Mealey's Trademarks

  • May 28, 2020

    9th Circuit Upholds Rejection Of Trademark Case Against Jim Beam

    SAN FRANCISCO — In a May 27 holding, the Ninth Circuit U.S. Court of Appeals found no error in a Nevada federal judge’s decision to strike a trademark owner’s demand for a jury trial, or in her subsequent determination that allegations that Jim Beam Brands Co. infringed fail (JL Beverage Co. LLC v. Jim Beam Brands Co., No. 18-16597, 9th Cir., 2020 U.S. App. LEXIS 16791).

  • May 21, 2020

    8th Circuit Affirms Rejection Of Naked License Claim In Trademark Case

    ST. LOUIS — In a May 20 ruling, the Eighth Circuit U.S. Court of Appeals upheld an $80,688 award in favor of a plaintiff, finding no error in a Missouri federal judge’s determination following a bench trial that an infringement defendant did not possess a naked license to use the “Lawn Managers” trademark (Lawn Managers Inc. v. Progressive Lawn Managers Inc., No. 18-2658, 8th Cir., 2020 U.S. App. LEXIS 16070).

  • May 19, 2020

    11th Circuit Reverses, Says Trademark Erroneously Deemed Descriptive

    ATLANTA — In a May 14 ruling, the 11th Circuit U.S. Court of Appeals rejected findings by a Florida federal judge that the “engineered tax services” trademark is invalid as merely descriptive, without assessing the question of secondary meaning or the allegation of actionable infringement (Engineered Tax Services Inc. v. Scarpello Consulting Inc., No. 18-13690, 11th Cir., 2020 U.S. App. LEXIS 15398).

  • May 18, 2020

    Federal Circuit Agrees With Florida Court: Chalk Holder Does Not Infringe

    WASHINGTON, D.C. — Defendants, including Toys ‘R’ Us (TRU), accused of design patent, copyright and trade dress infringement were properly granted summary judgment by a Florida federal judge, the Federal Circuit U.S. Court of Appeals ruled May 14 in a dispute over a toy chalk holder (Lanard Toys Limited v. Dolgencorp LLC, et al., No. 19-1781, Fed. Cir., 2020 U.S. App. LEXIS 15422).

  • May 18, 2020

    Supreme Court Won’t Hear Dispute Over Consent Decree Assignability

    WASHINGTON, D.C. — In its May 18 orders list, the U.S. Supreme Court denied a petition for certiorari that challenged findings by the Sixth Circuit U.S. Court of Appeals that a consent judgment relating to trademarks and trade secrets was assignable (M.W. Watermark LLC, et al. v. Evoqua Water Technologies LLC, No. 19-1079, U.S. Sup.).

  • May 15, 2020

    France, Tourism Company Brief 4th Circuit On Ownership Of Domain

    RICHMOND, Va. — In briefs recently filed in the Fourth Circuit U.S. Court of Appeals, the French Republic (France) and a company specializing in French tourism argue over whether a Virginia federal court properly exercised jurisdiction over France in ordering discovery to determine whether sovereign immunity applied in a lawsuit alleging trademark infringement and cybersquatting related to the ownership of the domain ( Inc. v. The French Republic, et al., No. 20-1016, 4th Cir.).

  • May 14, 2020

    Supreme Court:  New Trademark Defenses Not Barred By Claim Preclusion

    WASHINGTON, D.C. — In a unanimous holding May 14, the U.S. Supreme Court reversed and remanded findings by the Second Circuit U.S. Court of Appeals that a defendant is precluded by res judicata from asserting a release defense to new allegations of trademark infringement (Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., No. 18-1086, U.S. Sup.).

  • May 13, 2020

    Panel Upholds Summary Judgment, Fee Award In Trademark Row

    ATLANTA — A Georgia federal judge did not err in granting defendants accused of infringing the acronym “A.F.A.Y.M.” and the term “Ancient Free and Accepted York(rite) Masons” summary judgment or in granting attorney fees, the 11th Circuit U.S. Court of Appeals ruled May 12 (The Most Worshipful National Grand Lodge v. United Grand Lodge GA AF & AYM Inc., et al., Nos. 19-13105, 19-14317, 11th Cir., 2020 U.S. App. LEXIS 15037).

  • May 13, 2020

    In Colorado, Trademark Case Against National Geographic Is Dismissed

    DENVER — Following his earlier refusal to adopt the Rogers v. Grimaldi test for balancing First Amendment, U.S. Const. amend I, interests in the context of a trademark infringement case, a Colorado federal judge on May 8 granted dismissal in a dispute over “Wild America” (Marty Stouffer, et al. v. National Geographic Partners LLC, et al., No. 18-3127, D. Colo., 2020 U.S. Dist. LEXIS 81383).

  • May 06, 2020

    Declaratory Judgment Trademark Action Properly Dismissed, Panel Says

    NEW YORK — In an April 30 ruling, the Second Circuit U.S. Court of Appeals affirmed a New York federal judge’s dismissal of a complaint seeking declaration of trademark abandonment, with the panel agreeing that the plaintiff in the case is unable to demonstrate a case or controversy (Abdul Rehyman Karim Saleh v. Sulka Trading Ltd., et al., No. 19-2461, 2nd Cir., 2020 U.S. App. LEXIS 13878).

  • May 04, 2020

    Monopoly, Consumer Perception Debated In Mark High Court Arguments

    WASHINGTON, D.C. — In oral arguments on May 4 during the first ever televised session of the U.S. Supreme Court, the U.S. Patent and Trademark Office (PTO) and B.V. debated whether Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888), and the Lanham Act preclude the combination of a generic term, such as “booking,” with a generic top level domain (TLD), such as “.com,” from creating a protectable trademark (U.S. Patent and Trademark Office, et al. v. B.V., No. 19-46, U.S. Sup.).

  • May 01, 2020

    Lawyer Takes Dismissal Of ‘Goats On A Grass Roof’ Trade Dress Row To High Court

    WASHINGTON, D.C. — An attorney who twice sought cancellation of a Wisconsin restaurant’s registered trade dress, which incorporates live goats, filed a petition for certiorari over the dismissal of his latest petition on April 15, asking the U.S. Supreme Court to address the difference between establishing standing to seek cancellation based on alleged disparagement from a merits claim that a trademark is disparaging (Todd C. Bank v. Al Johnson’s Swedish Restaurant & Butik Inc., No. 19-1232, U.S. Sup.).

  • April 30, 2020

    California Federal Judge Rejects Bid For Trademark Cancellation

    SAN FRANCISCO — In an April 29 order, a federal judge in California found that a counterclaim seeking cancellation of the “IdentityLink” trademark should be dismissed without prejudice because the allegation fails to adequately plead fraud by the trademark owner (LiveRamp Inc. v. Kochava Inc., No. 19-2158, N.D. Calif., 2020 U.S. Dist. LEXIS 75482).

  • April 30, 2020

    In ‘Prevagen’ Trademark Case, Panel Affirms Damages, Injunction

    CHICAGO — The Seventh Circuit U.S. Court of Appeals on April 24 upheld an Illinois federal judge’s decision to award damages and a permanent injunction following entry of a default judgment in a dispute over stolen “Prevagen” supplements (Quincy Bioscience LLC v. Ellishbooks, No. 19‐1799, 7th Cir., 2020 U.S. App. LEXIS 13182).

  • April 23, 2020

    Willfulness Showing Not Required For Award Of Profits, Supreme Court Says

    WASHINGTON, D.C. — In a ruling issued April 23, the U.S. Supreme Court vacated and remanded to the Federal Circuit U.S. Court of Appeals its March 2016 holding that a trademark owner is barred from seeking profits from a trademark infringer without first establishing willfulness (Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233, U.S. Sup.).

  • April 22, 2020

    In California Federal Court, ‘Wool Runners’ Trademark Case Will Proceed

    SAN FRANCISCO — Allegations that an Austrian company and its U.S. affiliate infringed the “Wool Runners” trademark won’t be dismissed, a federal judge in California ruled April 20 (Allbirds Inc. v. Giesswein Walkwaren AG, et al., No. 19-5638, N.D. Calif., 2020 U.S. Dist. LEXIS 69160).

  • April 21, 2020

    Divided Panel Upholds Denied Request For $4.5M In Disgorged Profits

    SAN FRANCISCO — In an April 20 holding, a dissenting judge sitting by designation in the Ninth Circuit U.S. Court of Appeals argued that an Arizona federal judge erred in denying a trademark owner’s request for $4.5 million in disgorged profits in connection with infringement of the “Stone Creek” trademark (Stone Creek Inc. v. Omnia Italian Design Inc., Nos. 18-15914 19-15167, 9th Cir., 2020 U.S. App. LEXIS 12535).

  • April 20, 2020

    11th Circuit Affirms: Copyright, Lanham Act Claims Cannot Proceed

    ATLANTA — A federal judge in Florida did not err in rejecting allegations that a guitar maker is liable for copyright infringement and unfair competition in connection with its use of a “lightning storm” graphic without the consent of an appellant, the 11th Circuit U.S. Court of Appeals ruled April 16 (Buddy Webster v. Dean Guitars, No. 19-10013, 11th Cir., 2020 U.S. App. LEXIS 12078).

  • April 16, 2020

    Federal Circuit:  Confusion Analysis By Trademark Board Not Erroneous

    WASHINGTON, D.C. — In an April 14 ruling, the Federal Circuit U.S. Court of Appeals upheld a decision by the Trademark Trial and Appeal Board that denied a registration for “Stratus” on grounds of likely confusion with an existing “Strata” trademark (Stratus Networks Inc. v. UBTA-UBET Communications Inc., No. 19-1351, Fed. Cir., 2020 U.S. App. LEXIS 11701).

  • April 14, 2020

    Fabric Supplier Answers Trademark Suit With UCL Counterclaims In Federal Court

    LOS ANGELES — A fabric supplier on April 6 answered a wholesale upholstery company’s trademark infringement and unfair competition lawsuit and brought counterclaims for trademark infringement, unfair competition and false advertising under California law and common-law unfair competition two weeks after a California federal judge rejected its argument that the common-law claims for trademark infringement and unfair competition are legally duplicative of the other statutory claims (Pelm Products LLC v. Plaza Fabrics Inc., No. 2:19-cv-08017, C.D. Calif., 2020 U.S. Dist. LEXIS 50174).

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