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Mealey's Trademarks

October 12, 2018
Licensee Asks High Court To Decide If Bankruptcy Provision Ended Trademark License

WASHINGTON, D.C. — In a Sept. 25 reply brief supporting its petition for certiorari, a one-time trademark licensee asks the U.S. Supreme Court to determine whether the bankruptcy law agreement rejection provision properly terminated its right to use the licensed trademarks (Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, U.S. Sup.).
October 11, 2018
Florida Federal Judge Denies Dismissal Of False Advertising Claims

ORLANDO, Fla. — In an Oct. 10 order, a Florida federal judge partly granted and partly denied a motion to dismiss in a dispute between the operators of a timeshare resort and an entity that purportedly assists timeshare owners in avoiding the terms of their contract (Westgate Resorts Ltd., et al. v. U.S. Consumer Attorneys P.A., et al., No. 18-359, M.D. Fla., 2018 U.S. Dist. LEXIS 173473).
October 8, 2018
Oregon Federal Judge Won’t Dismiss Trademark Claims As Sanction

PORTLAND, Ore. — Although voicing concerns over the conduct of counsel for both sides in a trademark infringement case, an Oregon federal judge on Oct. 5 denied a defendant’s request for dismissal as a sanction (Adidas America Inc., et al. v. TRB Acquisitions LLC, No. 15-2113, D. Ore., 2018 U.S. Dist. LEXIS 172602).
October 8, 2018
Dilution Claim Dismissed, But Infringement Claim Survives In Georgia

ATLANTA — In an Oct 4 ruling, a Georgia federal judge found that an individual and his recently incorporated “United Grand Lodge” must face trademark infringement allegations over their adoption of the acronym “A.F.A.Y.M.” and the term “Ancient Free and Accepted York(rite) Masons” (National Grand Lodge v. United Grand Lodge GA AF & AYM Inc., et al., No. 17-2582, N.D. Ga., 2018 U.S. Dist. LEXIS 171617).
October 4, 2018
In Unsealed Ruling, Federal Circuit Partly Affirms Trademark Board

WASHINGTON, D.C. — Although agreeing with the Trademark Trial and Appeal Board (TTAB) that proposed trademarks for “Corn Thins” and “Rice Thins” are descriptive and have not acquired distinctiveness, the Federal Circuit U.S. Court of Appeals in an unsealed decision released Oct. 4 found that the TTAB “improperly narrowed the genus of the goods at issue” when rejecting a challenge to the registrations by Frito-Lay North America Inc. (Real Foods Pty Ltd. v. Frito-Lay North America Inc., Nos. 2017-1959, -2009, Fed. Cir.).
October 3, 2018
In Trademark Dispute, 6th Circuit Affirms: Confusion Unlikely

CINCINNATI — Upon de novo review, a panel of the Sixth Circuit U.S. Court of Appeals on Sept. 20 agreed with a Tennessee federal judge that consumers are unlikely to be confused between trademarks for “The Row” and “Whiskey Row” (The Row Inc. v. Rooke LLC, No. 18-5068, 6th Cir., 2018 U.S. App. LEXIS 27126).
October 3, 2018
New York Federal Judge Denies Singer Relief In ‘Feyoncé’ Trademark Row

NEW YORK — Efforts by Beyoncé Giselle Knowles-Carter and her trademark holding company to obtain partial summary judgment on allegations of infringement stemming from the sale of merchandise under the “Feyoncé” brand name were unsuccessful Oct. 1, when a New York federal judge found that “a rational jury might or might not conclude that the pun here is sufficient to dispel any confusion among the purchasing public” (Beyoncé Giselle Knowles-Carter, et al. v. Feyoncé Inc., et al., No. 16-2532, S.D. N.Y., 2018 U.S. Dist. LEXIS 169602).
October 2, 2018
Certiorari Denied By U.S. Supreme Court In Several Trademark Cases

WASHINGTON, D.C. — In its Oct.1 orders list, the U.S. Supreme Court announced that it will not review appellate rulings in various trademark disputes that center on, among other things, the ability of a district court to grant a global injunction and the “expressive work” exception to Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a)(1)(A).
September 19, 2018
Class Certification Denial Won’t Be Reconsidered In Madden Game Likeness Suit

SAN FRANCISCO — A California federal judge on Sept. 5 denied a motion for leave to seek reconsideration of an order denying a second motion for class certification in a lawsuit over the alleged use of former professional football players’ likenesses in the “Madden NFL” video game by Electronic Arts Inc. (EA), opining that individual issues predominate (Michael E. Davis, et al. v. Electronic Arts Inc., No. 10-3328, N.D. Calif.).
September 18, 2018
Defendant In Mary Kay Trademark Suit Failed To Show Class May Be Certified

DALLAS — An eBay seller accused of selling out-of-date cosmetic and skin care products who was named as the defendant in a trademark suit by the products’ maker has failed to show that a defendant can certify a class of defendants on a counterclaim under Federal Rule of Civil Procedure 23, a Texas federal judge ruled Sept. 17 (Mary Kay Inc. v. Gerald Matthew Reibel, et al., No. 17-2634, N.D. Texas, 2018 U.S. Dist. LEXIS 157579).
September 17, 2018
1st Circuit: German Company Must Face Trademark Claims

BOSTON — A Maine federal judge’s determination that operation of a “highly interactive website” that sells cloud-based services combined with an effort to trademark “Scrutinizer” within the United States constitutes a prima facie showing of personal jurisdiction was affirmed Sept. 13 by the First Circuit U.S. Court of Appeals (Plixer International Inc. v. Scrutinizer GmbH, No. 18-1195, 1st Cir., 2018 U.S. App. LEXIS 25981).
September 14, 2018
Government Petitions High Court In Dispute Over ‘Immoral’ Trademarks

WASHINGTON, D.C. — In a Sept. 7 petition for certiorari, the federal government asserts that the Federal Circuit U.S. Court of Appeals erroneously deemed the “immoral and scandalous marks” provision of the Lanham Act, 15 U.S.C. § 1052(a), (Section 2[a]), unconstitutional (Andrei Iancu, Director, United States Patent and Trademark Office, v. Eric Brunetti, No. 18-302, U.S. Sup.).
September 14, 2018
Mark Holder To High Court: Chapter 11 Rejection Stripped Licensee Of Rights

WASHINGTON, D.C. — In a Sept. 9 brief opposing a former licensee’s petition of certiorari, a trademark holder tells the U.S. Supreme Court that an appeals court correctly found that its rejection of the parties’ distribution agreement under a Chapter 11 bankruptcy provision ended the licensee’s trademark rights under the agreement (Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, U.S. Sup.).
September 12, 2018
Divided Panel: Personal Jurisdiction Exists In California Trademark Case

SAN FRANCISCO — Although affirming a California federal judge’s finding that it possesses subject matter jurisdiction over a declaratory judgment action involving the right to use the “Delphix” trademark, a divided Ninth Circuit U.S. Court of Appeals on Sept. 11 reversed the same judge’s determination that personal jurisdiction over a defendant is lacking (Delphix Corp. v. Embarcadero Technologies Inc., No. 16-16572, 9th Cir., 2018 U.S. App. LEXIS 25721).
September 12, 2018
Massachusetts High Court: Use Of Runner’s Name Is Advertising Idea Under Policy

BOSTON — The Massachusetts Supreme Judicial Court on Sept. 12 found that a lower court erred in concluding that the family of deceased 1960 Olympic marathon gold medalist Abebe Bikila did not actually use the name Bikila as an advertising idea, reversing the lower court’s ruling in favor of insurers in a coverage dispute over a lawsuit challenging the propriety of a shoe company's use of the runner's name (Holyoke Mutual Insurance Co. in Salem, et al. v. Vibram USA Inc., et al., No. SJC-12401, Mass. Sup., 2018 Mass. LEXIS 568).
September 11, 2018
Federal Circuit Affirms Refused Registration For ‘Detroit Athletic Co.’ Mark

WASHINGTON, D.C. — A decision by the Trademark Trial and Appeal Board that “Detroit Athletic Co.” is likely to cause confusion with the third-party trademark “Detroit Athletic Club” is supported by substantial evidence, the Federal Circuit U.S. Court of Appeals ruled Sept. 10 (In re: Detroit Athletic Co., No. 17-2361, Fed. Cir., 2018 U.S. App. LEXIS 25537).
September 11, 2018
Judge Refuses To Dismiss LegalForce’s UCL, Lanham Act Claims

SAN FRANCISCO — A California federal judge on Sept. 7 refused to dismiss a legal company’s claims for violation of California’s unfair competition law (UCL) and other causes of action in relation to their allegation that an individual is falsely advertising that he is an attorney, holding that dismissal for failure to state a claim would be premature at the present stage of the case (LegalForce RAPC Worldwide P.C. v. Chris DeMassa, No. 18-cv-00043, N.D. Calif., 2018 U.S. Dist. LEXIS 153179).
September 7, 2018
2nd Circuit Upholds Dismissal Of Trade Dress Claims Over Swan Float

NEW YORK — A trade dress dispute between two manufacturers of inflatable swan-shaped pool toys was properly dismissed for failure to state a claim because the claimed trade dress is impermissibly broad, the Second Circuit U.S. Court of Appeals ruled Sept. 6 (International Leisure Products Inc. v. Funboy LLC, No. 17-3982, 2nd Cir., 2018 U.S. App. LEXIS 25262).
August 31, 2018
‘Perchville’ Mark Is Entitled To Protection, 6th Circuit Concludes

CINCINNATI — Efforts by a Michigan company to invalidate the “Perchville” trademark, as used in connection with a popular festival, were unsuccessful Aug. 29, when the Sixth Circuit U.S. Court of Appeals joined with a Michigan judge in finding that the mark is inherently distinctive and eligible for protection (AuSable River Trading Post v. Dovetail Solutions Inc., et al., No. 18-1368, 6th Cir., 2018 U.S. App. LEXIS 24516).
August 28, 2018
Federal Circuit Upholds Board Cancellation Of ‘Tai Chi’ Trademark

WASHINGTON, D.C. — A decision by the Trademark Trial and Appeal Board (TTAB) that canceled registration of the “Wu Dang Tai Chi Green Tea” trademark as likely to cause confusion with a registered “Tai Chi” mark was not an abuse of discretion, the Federal Circuit U.S. Court of Appeals concluded Aug. 27 (Zheng Cai v. Diamond Hong Inc., No. 18-1688, Fed. Cir., 2018 U.S. App. LEXIS 24152).