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Mealey's Trademarks

  • April 16, 2024

    Panel: Features Singled Out In Trade Dress Application Lack Distinctiveness

    RICHMOND, Va. — An application to register the tube-shaped ankle collar, hexagonal eyelets and other features of Timberland boots was properly rejected by the U.S. Patent and Trademark Office for lacking the distinctiveness required for trade dress protection, the Fourth Circuit U.S. Court of Appeals decided April 15 in a case that drew the interest of the International Trademark Association (INTA) as amicus curiae.

  • April 16, 2024

    Panel: Ad Use Of Flag, Plea To Buy American Is Not Literally False

    DENVER — A request for damages in connection with the use of a construction equipment company’s copyrighted photographs in alleged false advertisements that implored consumers to buy a competitor’s American-made products was rightly rejected by a federal judge in Oklahoma, the 10th Circuit U.S. Court of Appeals has ruled.

  • April 15, 2024

    Leap Year Dooms Bid For Certiorari In Vans Trademark Litigation

    WASHINGTON, D.C. — An opposed motion for leave to file a petition for a writ of certiorari out of time by the maker of “Wavy Baby” shoes accused of infringing Vans Inc.’s trademarks and trade dress was denied April 15 by the U.S. Supreme Court.

  • April 11, 2024

    Organization, Former President Argue In 11th Circuit Over Trademark Settlement

    ATLANTA — An Alabama federal court had jurisdiction to issue an order memorializing the settlement terms accompanying a voluntary dismissal of trademark infringement and cybersquatting claims against its former president, a servicemembers’ families organization argues in a brief to the 11th Circuit U.S. Court of Appeals, calling the ousted president’s appeal meritless.

  • April 11, 2024

    Sanctions Discovery Order In Trademark Row Between ICEE, Slush Puppie Stands

    CINCINNATI — A federal judge in Ohio on April 10 said he won’t reconsider his August bench ruling that granted discovery on a defendant’s request for sanctions against opposing counsel, in a contractual dispute involving a fabricated trademark license that was presented as valid for more than two years of litigation.

  • April 11, 2024

    No Disparagement Alleged, No Advertising Injury Coverage Triggered, Panel Affirms

    NEW YORK — The Second Circuit U.S. Court of Appeals held that an underlying class action lawsuit brought against the manufacturer of Wipe Out! wipes and sprays failed to allege disparagement and, therefore, its general liability insurance policy’s personal and advertising injury coverage was not triggered, affirming a federal court’s dismissal of the insured’s lawsuit seeking coverage for underlying allegations that it made false and misleading claims on the labels of three of its products.

  • April 10, 2024

    Judge Won’t Reconsider Ruling That OpenAI Is Mark’s Owner

    SAN FRANCISCO — A company and its owner have not shown that a finding that OpenAI Inc. is the only bona fide user of a trademark requires reconsideration or was reached in error, and the defendants cannot simply change attorneys and seek “a re-do” of the resulting preliminary injunction ruling, a federal judge in California said.

  • April 08, 2024

    Verdict, Award In Favor Of Sprint On Trademark, ACPA Claims Upheld

    ATLANTA — Efforts by sellers of counterfeit mobile phones to undo an award of $4.5 million in statutory damages in favor of Sprint Communications LLC have failed, with the 11th U.S. Circuit Court of Appeals deeming a jury verdict of cybersquatting, infringement and counterfeiting supported by ample evidence.

  • April 04, 2024

    California Federal Judge Offers Glimpse At Hurdles In TikTok IP Row

    SAN FRANCISCO — In advance of a planned April 5 hearing on a motion to dismiss copyright infringement and false advertising claims leveled against TikTok Inc. and others, a federal judge in California has directed the video sharing app to be prepared to defend its position that the registration requirement in federal copyright law extends to copyrights registered abroad.

  • April 03, 2024

    Panel Majority: Applications Cancelable In Cases That Include Registered Marks

    SAN FRANCISCO — In a pair of rulings issued the same day, a divided Ninth Circuit U.S. Court of Appeals panel reinstated an infringement action and found that federal courts have jurisdiction to consider challenges to applications for trademarks as long as infringement of at least one registered trademark is also alleged.

  • April 02, 2024

    Pa. Federal Judge Clarifies, But Won’t Reconsider, Penn State Trademark Ruling

    HARRISBURG, Pa. — Over the objection of The Pennsylvania State University, a federal judge in Pennsylvania on April 2 clarified a February 2024 ruling granting the school summary judgment on several affirmative defenses raised by an apparel maker accused of trademark infringement.

  • March 26, 2024

    Modelo Loses Appeal; 2nd Circuit Affirms ‘Beer’ In Contract Is Ambiguous

    NEW YORK — The Second Circuit U.S. Court of Appeals said March 25 it will not disturb a summary judgment ruling by a federal judge in New York that a trademark license to make and sell “beer” in the United States under the “Modelo” and “Corona” trademarks was not shown to be violated by a sublicensee’s use of the marks in connection with fermented sugar-based hard seltzer drinks.

  • March 26, 2024

    UCL, Declaratory Judgment Counterclaims Tossed In Dispute Over Marks, Logo

    HARTFORD, Conn. — Trademark infringement and false advertising plaintiffs secured dismissal on March 25 of allegations that they violated the California unfair competition law (UCL), with a federal judge in Connecticut ruling that complained-of securities transactions took place overseas.

  • March 26, 2024

    Deficiencies Cured By Amended Complaint In ‘Wicked Fish’ Mark Row

    TRENTON, N.J. — A federal judge in New Jersey on March 25 denied dismissal of trademark infringement, false designation of origin and unfair competition claims leveled in a dispute between the owner of the “Wicked Fish” trademark and its former licensee, nearly one year after dismissing the case with leave to amend.

  • March 20, 2024

    Panel Affirms: Confusion Unlikely Between ‘Jackpot,’ ‘Jackpocket’ Trademarks

    NEW YORK — Findings by a federal judge in New York at the conclusion of a bench trial that consumers are unlikely to be confused by “Jackpot.com” and a lottery courier services company operating as “Jackpocket” have been upheld by the Second Circuit U.S. Court of Appeals.

  • March 19, 2024

    Parties Await Ruling On Reconsideration Requests In Trademark Row

    HARRISBURG, Pa. — Briefing is complete in a bid for reconsideration of a wide-ranging Feb. 6 opinion by a Pennsylvania federal judge that, among other things, granted The Pennsylvania State University summary judgment on an apparel maker’s affirmative defense that its use of historical images incorporating the trademarks of others is ornamental in nature and thus nonactionable.

  • March 19, 2024

    Judge Says OpenAI Prevails In Dispute Over Use Of Name

    SAN FRANCISCO — Since OpenAI Inc. saw its attempt to trademark its name denied, “the landscape has changed” through its introduction of two applications that have made it a household name, a federal judge in California said in enjoining defendants from using the Open AI mark or open.ai.

  • March 19, 2024

    Divided 2nd Circuit Won’t Undo Trademark Fair Use Findings

    NEW YORK — A Connecticut federal judge’s determination that use by an appellee of the term “red gold” in connection with gold-copper luxury watches qualifies as fair under federal trademark law will not be disturbed, a panel majority of the Second Circuit U.S. Court of Appeals has ruled.

  • March 18, 2024

    Executive Can’t Shake Claims Company Infringed ‘Playground AI’ Mark

    SAN JOSE, Calif. — Litigation over the “Playground AI” trademark will proceed in California with the founder of the artificial intelligence company Mighty Computing Inc. named as a co-defendant, a federal judge there held in denying a motion to dismiss.

  • March 14, 2024

    Subpoena For Deposition In Trademark Opposition Will Stay Quashed, Panel Rules

    RICHMOND, Va. — Although with a different rationale than the one espoused by a Virginia federal judge, the Fourth Circuit U.S. Court of Appeals on March 13 upheld an order that quashed a subpoena issued to a foreign entity in opposition proceedings before the U.S. Patent and Trademark Office (PTO) Trademark Trial and Appeal Board.

  • March 14, 2024

    Designer, PTO Argue If Vulgar Word Was Properly Denied Trademark Registration

    WASHINGTON, D.C. — An artist and designer who had four trademark registrations for a vulgar word denied by the U.S. Patent and Trademark Office (PTO) tells the Federal Circuit U.S. Court of Appeals in his reply brief that the agency inappropriately relied on newly created doctrines regarding commonly used words in rejecting his applications, despite the fact that many other commonly used words have been used as trademarks.

  • March 13, 2024

    Per Gucci, Jury Demand In New York Federal Trade Dress Row Stricken

    BROOKLYN, N.Y. — A trade dress dispute between two ice cream makers will proceed but not before jurors because a request for disgorged profits is equitable in nature and thus will be decided at a bench trial, a federal judge in New York has ruled.

  • March 12, 2024

    Colorado Federal Judge: App Store Notices Not Enough For Jurisdiction

    DENVER — A Colorado-based business on March 11 saw its infringement complaint dismissed without prejudice by a federal judge in Colorado, who said trademark notices sent by defendants to the Apple and Google app stores did not rise to the level of “express aiming” at the state.

  • March 12, 2024

    Crocs Must Face Defamation Claims In Colorado Over Patent Press Release

    DENVER — Allegations by a Canadian shoe seller and former patent infringement defendant that it was defamed in a press release by Crocs Inc. that touted a settlement of their longstanding litigation as a “judgment of infringement” were deemed plausible on March 11 by a federal judge in Colorado.

  • March 11, 2024

    Judge Amends Consent Decree Order In Case Over Alleged Counterfeit Policies

    LOUISVILLE, Ky. — In a March 8 amended ruling entering a consent decree in a sprawling suit over allegations of fraud, trademark counterfeiting and trademark infringement involving captive reinsurance programs, a Kentucky federal judge said he “inadvertently omitted the names of two parties.”