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Mealey's Trademarks

  • May 13, 2019

    Federal Judge Partially Grants Franchisor’s Motion For Preliminary Injunction

    LOUISVILLE, Ky. — A Kentucky federal judge on May 9 held that a franchisor has justified a preliminary injunction on its Lanham Act claims, further finding that that franchisor has shown that a preliminary injunction is proper on its claim under the Defend Trade Secrets Act (DTSA) but limited the scope of that injunction compared to what the franchisor sought in its motion (JTH Tax, Inc., et al. v. Freedom Tax, Inc., et al., No. 19-00085, W.D. Ky., 2019 U.S. Dist. LEXIS 78532).

  • May 10, 2019

    Judge: 4 Claims Relate To Facebook Posts Occurring After Insurer Canceled Policy

    CENTRAL ISLIP, N.Y. — A New York federal judge on May 8 granted in part and denied in part an insurer’s motion for summary judgment in a coverage dispute arising from underlying claims that the insured used five people’s images as part of its promotions on social media without their consent or payment, finding that coverage is barred for the claims of all but one of the underlying plaintiffs (Bullseye Restaurant, Inc., et al. v. James River Insurance Company, No. 17-2996, E.D. N.Y., 2019 U.S. Dist. LEXIS 77701).

  • May 9, 2019

    ITC Findings Affirmed In ‘Swagway’ Hoverboard Trademark Case

    WASHINGTON, D.C. — The Federal Circuit U.S. Court of Appeals on May 9 affirmed the conclusion reached by the International Trade Commission (ITC) that the “Segway” trademarks are infringed by a competitor’s “Swagway”-branded hoverboards (Swagway LLC v. International Trade Commission, No. 18-1672, Fed. Cir.).

  • May 9, 2019

    Judge: Fact Questions Mostly Preclude Judgment In ‘IMI’ Cybersquatting Case

    SAN JOSE, Calif. — Finding that “numerous” questions of fact exist on whether an internet domain was registered in bad faith and whether a purportedly infringed trademark merits protection, a California federal judge on May 6 mostly denied the parties’ motions for summary judgment in a cybersquatting lawsuit (Jeffrey Dean Black v. Irving Materials Inc., No. 5:17-cv-06734, N.D. Calif., 2019 U.S. Dist. LEXIS 76418).

  • May 7, 2019

    Federal Judge: Insurer Has Duty To Defend Creamery Against Infringement Suit

    HARRISBURG, Pa. — A Pennsylvania federal judge on May 6 held that a commercial general liability insurer has a duty to defend Hershey Creamery Co. against an underlying lawsuit alleging that the ice cream manufacturer unlawfully copied a competitor’s self-serve milkshake machine and its related marketing designs, display and verbiage (Hershey Creamery Company v. Liberty Mutual Fire Insurance Co., et al., No. 18-694, M.D. Pa., 2019 U.S. Dist. LEXIS 75760).

  • May 3, 2019

    Federal Judge Enters Default Against Hoverboard Makers, Awards $2M In Damages

    LOS ANGELES — After holding that a product safety company adequately demonstrated the substantive merits of its claims for trademark infringement, violation of California’s unfair competition law (UCL) and other causes of action, a California federal judge on April 30 granted its request for a default judgment against entities and individuals it alleged used its marks on their hoverboard products and awarded it more than $2 million (UL, LLC v. Gangsong Group Corp., et al., No. 17-8166, C.D. Calif., 2019 U.S. Dist. LEXIS 72782).

  • May 3, 2019

    Supreme Court Won’t Review Dispute Over Religious Trademarks

    WASHINGTON, D.C. — In its April 29 orders list, the U.S. Supreme Court denied certiorari in a dispute over the genericness of the trademark “universal” when used in a religious context (The Universal Church Inc. v. Calvin Toellner, et al., No. 18-1159, U.S. Sup.).

  • May 1, 2019

    Booking.com Appeals Attorney Fees Award To Supreme Court In Trademark Suit

    WASHINGTON, D.C. — A travel booking website operator that prevailed in its appeal of a trademark registration denial by the U.S. Patent and Trademark Office (PTO) filed a petition for certiorari with the U.S. Supreme Court April 10, arguing that the Fourth Circuit U.S. Court of Appeals erred in assessing attorney fees against it in violation of the presumptions of the American Rule and the First Amendment to the U.S. Constitution (Booking.com B.V. v. Andrei Iancu, No. 18-1309, U.S. Sup.).

  • April 29, 2019

    Fees Partly Affirmed, Partly Vacated In Copyright, Trademark Row

    SAN FRANCISCO — Although vacating a California federal judge’s award of attorney fees incurred in connection with a successful defense of copyright infringement claims, the Ninth Circuit U.S. Court of Appeals on April 23 agreed that related allegations premised on “extraordinarily weak” trademarks qualify as exceptional (Amusement Art LLC v. Life is Beautiful LLC, et al., No. 17-55045, 9th Cir., 2019 U.S. App. LEXIS 11916).

  • April 29, 2019

    Judge: Insurer Has No Duty To Defend Bed And Breakfast Owner Against Infringement Suit

    HONOLULU — A Hawaii federal judge on April 24 granted a business liability insurer’s motion for summary judgment in its declaratory judgment lawsuit, finding that it has no duty to defend its bed and breakfast owner insured against an underlying infringement lawsuit brought by a competitor (State Farm Fire and Casualty Company v. Joan Prescott, No. 18-00127, D. Hawaii, 2019 U.S. Dist. LEXIS 69804).

  • April 29, 2019

    Franchisee’s Trademark Use After Termination Of Agreement Is Not Counterfeiting

    SANTA ANA, Calif. — A federal judge in California on April 25 entered default judgment in favor of two franchisors on their claims for trademark infringement, false designation of origin, breach of franchise agreement, breach of sublease and unfair competition, but found that they could not prevail on their claims for trademark counterfeiting based on the franchisee’s use of the trademark after the termination of the franchise agreement (Meineke Franchisor SPV LLC, et al. v. Sharif Atta, No. SACV-18-1205-JVS, C.D. Calif., 2019 U.S. Dist. LEXIS 70085).

  • April 26, 2019

    Panel: Disgorged Profits In Trademark Context Are Equitable In Nature

    ATLANTA — In what it deemed a case of first impression, the 11th Circuit U.S. Court of Appeals on April 23 found that there is no right to a jury trial under the Seventh Amendment, U.S. Const. amend. VII, where a trademark plaintiff seeks recovery of an infringement defendant’s profits in lieu of actual damages (Hard Candy LLC v. Anastasia Beverly Hills Inc., No. 18-10877, 11th Cir., 2019 U.S. App. LEXIS 11877).

  • April 26, 2019

    Costco Tells 2nd Circuit It Used ‘Tiffany’ Descriptively, Not As A Trademark

    NEW YORK — Appealing a trial court’s finding that it infringed the trademark of Tiffany and Co. by advertising certain rings as “Tiffany,” Costco Wholesale Corp. tells the Second Circuit U.S. Court of Appeals in an April 24 brief that it used the term in a generic, non-trademark manner to describe the rings (Tiffany and Company, et al. v. Costco Wholesale Corp., Nos. 17-2798, 19-338 and 19-404, 2nd Cir.).

  • April 23, 2019

    Federal Circuit Reverses, Remands, Finds In Favor Of Trademark Owner

    WASHINGTON, D.C. — An Oregon federal judge’s holding that use of an appellant’s trademark in advertising and brochures does not rise to the level of a use in commerce was erroneous, the Federal Circuit U.S. Court of Appeals ruled April 19 (VersaTop Support Systems v. Georgia Expo Inc., No. 18-1208, Fed. Cir., 2019 U.S. App. LEXIS 11404).

  • April 23, 2019

    Disability Claimant Defends Anti-Insurer Gripe Site, Opposes Contempt Motion

    PORTLAND, Maine — Stating that his insurer’s attorney “whines like a harpy,” a pro se defendant filed a brief in Maine federal court April 12, opposing a motion for contempt by his long-term disability (LTD) provider over his relaunch of a website critical of the insurer that purportedly contained information that he was forbidden to post pursuant to a preliminary injunction in a lawsuit alleging defamation and trademark and copyright infringement (Symetra Life Insurance Co. v. Guy Raymond Emerson, No. 2:18-cv-00492, D. Maine).

  • April 15, 2019

    Arguments Held In Challenge To ‘Scandalous’ Trademark Provision

    WASHINGTON, D.C. — At oral arguments before the U.S. Supreme Court April 15, an attorney for the U.S. Patent and Trademark Office (PTO) told the justices that the Federal Circuit U.S. Court of Appeals erred in declaring the agency’s ban on registrations for “immoral and scandalous” trademarks unconstitutional (Andrei Iancu v. Erik Brunetti, No. 18-302, U.S. Sup.).

  • April 12, 2019

    Insured Asks 4th Circuit To Reverse No Coverage Ruling For Trademark Dispute

    RICHMOND, Va. — An insured recently asked the Fourth Circuit U.S. Court of Appeals to reverse a lower federal court's finding that its insurer has no duty to defend it against an underlying trademark infringement suit (Synaptek Corporation v. Sentinel Insurance Company, No. 18-968, 4th Cir.).

  • April 11, 2019

    Religious Amici To High Court: ‘Universal Church’ Mark Is Protectable, Not Generic

    WASHINGTON, D.C. — A group of five disparate religious organizations teamed up to file an amicus curiae brief April 5, asking the U.S. Supreme Court to consider a standard used by the Second Circuit U.S. Court of Appeals in finding the “Universal Church” trademark to be generic, arguing that religious trademarks merit the same consideration and protection as any other trademarks and suggesting that issues of religious liberty are implicated in the present case (The Universal Church Inc. v. Calvin Toellner, et al., No. 18-1159, U.S. Sup.).

  • April 11, 2019

    Judge Enters Default On Musician’s Trademark, UCL Claims, Enters Injunction

    LOS ANGELES — A California federal judge on April 8 entered a default judgment and granted an injunction in favor of a musician and against a concert promoter on claims for trademark infringement, violation of California’s unfair competition law (UCL) and other causes of action, ordering the promotor to return all domain names and social media accounts using the singer’s marks (James Todd Smith v. Guerilla Union, Inc., et al., No. 18-9902, C.D. Calif., 2019 U.S. Dist. LEXIS 60309).

  • April 11, 2019

    Gatorade, Consulting Firm Debate Fair Use Of ‘Sports Fuel’ Mark In 7th Circuit

    CHICAGO — The Seventh Circuit U.S. Court of Appeals heard oral arguments April 9 from The Gatorade Co. and a sports nutrition consulting firm as to whether the sports drink maker’s use of the term “sports fuel” in its marketing constituted trademark use and whether such use was fair under the Lanham Act (SportFuel Inc. v. PepsiCo Inc., et al., No. 18-3010, 7th Cir.).

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