Mealey's Trademarks

  • March 08, 2019

    9th Circuit Vacates, Remands Denial Of Fees In ‘Ratt’ Trademark Row

    SAN FRANCISCO — Although a California federal judge properly granted a bassist accused of infringing the “Ratt” trademark summary judgment, a denial of attorney fees must be vacated and remanded, the Ninth Circuit U.S. Court of Appeals ruled March 7 (WBS Inc. v. Juan Croucier, et al., No. 17-55973 and 17-56009, 9th Cir.).

  • March 04, 2019

    Facebook, Instagram Sue Chinese Companies Offering Fake User Profiles

    SAN FRANCISCO — Facebook Inc. and Instagram LLC on March 1filed a trademark infringement and cybersquatting complaint in California federal court against several Chinese companies and individuals that they say are falsely offering to sell fake user profiles to their respective social networks (Facebook Inc., et al. v. 9 Xiu Network [Shenzhen] Technology Co. Ltd., et al., No. 3:19-cv-01167, N.D. Calif.).

  • March 04, 2019

    6th Circuit Sides With Licensor On Licensee’s Lanham Act Claims

    CINCINNATI — Allegations by a counterclaimant restaurant owner that its license was wrongfully terminated and that a licensor engaged in malicious trademark litigation were correctly rejected on summary judgment, the Sixth Circuit U.S. Court of Appeals ruled March 1 (Buffalo Wild Wings Inc. v. BW-3 of Akron Inc., et al., No. 17-4291, 6th Cir., 2019 U.S. App. LEXIS 6310).

  • March 04, 2019

    Wisconsin Supreme Court Affirms Coverage Triggered For Medical Supply Company

    MADISON, Wis. — A Wisconsin Supreme Court on Feb. 28 held that underlying allegations against a medical company insured triggered a policy’s “personal and advertising injury liability” coverage and the knowing violation and criminal acts exclusions do not apply to relieve the insurer of its duty to defend (West Bend Mutual Insurance Company v. Ixthus Medical Supply Inc., et al., No. 2017AP909, Wis. Sup., 2019 Wisc. LEXIS 63).

  • February 28, 2019

    High Court Review Sought For Defense Preclusion In Dungaree Trademark Suit

    WASHINGTON, D.C. — A clothing company that has been embroiled in an almost two-decade dispute over the “Get Lucky” and “Lucky Brand” trademarks filed a petition for certiorari on Feb. 15, asking the U.S. Supreme Court to decide whether federal preclusion principles bar a repeat litigant from raising defenses that were not previously adjudicated (Lucky Brand Dungarees Inc., et al v. Marcel Fashion Group Inc., No. 18-1086, U.S. Sup.).

  • February 28, 2019

    New York Magistrate: Dismiss Copyright, Trademark Claims By Pro Se Plaintiff

    NEW YORK — In a Feb. 27 report and recommendation, a New York federal judge found that a pro se plaintiff’s allegations of copyright and trademark infringement over an alleged knockoff beekeeping product should be dismissed (James H. Fischer v. Brushy Mountain Bee Farm Inc., No. 17-10094, S.D. N.Y., 2019 U.S. Dist. LEXIS 30353).

  • February 27, 2019

    3rd Circuit Concludes Defendant Is Owner Of ‘Restoraderm’ Trademark

    PHILADELPHIA — A Pennsylvania federal judge did not err in denying a trademark infringement plaintiff a directed verdict but did err in granting the plaintiff judgment as a matter of law with regard to unjust enrichment, the Third Circuit U.S. Court of Appeals ruled Feb. 26 (Thomas Sköld v. Galderma Laboratories L.P., Nos. 17-3148, -3231, 3rd Cir., 2019 U.S. App. LEXIS 5741).

  • February 27, 2019

    Florida Federal Judge Says Trademark Valid, But Not Infringed

    ORLANDO, Fla. — Following a recent bench trial, a Florida federal judge on Feb. 25 rejected allegations of direct and vicarious infringement but also found in favor of a trademark owner on a counterclaim asserting trademark invalidity (Superior Consulting Services, Inc. v. Shaklee Corporation, et al., No. 6:16-cv-2001, M.D. Fla., 2019 U.S. Dist. LEXIS 29007).

  • February 26, 2019

    9th Circuit Reinstates Trademark Infringement Verdict By Jurors

    SAN FRANCISCO — In a Feb. 22 unpublished ruling, the Ninth Circuit U.S. Court of Appeals found that a California federal judge erred in undoing a jury’s verdict of trademark validity and infringement in a dispute over the Vietnamese noodle soup, pho (Quoc Viet Inc. v. VV Foods LLC, Nos. 17-55331, - 5 5742, 9th Cir., 2019 U.S. App. LEXIS 5265).

  • February 21, 2019

    Scandalous Marks Ban Does Not Violate 1st Amendment, PTO Tells Supreme Court

    WASHINGTON, D.C. — The Federal Circuit U.S. Court of Appeals incorrectly found the Lanham Act’s prohibition on the registration of scandalous marks in violation of the First Amendment to the U.S. Constitution, the U.S. Patent and Trademark Office (PTO) argues in its Feb. 15 opening merits brief to the U.S. Supreme Court, arguing that the provision is viewpoint-neutral and, therefore, not unconstitutional (Andrei Iancu v. Erik Brunetti, No. 18-302, U.S. Sup.).

  • February 20, 2019

    Oral Arguments Held In Dispute Over Bankruptcy Filing, Trademark License

    WASHINGTON, D.C. — An attorney told the U.S. Supreme Court at oral arguments on Feb. 20 that his client did not violate the Bankruptcy Code when it stripped a former licensee of the right to continue use of a trademark following a voluntary petition under Chapter 11 (Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, U.S. Sup.).

  • February 13, 2019

    Candle Maker Alleges Company Stole Marks, Sues For Infringement, UCL Violations

    LOS ANGELES — A candle maker on Feb. 11 sued another candle company in a California federal court, asserting claims for copyright and trademark infringement and violation of California’s unfair competition law (UCL), alleging that the company made and sold candles using its artwork and federally registered proprietary names (Indio Products, Inc. v. CSP Yemaya International, Inc., et al., No. 2:19cv1018, C.D. Calif.).

  • February 12, 2019

    Jurisdictional Discovery Ordered In Lanham Suit Over Online Beauty Products Sales

    HOUSTON — Adopting a magistrate’s recommendation, a Texas federal judge on Feb. 7 denied an online retailer’s motion to dismiss a Lanham Act lawsuit over its alleged sale of counterfeit goods for lack of jurisdiction, finding that good cause exists to conduct limited discovery as to whether Texas jurisdiction is proper (Danny Huynh v. Zurno Inc., No. 4:18-cv-01756, S.D. Texas, 2019 U.S. Dist. LEXIS 20360).

  • February 12, 2019

    Contempt Proceeding Against Insured Does Not Allege Covered ‘Damages,’ Judge Says

    SAN JOSE, Calif. — A California federal judge on Feb. 7 held that an underlying contempt proceeding against an insured fails to assert a claim for covered "damages" under a general liability insurance policy, further finding that the policy’s intellectual property and unfair competition exclusions also bar coverage (Great American E&S Insurance Company v. Theos Medical Systems, Inc., No. 17-05660, N.D. Calif., 2019 U.S. Dist. LEXIS 21143).

  • February 12, 2019

    Bankruptcy Did Not Permit Trademark License Rejection, Licensee Tells High Court

    WASHINGTON, D.C. — With scheduled Feb. 20 oral arguments fast approaching in a dispute over whether the U.S. Bankruptcy Code permits a trademark licensor to reject a license upon filing for bankruptcy, a former licensee tells the U.S. Supreme Court in its Feb. 8 reply brief that statutory and congressional context demonstrate that the license remained in effect after the filing (Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, U.S. Sup.).

  • February 11, 2019

    Sheet Metal Workers’ Union Says Debtor Ignores Trademark Infringement Claims

    TRENTON, N.J. — A labor union on Feb. 6 objected to the confirmation of the reorganization plan for Chapter 11 debtor Duro Dyne National Corp., telling a New Jersey federal bankruptcy court that the plan fails to address the union’s $7.6 million proof of claim for the company’s alleged infringement and counterfeiting of the union’s trademark on doors it manufactured (In re:  Duro Dyne National Corp., et al., No. 18-27963, D. N.J. Bkcy.).

  • February 08, 2019

    Lanham Act Claims Over Online Supplement Review Lack Specificity, Judge Says

    SAN DIEGO — Although a California federal judge found that a dietary supplement maker sufficiently pleaded injury from purportedly false statements made by a competitor in an online review about its product, the plaintiff’s failure to establish the statements’ falsity ultimately led the judge to dismiss its Lanham Act and trade libel claims Feb. 5 (GOLO LLC v. Higher Health Network LLC, et al., No. 3:18-cv-02434, S.D. Calif., 2019 U.S. Dist. LEXIS 18506).

  • February 07, 2019

    Costs, But No Fees, Awarded In South Carolina Trademark Case

    CHARLESTON, S.C. — In a Feb. 5 ruling, a South Carolina federal judge rejected a prevailing trademark infringement plaintiff’s request for reimbursement of $237,824 in attorney fees, upon disagreeing with the plaintiff that the case qualifies as exceptional (SafeRack LLC v. Bullard Company, No. 17-1613, D. S.C., 2019 U.S. Dist. LEXIS 18253).

  • February 06, 2019

    Chanel Granted Default Judgment Over Websites Selling Counterfeit Items

    FORT LAUDERDALE, Fla. — Chanel Inc. prevailed against the operators of several dozen websites that were offering counterfeit Chanel goods on Feb. 5, when a Florida federal judge granted its motion for default judgment and awarded it damages, injunctive relief and control over the offending websites (Chanel Inc. v. Bestaaachanel.com, et al., No. 0:18-cv-63018, S.D. Fla., 2019 U.S. Dist. LEXIS 17846).

  • February 05, 2019

    4th Circuit Says ‘Booking.Com’ Marks Entitled To Protection

    RICHMOND, Va. — A divided Fourth Circuit U.S. Court of Appeals on Feb. 4 affirmed a Virginia federal judge’s determination that the Booking.com trademark has acquired secondary meaning, as well as that regardless of who prevailed, Booking.com should reimburse the U.S. Patent and Trademark Office (USPTO) $51,472.53 in attorney fees (Booking.com v. Andre Iancu, Nos. 17-2458, -2459, 4th Cir., 2019 U.S. App. LEXIS 3456).

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