Mealey's Trademarks
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January 20, 2021
Federal Circuit Upholds Refusal Of Application For ‘NORTH 61’ Mark
WASHINGTON, D.C. — A determination by the Trademark Trial and Appeal Board that “NORTH 61” would cause confusion with an existing “66⁰NORTH” trademark was affirmed Jan. 13 by the Federal Circuit U.S. Court of Appeals.
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January 20, 2021
Anti-Malware Firm Again Seeks Dismissal Of Lanham Deception Claims By Competitor
SAN JOSE, Calif. — On remand after a failed petition for certiorari, a malware detection software maker on Jan. 12 filed a renewed motion to dismiss claims brought against it by a competitor in California federal court, asserting that it has not engaged in deceptive acts or false advertising in its targeting of the plaintiff’s “Scareware.”
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January 14, 2021
Hendrix Brother Held In Contempt In New York Copyright, Trademark Row
NEW YORK — In a Jan. 11 holding, a federal judge in New York agreed with the owner of the musical compositions and sound recordings of the late Jimi Hendrix that Leon Hendrix, brother of the legendary guitarist, has violated permanent injunctions covering various Jimi Hendrix-related copyrights and trademarks.
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January 11, 2021
Despite Calls From Amici, Certiorari Denied In Trademark Parody Row
WASHINGTON, D.C. — In its Jan. 11 order list, the U.S. Supreme Court denied a petition for certiorari in a trademark infringement and dilution case that drew amicus briefs from seven interested parties.
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January 08, 2021
Judge: Juul Can Pierce Corporate Veil In Trademark Claims Against E-Cig Pod Maker
TRENTON, N.J. — A federal judge in New Jersey on Jan. 7 denied an e-cigarette pod manufacturer’s motion to dismiss e-cigarette company Juul Labs Inc.’s lawsuit alleging trademark infringement against the manufacturer’s individual cofounders, finding that jurisdiction and service were proper and that Juul presented plausible allegations to pierce the corporate veil and assert liability against the cofounders.
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January 08, 2021
Divided 2nd Circuit Upholds $1.1M Award In Counterfeit Watch Case
NEW YORK — A watchmaker prevailed Jan. 6 in an appeal by a trademark infringement defendant of a New York federal judge’s $1.1 million damage award and permanent injunction, when the Second Circuit U.S. Court of Appeals agreed that a landlord was willfully blind to counterfeit sales taking place in its Manhattan store.
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January 05, 2021
E-Cigarette Pod Maker In Juul Trademark Row Recovers $250K From Frozen Assets
TRENTON, N.J. — A federal judge in New Jersey on Dec. 29 authorized an e-cigarette pod manufacturer to withdraw $250,000 for legal fees and living expenses out of approximately $20 million the judge froze Dec. 22 to prevent the manufacturer from spending profits it allegedly earned through infringing Juul Labs Inc.’s trademark by repeatedly using the hashtag “#juul” to market its products.
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December 31, 2020
Apple In 9th Circuit Brief: App Maker Did Not Use ‘Memoji’ Mark In Commerce
SAN FRANCISCO — A trial court correctly found that a tech firm did not use its asserted “Memoji” trademark in commerce, per the Lanham Act, Apple Inc. argues in a Dec. 22 brief in the Ninth Circuit U.S. Court of Appeals, asserting that the appellant only released its defective app in a quest to initiate litigation and to reserve the trademark.
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December 31, 2020
Dog Toy Maker Asks High Court To Deny Jack Daniel’s Petition On Trademark Dilution
WASHINGTON, D.C. — A manufacturer of dog toys tells the U.S. Supreme Court in a Dec. 16 brief that the Ninth Circuit U.S. Court of Appeals correctly found a squeaky toy resembling a bottle of Jack Daniel’s Properties Inc.’s whiskey to be an expressive work protected under the First Amendment to the U.S. Constitution, asking the high court to deny the distillery’s petition for certiorari regarding trademark infringement and dilution in the context of a humorous commercial product.
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December 22, 2020
Judge Trims Tribe’s Claims In Dispute Over Treasure Island Casino Trademarks
MINNEAPOLIS — A Minnesota Indian tribe fails to state plausible claims that a Las Vegas casino business diluted the tribe’s casino trademarks by blurring or tarnishing, a federal judge held Dec. 21 in dismissing the dilution claims in the tribe’s trademark infringement lawsuit, though with leave to amend (Prairie Island Indian Community v. Radisson Hotels International, Inc., et al., No. 20-1234, D. Minn., 2020 U.S. Dist. LEXIS 239671).
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December 18, 2020
Texas Trademark Row Will Proceed Despite Cancellation Petition
HOUSTON — In a Dec. 17 order, a federal judge in Texas denied a defendant’s request to stay an infringement action while the U.S. Patent and Trademark Office (PTO) Trademark Trial and Appeal Board (TTAB, or board) considers a request to cancel the “512” trademark (ClipBandits LLC v. Edmund Samora, No. 20-3054, S.D. Texas, 2020 U.S. Dist. LEXIS 236457).
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December 18, 2020
Dismissal Of Copyright, Trade Dress Claims Affirmed By 9th Circuit
SAN FRANCISCO — In a Dec. 16 holding, the Ninth Circuit U.S. Court of Appeals found no error in a California federal judge’s dismissal of copyright and trade dress infringement allegations levied in connection with decorative wood products (Crafty Productions Inc. v. Fuqing Sanxing Crafts Co. Ltd., et al., No. 20-55010, 9th Cir., 2020 U.S. App. LEXIS 39494).
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December 17, 2020
5th Circuit Upholds Rejection Of ‘Unified Buddhist’ Trademark Row
NEW ORLEANS — A federal judge in Texas did not err in granting a trademark infringement defendant summary judgment based upon a plaintiff’s failure to establish that its “Unified Buddhist Church of Vietnam” trademark had acquired secondary meaning, the Fifth Circuit U.S. Court of Appeals ruled Dec. 14 (Unified Buddhist Church of Vietnam v. Unified Buddhist Church of Vietnam, No. 19-20544, 5th Cir., 2020 U.S. App. LEXIS 39003).
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December 17, 2020
High Court Denies Petition Over Terminating Sanctions For Discovery Failures
WASHINGTON, D.C. — In its Dec. 14 order last, the U.S. Supreme Court denied without comment a petition for certiorari by one of several parties that was hit with a default judgment ruling and terminating sanctions for discovery misconduct in a lawsuit over trademark allegations over counterfeit ink cartridges, with the high court declining to consider the petitioner’s arguments that he was improperly lumped in with other defendants who engaged in the discovery failures (Artem Koshkalda v. Seiko Epson Corp., et al., No. 20-483, U.S. Sup., 2020 U.S. LEXIS 6023).
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December 16, 2020
Dismissal Of Lanham Act, False Patent Marking Claims Upheld On Appeal
SAN FRANCISCO — In a Dec. 15 ruling, the Ninth Circuit U.S. Court of Appeals rejected a false advertising and false patent marking plaintiff’s effort to undo an award of attorney fees on behalf of a prevailing defendant, instead agreeing with an Arizona federal judge that the case was litigated unreasonably (ThermoLife International LLC v. American Wholesale Fitness, LLC, Nos. 20-15163, -15807, 9th Cir., 2020 U.S. App. LEXIS 39312).
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December 14, 2020
Requests Largely Denied In Copyright, Trademark Row Between Ex-Partners
ALBUQUERQUE, N.M. — In a Dec. 11 order, a federal judge in New Mexico granted partial summary judgment on counterclaims by a husband and wife that their former business partners are liable for copyright and trademark infringement (Volker Strobel, et al. v. Uwe Rusch, et al., No. 18-656, D. N.M., 2020 U.S. Dist. LEXIS 233676).
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December 14, 2020
Refusal To Register ‘Brew Science’ Mark Upheld By Federal Circuit
WASHINGTON, D.C. — The Trademark Trial and Appeal Board did not err in rejecting an effort to register “Brew Science” as a trademark on grounds that the proposed mark would be descriptive of the services identified in the underlying application, a panel of the Federal Circuit U.S. Court of Appeals ruled Dec. 11 (In re: Christopher Coles, No. 20-1236, Fed. Cir., 2020 U.S. App. LEXIS 38849).
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December 10, 2020
Judge: Suit Against Former Maryland Franchise Can Proceed In Tennessee
MEMPHIS, Tenn. — A Tennessee-based franchisor’s lawsuit against the owners of a former franchise in Maryland who are accused of continuing to use trademarks, trade secrets and proprietary information after the termination of a franchising agreement can proceed in federal court in Tennessee, a federal judge ruled Nov. 23, finding that the defendants waived their personal jurisdiction defense because they agreed to the entry of a permanent injunction and because the franchise agreement includes a forum-selection clause (Gus’s Franchisor LLC v. Terrapin Restaurant Partners LLC, et al., No. 20-2372, W.D. Tenn., 2020 U.S. Dist. LEXIS 219040).
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December 07, 2020
Federal Circuit Won’t Rehear Dispute Over Standing To Cancel Mark
WASHINGTON, D.C. — In an order issued Dec. 4, the Federal Circuit U.S. Court of Appeals announced that it will not revisit its July 2020 determination that “an absence of proprietary rights” in a trademark “does not in itself negate in interest” in cancellation proceedings or a “reasonable belief of damage” (Australian Therapeutic Supplies Pty. Ltd. v. Naked TM LLC, No. 19-1567, Fed. Cir., 2020 U.S. App. LEXIS 37920).
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December 04, 2020
Missouri Federal Judge Stays Franchise Trademark Dispute Pending State Court Ruling
ST. LOUIS — In a dispute over two franchises’ unauthorized use of a window distributor’s trademarks, a Missouri federal judge on Nov. 30 stayed the litigation pending a ruling on the scope of the company’s trademark license by a North Carolina state court. However, the judge agreed to dismiss false advertising and trademark dilution claims, as well as claims against a franchise employee (Window World International LLC, et al. v. Jill O’Toole, et al., No. 4:19-2363, E.D. Mo., 2020 U.S. Dist. LEXIS 223071).