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Mealey's Trademarks

  • July 29, 2021

    Prior Settlement Doesn’t Bar New Trademark Row, Federal Judge Rules

    PHILADELPHIA — A dispute between sellers and distributors of cleaning products over the “Rush Original” trademark and related trade dress does not implicate a prior settlement governing trademark infringement, a federal judge in Pennsylvania ruled July 27.

  • July 29, 2021

    Federal Judge Says Pennsylvania Law Applies In Trademark Dispute Involving Nike

    PHILADELPHIA — A Pennsylvania federal judge on July 27 conducted a choice of law analysis in an infringement case against Nike Inc., ultimately concluding that Pennsylvania law applies in the dispute over the “Cool Compression” trademark.

  • July 28, 2021

    Judge Issues TRO To Freeze Sales Of Counterfeit Transceivers From Wuhan

    SAN FRANCISCO — A California federal judge on July 23 issued a temporary restraining order and preliminary injunction to block a manufacturer in Wuhan, China, which is facing claims of violating federal trademark law and California’s unfair competition law (UCL), from continuing to distribute counterfeit transceivers falsely labeled as manufactured by a U.S. company.

  • July 27, 2021

    Declaratory Judgment Trademark Action Over Use Of Magenta Tossed

    SAN FRANCISCO — A request for a declaration of noninfringement of Deutsche Telekom AG’s trademarked use of magenta in the field of telecommunications was dismissed July 26 by a federal judge in California.

  • July 27, 2021

    California Federal Judge: Royalties Unavailable In Dispute Over ‘Fresh Start’

    LOS ANGELES — Allegations Nutrisystem Inc. infringed the “Fresh Start” trademark will proceed, but without a request for royalties, disgorged profits or compensatory profits, a federal judge in California ruled July 23, partly granting summary judgment.

  • July 27, 2021

    Website Operator To 8th Circuit: No Jurisdiction From Single, Orchestrated Sale

    ST. LOUIS — In a July 23 appellee brief, Zazzle Inc. asks the Eighth Circuit U.S. Court of Appeals to affirm a trial court’s ruling that a trademark owner failed to establish specific personal jurisdiction in Missouri over it from the online sale of a single purportedly infringing item, arguing that there was no showing of purposeful availment or targeting the state.

  • July 27, 2021

    N.Y. Federal Judge Orders Jurisdictional Discovery In Trademark Row

    NEW YORK — In a July 22 opinion, a federal judge in New York said jurisdictional discovery is necessary before he can rule on a motion to dismiss allegations of infringement leveled in connection with the “Blockchange” trademark.

  • July 22, 2021

    Indian Company Says 9th Circuit Contradicted High Court In 2nd Bid For Rehearing

    SAN FRANCISCO — An Indian incense company on July 21 again petitioned the Ninth Circuit U.S. Court of Appeals for panel rehearing or rehearing en banc after a split panel for the second time ruled that the company as nonsignatory to an arbitration agreement cannot rely on doctrines of equitable estoppel to compel arbitration with a former partner and his company.

  • July 21, 2021

    Texas Federal Judge:  No Prosecution History Estoppel In Trademark Row

    SHERMAN, Texas — A federal judge in Texas on July 20 rejected a trademark infringement defendant’s efforts to invoke statements made by the plaintiff during the trademark application process as grounds for dismissing the case, concluding instead that “prosecution-history estoppel does not apply in trademark cases.”

  • July 20, 2021

    Bona Fide Use Of Mark Required Under Lanham Act, 9th Circuit Says

    SAN FRANCISCO — A federal judge in California did not err in granting Apple Inc. summary judgment on allegations that the tech giant infringed the “Memoji” trademark, the Ninth Circuit U.S. Court of Appeals ruled July 13, because the purported owner of the mark failed to demonstrate bona fide use of “Memoji” in commerce.

  • July 19, 2021

    Copyright, False Designation Of Origin Claims Over Science Kits Dismissed

    NEW YORK — A federal judge in New York on July 16 rejected allegations of copyright and false designation of origin leveled by a manufacturer of Smithsonian Institution-branded educational activity kits for children.

  • July 16, 2021

    Lanham Act False Advertising Claims At Issue In 2nd Circuit Building Codes Dispute

    NEW YORK — In a July 15 reply brief, an organization that develops building codes for the construction industry tells the Second Circuit U.S. Court of Appeals that a trial court incorrectly found certain incorrect claims by a competing company over the accuracy and completeness of code information on its website to be harmless puffery, asserting that such statements are actionable false advertising statements under the Lanham Act.

  • July 16, 2021

    Snack Maker Defends ‘Pocky’ Trade Dress In Supreme Court Petition

    WASHINGTON, D.C. — The manufacturer of “Pocky” biscuit sticks filed a petition for certiorari in the U.S. Supreme Court on June 24, asking the high court to clarify the standards for determining whether a product’s trade dress is functional and, therefore, not protectable, arguing that the ruling against it by the Third Circuit U.S. Court of Appeals upended established guidelines and placed many products’ existing trade dress at risk.

  • July 13, 2021

    5th Circuit Reverses, Remands Denial Of Fee Award In Trademark Row

    NEW ORLEANS — A federal judge in Texas correctly awarded a trademark owner $100,000 statutory damages in connection with its allegation that a former employee infringed the “Spectrum” trademark, but erred in refusing to issue an award of attorney fees in connection with the case, the Fifth Circuit U.S. Court of Appeals said July 13.

  • July 12, 2021

    In Trademark Dispute Over Pilates Studios, Dismissal Request Denied

    SAN DIEGO — In a July 9 order, a federal judge in California declined an invitation by several defendants to assess the enforceability of a “LA Pilates” trademark, holding instead that “the issue of secondary meaning is not appropriate for resolution” in response to a motion to dismiss.

  • July 07, 2021

    Washington Federal Judge Says Jurisdiction Exists In Trademark Row

    TACOMA, Wash. — In a July 6 order denying dismissal, a federal judge in Washington rejected assertions by a Florida company that the court lacks jurisdiction over a dispute involving the “Lollywaffle” trademark.

  • July 02, 2021

    Single Infringing Goods Sale Can Confer Jurisdiction, 8th Circuit Told

    ST. LOUIS — A clothing company whose trademark infringement suit against a competitor was dismissed for lack of jurisdiction argues in a June 17 appellant brief in the Eighth Circuit U.S. Court of Appeals that the sale of a single infringing item by a resident of Missouri is sufficient to establish personal jurisdiction in the state, even if the purchase was made by an individual associated with the trademark holder.

  • July 01, 2021

    In New York, Federal Judge Says Dispute Over ‘Thursday’ Marks Will Proceed

    NEW YORK — A federal judge in New York on June 29 denied a motion to dismiss claims of infringement and unjust enrichment leveled over “Thursday” trademarks, upon determining that a plaintiff has a sufficient commercial interest in the marks to confer standing.

  • June 30, 2021

    Kentucky Federal Judge Reconsiders Prior Ruling, Dismisses Trademark Claim

    LEXINGTON, Ky. — A federal judge in Kentucky on June 28 dismissed allegations of trademark infringement she previously said would proceed, citing “an error” in her earlier analysis.

  • June 28, 2021

    11th Circuit Affirms: Hospira Package Inserts Not Misleading, False

    MIAMI — A panel of the 11th Circuit U.S. Court of Appeals on June 24 upheld findings by a Florida federal judge that a false advertising plaintiff failed to establish that the existence of a specific representation or statement by a drug maker caused consumers to believe that a product was approved by the Food and Drug Administration.