., 2019 U.S. Dist. LEXIS 205158).

  • December 03, 2019

    Nike Hit With Trademark Injunction In North Carolina Federal Court

    GREENSBORO, N.C. — Sportswear giant Nike Inc. on Dec. 2 was enjoined from use of the phrase “Sport Changes Everything,” after a North Carolina federal judge found that the owner of the “Change Everything” and “Running Changes Everything” trademarks is likely to succeed on its allegation of infringement (Fleet Feet Inc. v. Nike Inc., No. 19-885, M.D.N.C., 2019 U.S. Dist. LEXIS 207068).

  • December 02, 2019

    South Carolina Federal Judge Modifies Relief In Father-Son Trademark Row

    CHARLESTON, S.C. — In a Nov. 26 holding, a federal judge in South Carolina found that his August 2019 preliminary injunction must be modified to require a plaintiff to post bond (George Sink P.A. Injury Lawyers v. George Sink II Law Firm LLC, et al., No. 19-1206, D. S.C., 2019 U.S. Dist. LEXIS 204840).

  • November 27, 2019

    French Press Makers Argue Over Trade Dress Functionality In Supreme Court Briefs

    WASHINGTON, D.C. — In a Nov. 7 brief, houseware maker Bodum USA Inc. tells the U.S. Supreme Court that a competitor’s petition for certiorari in a dispute over the trade dress of a Bodum French press coffee maker should be denied because the petitioner misstates controlling case law and is attempting to rehash the trial court’s ruling against it (A Top New Casting Inc. v. Bodum USA Inc., No. 19-462, U.S. Sup.).

  • November 26, 2019

    Dispute Over ‘Steeped Coffee’ Trademark To Proceed In California

    SAN FRANCISCO — In a Nov. 25 order, a federal judge in California rejected a defendant’s request for dismissal of allegations that it infringed the “Steeped Coffee” trademark (Steeped Inc. v. NuZee Inc., No. 19-3763, N.D. Calif., 2019 U.S. Dist. LEXIS 203545).

  • November 22, 2019

    3rd Circuit Affirms: Marks Not Infringed By Medical Publishing Co.

    WASHINGTON, D.C. — In a Nov. 20 unpublished ruling, the Third Circuit U.S. Court of Appeals upheld the rejection by a federal judge in New Jersey of allegations that the owner of a medical publishing company infringed 16 trademarks belonging to a family member (Engage Healthcare Communications LLC, et al. v. Intellisphere LLC, et al., No. 19-1017, 3rd Cir., 2019 U.S. App. LEXIS 34515).

  • November 15, 2019

    Nirvana Lawsuit Over ‘Happy Face’ To Proceed In California Court

    LOS ANGELES — A request by Marc Jacobs International LLC for dismissal of allegations that it infringed the copyrighted “Happy Face” smiley face design and logo made famous by the rock band Nirvana was denied Nov. 8 by a California federal judge, in an in-chambers ruling entered Nov. 12 (Nirvana LLC v. Mark Jacobs International LLC, et al., No. 18-10743, C.D. Calif.).

  • November 14, 2019

    Clothing Maker To Supreme Court:  Defense Preclusion Was Apt In Trademark Spat

    WASHINGTON, D.C. — The defendant in a long-running dispute over the “Get Lucky” clothing trademark was appropriately barred from raising a defense it could have pursued in a previous suit between the same parties, a clothing maker tells the U.S. Supreme Court in a Nov. 12 respondent brief, asserting that res judicata applied because the causes of action were the same (Lucky Brand Dungarees Inc., et al v. Marcel Fashion Group Inc., No. 18-1086, U.S. Sup.).

  • November 12, 2019

    7th Circuit Adopts Octane Standard For Lanham Act Fee Awards

    CHICAGO — In a Nov. 7 ruling, the Seventh Circuit U.S. Court of Appeals for the first time adopted and applied the U.S. Supreme Court’s standard for awarding attorney fees in patent cases to requests for fees under Section 1117(a) of the Lanham Act, 15 U.S.C. § 1117(a) (LHO Chicago River LLC v. Joseph Perillo, et al., No. 19‐1848, 7th Cir., 2019 U.S. App. LEXIS 33463).

  • November 11, 2019

    10th Circuit Reverses Injunction In Dispute Over ‘Mrs. Fields’ Mark

    DENVER — A panel of the 10th Circuit U.S. Court of Appeals on Nov. 7 found that a federal judge in Utah erred in ordering a franchisor to resume its relationship with a former franchisee, including the revival of a disputed trademark license agreement (TLA) (Mrs. Fields Franchising LLC v. MFGPC Inc., Nos. 19-4046, -4063, 10th Cir., 2019 U.S. App. LEXIS 33521).

  • November 08, 2019

    Supreme Court Grants Certiorari In Top-Level Domain Trademark Row

    WASHINGTON, D.C. — The U.S. Supreme Court on Nov. 8 announced that it will take on a dispute between the U.S. Patent and Trademark Office (PTO) and a travel website over the significance of adding a top-level domain (TLD) such as “.com” to an otherwise generic, unregistrable trademark (U.S. Patent and Trademark Office, et al. v. Booking.com B.V., No. 19-46, U.S. Sup.).

  • November 06, 2019

    In Trademark Dispute Between Restaurants, Defendant Prevails

    CAMDEN, N.J. — Following a one-day bench trial in May 2019, a federal judge in New Jersey on Nov. 4 ruled in favor of a defendant accused of trademark infringement in connection with a decision to revive the name “Il Portico” for its restaurant (Fife & Drum Inc. v. DelBello Enterprises, No. 17-3676, D. N.J., 2019 U.S. Dist. LEXIS 190582).

  • November 04, 2019

    Panel Affirms Rejection Of Copyright, Trademark Row Between Freemasons

    RICHMOND, Va. — In an Oct. 30 ruling, the Fourth Circuit U.S. Court of Appeals found no error in a Virginia federal judge’s determination that allegations of copyright and trademark infringement against a spinoff masonic organization fail as a matter of law (United Supreme Council v. United Supreme Council, No. 18-2034, 4th Cir., 2019 U.S. App. LEXIS 32478).

  • October 31, 2019

    Jurisdictional Discovery Ordered In Trademark Suit Over ‘Sugar Daddy’ Website

    SANTA ANA, Calif. — Finding that substantial questions exist over whether personal jurisdiction can be exercised over the Cyprus-based operator of a “sugar daddy” dating website accused of trademark infringement, a California federal judge on Oct. 23 ordered the parties to engage in jurisdictional discovery prior to the resolution of a pending summary judgment motion (Reflex Media Inc., et al. v. Apiriliaco Ltd., et al., No. 8:16-cv-00795, C.D.  Calif.).

  • October 25, 2019

    Supplier To Fracking Operations Says Its Design For Potable Water Rigs Was Copied

    SAN ANTONIO — A water filtering company that provides services to hydraulic fracturing companies on Oct. 4 filed a lawsuit in Texas federal court against two companies, seeking injunctive and monetary relief for trade secret misappropriation and trademark infringement (WaterFleet LLC v. TanMar Rentals LLC, et al., No. 19-1190, W.D. Texas).

  • October 23, 2019

    New York Oneidas Lose 2nd Circuit Challenge To Wisconsin Oneidas’ Name Change

    NEW YORK — The Oneida Indian Nation of New York lacks constitutional standing to sue the Department of the Interior (DOI) over the agency’s decision to allow the Oneida Tribe of Indians of Wisconsin to change its name to the Oneida Nation, the Second Circuit U.S. Court of Appeals affirmed Oct. 21 (Oneida Indian Nation v. U.S. Department of the Interior, No. 18-2607, 2nd Cir., 2019 U.S. App. LEXIS 31501).

  • October 23, 2019

    North Carolina Federal Judge: Trademark Applicant Waived Challenge

    CHARLOTTE, N.C. — In what he said “appears to be a matter of first impression in this Circuit and perhaps nationally,” a North Carolina federal judge on Oct. 21 found that a dissatisfied trademark applicant who appeals an adverse ruling by the Trademark Trial and Appeal Board (TTAB) to the Federal Circuit U.S. Court of Appeals waives the right to also seek review in federal district court of subsequently issued TTAB decisions involving the same application (Vanguard LLC, et al. v. Frito-Lay North America Inc., No. 17-652, W.D. N.C., 2019 U.S. Dist. LEXIS 182242).

  • October 22, 2019

    In California False Advertising Case, Defendant Partly Prevails

    SAN DIEGO — A federal judge in California on Oct. 21 found that a plaintiff cannot prove that two laboratories chose to use a defendant’s thyroid assay because it was briefly marketed as thyroid stimulating immunoglobin (TSI) only; the same day, however, the judge denied the defendant’s request for attorney fees (Quidel Corporation v. Siemens Medical Solutions USA Inc., No. 16-3059, S.D. Calif., 2019 U.S. Dist. LEXIS 181874).