Mealey's Trademarks

  • June 19, 2017

    Judge Refuses To Strike Answer To Tax Firm's Infringement, UCL Claims

    SAN FRANCISCO — A California federal judge on June 16 partially granted a tax firm's motion to strike parts of an answer to its complaint in which it asserts that various defendants infringed on its trademarks and violated California's unfair competition law (UCL), but refused to strike parts of the answer that assert an affirmative defense such as unclean hands or other equitable defense (Anderson Tax LLC v. Stephane Laffont-Reveilhac, et al., No. 17-cv-01311-EMC, N.D. Calif., 2017 U.S. Dist. LEXIS 93298).

  • June 19, 2017

    Supreme Court Affirms: Disparagement Clause Violates The Constitution

    WASHINGTON, D.C. — In a ruling announced JUne 19, the U.S. Supreme Court agreed with the Federal Circuit U.S. Court of Appeals that the disparagement clause of the Lanham Act, 15 U. S. C. §1052(a), which bars registration of trademarks deemed disparaging, violates the free speech clause of the First Amendment because trademarks “are private, not government, speech” (Matal, Interim Director, U.S. Patent and Trademark Office v. Simon Shiao Tam, No. 15-1293, U.S. Sup.).

  • June 16, 2017

    Riflescope Makers Debate Trade Dress Functionality In 6th Circuit

    CINCINNATI — Competitors in the riflescope industry have filed briefs in the Sixth Circuit U.S. Court of Appeals, arguing whether the trade dress on the knurling of the plaintiff’s scopes are ornamental, which would permit the plaintiff to pursue infringement claims against the defendants, or functional and nonprotectable, as a trial court found (Leapers Inc. v. SMTS LLC, et al., No. 17-1007, 6th Cir.).

  • June 15, 2017

    ‘Guppie’ Trademark Owners Argue Reverse Confusion By Viacom To 6th Circuit

    CINCINNATI — A Michigan couple who sell the “Guppie Kid” children’s clothing line argue in a June 14 brief in the Sixth Circuit U.S. Court of Appeals that clothing related to the Nickelodeon show “Bubble Guppies” infringed their trademarks by overwhelming their senior marks via reverse confusion (Debbie Rohn, et al. v. Viacom International Inc., et al., No. 17-1225, 6th Cir.).

  • June 9, 2017

    Magistrate Allows Survey Of Taffy Shop Customers In Trademark Battle

    DENVER — A taffy shop may have valid complaints about a survey conducted by an expert for a competing taffy shop in a trademark dispute, but the survey is reliable and relevant enough to not preclude it from trial, a Colorado federal magistrate judge ruled June 8 (Estes Park Taffy Company, LLC, et al. v. The Original Taffy Shop, Inc., No. 15-cv-01697, D. Colo., 2017 U.S. Dist. LEXIS 88113).

  • June 9, 2017

    Daycare Operator Defends Contempt To 4th Circuit In ‘Rainbow’ Trademark Row

    RICHMOND, Va. — Because the defendant repeatedly failed to comply with an injunction requiring it to remove all uses of the “Rainbow” trademark from its website, a trial court properly issued contempt rulings and a monetary judgment against it, a daycare operator tells the Fourth Circuit U.S. Court of Appeals in a June 7 appellee brief (Rainbow School Inc. v. Rainbow Early Education Holding LLC, et al., Nos. 17-1055 and 17-1123, 4th Cir.).

  • June 7, 2017

    Pennsylvania Federal Judge Denies Relief In Trademark Dispute

    PHILADELPHIA — Allegations that a newly named pharmacy continues to infringe the “Rann Pharmacy” trademark despite a November 2016 injunction were rejected June 6 by a Pennsylvania federal judge (Rann Pharmacy Inc. v. Shree Navdurga LLC, et al., No. 17-1893, E.D. Pa., 2017 U.S. Dist. LEXIS 86373).

  • June 1, 2017

    ‘Get Lucky’ Jeans Maker Tells 2nd Circuit Rival Violated Prior Trademark Ruling

    NEW YORK — On a third appeal to the Second Circuit U.S. Court of Appeals over rival clothing manufacturers’ claims to the “Get Lucky” trademark, Marcel Fashions Group Inc. in its May 5 appellant brief argues that a competitor has continued its infringing conduct in violation of a previous judgment and that a trial court judge erred in deeming the present claims barred by a 2003 settlement agreement between the parties (Marcel Fashions Group Inc. v. Lucky Brand Dungarees Inc., et al., No. 17-0361, 2nd Cir.).

  • May 26, 2017

    Federal Circuit Remands For Redetermination Of Mark Cancellation Petition

    WASHINGTON, D.C. — A rejection by the Trademark Trial and Appeal Board (TTAB) of a petition for cancellation of the “Alec Bradley Star Insignia” trademark was vacated and remanded by the Federal Circuit U.S. Court of Appeals on May 24 (Joseph Phelps Vineyards LLC v. Fairmont Holdings LLC, No. 16-1089, Fed. Cir., 2017 U.S. App. LEXIS 9006).

  • May 25, 2017

    Trademark, Copyright Defendants Awarded $922,309 In Attorney Fees

    LOS ANGELES — A trademark and copyright dispute over the phrase “Life is Beautiful” rejected on summary judgment due to a lack of similarity and a plaintiff’s unclean hands yielded a $922,309 attorney fee award on May 23 by a California federal judge (Amusement Art LLC v. Life is Beautiful LLC, et al., No. 14-8290, C.D. Calif., 2017 U.S. Dist. LEXIS 79135).

  • May 24, 2017

    Federal Circuit: Patent, Copyright, Trademark Claims Properly Rejected

    WASHINGTON, D.C. — A Washington federal judge did not err in rejecting allegations that Amazon.com Inc. infringes the intellectual property of others through its online marketplace and “Fulfillment by Amazon” service, the Federal Circuit U.S. Court of Appeals ruled May 23 (Milo & Gabby LLC, et al. v. Amazon.com Inc., No. 16-1290, Fed. Cir., 2017 U.S. App. LEXIS 8932).

  • May 24, 2017

    California Federal Judge Sides With Plaintiff In Trademark Case

    LOS ANGELES — A dispute between competing car clubs over the “Stylistics” trademark was resolved in favor of a plaintiff on May 23, when a California federal judge awarded summary judgment (Gilbert Lerma Jr. v. Ernie Armijo, et al., No. 15-9953, C.D. Calif., 2017 U.S. Dist. LEXIS 77575).

  • May 22, 2017

    Judge Denies Preliminary Injunction Request In Trade Dress, Trade Secrets Suit

    BROOKLYN, N.Y. — A federal judge in New York on May 10 denied stainless steel and silver-plated dinnerware designer and seller Oneida Group Inc.’s motion for preliminary injunction in a trade dress infringement and misappropriation of trade secrets lawsuit, ruling that Oneida failed to show that it owns the trade dress at issue (The Oneida Group Inc. v. Steelite International U.S.A. Inc., et al., No. 17-0957, E.D. N.Y., 2017 U.S. Dist. LEXIS 71438).

  • May 18, 2017

    Indiana Federal Judge Dismisses Franchise Fraud Claims Against Publisher

    INDIANAPOLIS — An Indiana federal judge on May 16 granted third-party defendants’ motion to dismiss franchise fraud claims against them in a trademark infringement case, saying counterclaimants failed to plead their claim with sufficient particularity (Britt Interactive LLC, et al. v. A3 Media LLC, et al., No. 1:16-cv-02884, S.D. Ind., 2017 U.S. Dist. LEXIS 73945).

  • May 18, 2017

    Florida Federal Judge Allows Damage Request To Proceed In Unfair Competition Case

    FORT PIERCE, Fla. — Efforts by myriad defendants to obtain partial summary judgment in connection with allegations they used deceptive sales pitches while selling security services door-to-door were largely rejected May 17 by a Florida federal judge, who agreed only with the defendants’ claim that plaintiffs ADT LLC and ADT US Holdings Inc. may not seek attorney fees in the matter (ADT LLC, et al. v. Alarm Protection LLC, et al., No. 15-80073, S.D. Fla., 2017 U.S. Dist. LEXIS 75046).

  • May 18, 2017

    Counterclaims, Defenses Dismissed In Trademark Dispute Over Cup Design

    CHICAGO — Trademark infringement plaintiff Solo Cup Operating Corp. on May 17 won dismissal of counterclaims that Solo’s complaint is preempted by the Patent Act, 35 U.S.C. §§ 1 et seq., when an Illinois federal judge agreed that a product configuration disclosed in an expired utility patent can nonetheless be entitled to trade dress protection (Solo Cup Operating Corporation v. Lollicup USA Inc., No. 16-8041, N.D. Ill., 2017 U.S. Dist. LEXIS 74922).

  • May 17, 2017

    New York Federal Judge Says Trademark Complaint States Claim For Relief

    NEW YORK — A New York federal judge on May 16 denied a defendant restaurateur’s motion to dismiss a complaint that its use of trademarks infringes a pizza franchisor’s trademark that predates the restaurateur’s mark, finding that the complaint states a claim upon which relief can be granted (I.O.B. Realty Inc. v. Patsy’s Brand Inc., et al., No. 1:16-cv-7682, S.D. N.Y., 2017 U.S. Dist. LEXIS 74108).

  • May 17, 2017

    9th Circuit Sides With Google In Genericide Dispute

    SAN FRANCISCO — An Arizona federal judge did not err in concluding that a plaintiff failed to establish that the primary significance of the word “google” to the relevant public is as a generic name for internet search engines, instead of as a trademark identifying the Google Inc. search engine in particular, the Ninth Circuit U.S. Court of Appeals ruled May 16 (David Elliott and Chris Gillespie v. Google Inc., No. 15-15809, 9th Cir., 2017 U.S. App. LEXIS 8583).

  • May 12, 2017

    Machine Company Tells 7th Circuit Defamation Pact Did Not Include Trademark Suit

    CHICAGO — In a May 8 brief to the Seventh Circuit U.S. Court of Appeals, a machine company appeals a trial court’s finding that the settlement of a defamation suit with a competitor also applied to a previously issued trademark judgment between the two firms and released a judgment in the plaintiff’s favor (Engineered Abrasives Inc. v. American Machine Products & Services Inc., et al., No. 17-1429, 7th Cir.).

  • May 12, 2017

    Indiana Magistrate Judge Orders Discovery Of Franchise Pacts In Restaurant Row

    HAMMOND, Ind. — An Indiana magistrate judge on May 10 granted a Texas grill and saloon franchisor’s motion to compel discovery of franchise agreements of a western-style restaurant franchisor that is accusing it of trademark and trade dress infringement, but limited it to production of U.S. franchise agreements because requiring production of foreign franchise agreements, if any, would be “disproportional to the needs of the case” (Texas Roadhouse Inc., et al. v. Texas Corral Restaurants Inc., et al., No. 2:16-cv-28, N.D. Ind., 2017 U.S. Dist. LEXIS 71182).