Mealey's Trademarks
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February 17, 2022
Dental Mixing Tips Maker Defends Functionality Finding In High Court Trade Dress Suit
WASHINGTON, D.C. — The Second Circuit U.S. Court of Appeals correctly found a competitor’s color-coding system for its dental mixing tips to be functional trade dress and not protectable under the Lanham Act, a respondent says in its Feb. 7 brief asking the U.S. Supreme Court to deny certiorari over a question regarding the degree of utility needed to determine functionality.
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February 17, 2022
9th Circuit Told Instagram Account’s Use Of ASU Marks Was Commercial, Infringing
SAN FRANCISCO — Brushing aside amici curiae arguments about a Doe defendant’s rights under the First Amendment to the U.S. Constitution as improperly raised, Arizona State University (ASU) in a Feb. 8 reply brief tells the Ninth Circuit U.S. Court of Appeals that its trademark infringement claims over an Instagram account in which Doe mocked the university’s COVID-19 policies were improperly dismissed sua sponte by a trial court.
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February 14, 2022
Magistrates Recommend Default Against 2 Bodegas For Infringing Juul Trademarks
BROOKLYN, N.Y. — Two New York federal magistrate judges in separate reports and recommendations issued Feb. 9 and 10 both recommended entry of default judgment against two Brooklyn-based bodegas for selling counterfeit and grey market products that infringed the trademarks of e-cigarette maker Juul Labs Inc. (JLI).
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February 14, 2022
Antivirus Software Firm To 9th Circuit: Rival’s Statements Were False, Actionable
SAN FRANCISCO — In its second appeal to the Ninth Circuit U.S. Court of Appeals, Enigma Software Group USA LLC, maker of the SpyHunter antivirus software, argues in its Jan. 28 opening appellant brief that a trial court erred in dismissing its Lanham Act and state law claims over a competitor ‘s software that labeled and quarantined Enigma’s software as malicious.
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February 11, 2022
Defenses, Discovery, Franchise Issues Addressed In ‘Law Tigers’ Trademark Suit
CHICAGO — Resolving multiple motions by the parties in a lawsuit over the “Law Tigers” trademark, an Illinois federal judge on Feb. 8 struck the defendant’s unclean hands affirmative defense related to purported franchise law violations, while permitting discovery and depositions on relevant topics such as the likelihood of confusion.
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February 09, 2022
Vape Company Sues Competitors For Allegedly Infringing ‘JUICY’ Trademark
RENO, Nev. — A tobacco, herb, e-liquids and vape company filed a lawsuit in Nevada federal court on Feb. 4 accusing three Florida-based entities of infringing the company’s “JUICY” trademarks with the sales of their vape products branded “JUUCY” based on the defendants’ conduct during a trade convention held recently in Las Vegas.
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February 08, 2022
Cancellation Of ‘Ethik’ Trademark Upheld On Appeal To Federal Circuit
WASHINGTON, D.C. — The owner and operator of Ethik Clothing Co. on Feb. 4 failed to persuade the Federal Circuit U.S. Court of Appeals to undo a cancellation by the Trademark Trial and Appeal Board of the “ETHIK” trademarks.
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February 08, 2022
Plaintiff Sees Trademark, Copyright Claims Against YouTube Tossed Again
SAN FRANCISCO — A pro se trademark and copyright infringement plaintiff who sought and won leave to amend in October 2021 saw his fourth amended complaint dismissed Feb. 3 by a federal judge in California.
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February 03, 2022
Foreign Firms Ask High Court To Clarify Extraterritorial Application Of Lanham Act
WASHINGTON, D.C. — A group of parties from Germany and Austria, which received an adverse judgment in a trademark infringement suit, filed a petition for certiorari in the U.S. Supreme Court on Jan. 21, arguing that the 10th Circuit U.S. Court of Appeals wrongly applied the Lanham Act extraterritorially on the basis that purported infringing activities, which occurred outside of the United States, affected U.S. commerce.
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February 03, 2022
Refusal By Trademark Board To Register ‘.SUCKS’ Affirmed On Appeal
WASHINGTON, D.C. — A trademark applicant on Feb. 2 failed to persuade the Federal Circuit U.S. Court of Appeals to undo a refusal by the Trademark Trial and Appeal Board to register ‘.SUCKS’ in stylized form.
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February 02, 2022
6th Circuit Upholds Fee Award On Pro Se Copyright, Trademark Claims
CINCINNATI — The Sixth Circuit U.S. Court of Appeals on Jan. 26 found no abuse of discretion in a Tennessee federal judge’s determination that several entities are entitled to an award of attorney fees incurred in their successful defense of allegations of copyright and trademark infringement.
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February 01, 2022
In ‘Big Piano’ Trademark Row, Pennsylvania Federal Judge Grants Dismissal
PHILADELPHIA — Sales on the Pennsylvania-based home shopping channel QVC Inc. of an alleged knockoff of the giant piano made famous in the movie “Big” are not sufficient to support the exercise of personal jurisdiction in a trademark and trade dress case, a Pennsylvania federal judge ruled Jan. 27.
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January 31, 2022
Editor’s Note
The journalists and staff of Mealey’s Litigation Reports are saddened by the passing of co-founder Michael P. Mealey. He was a respected member of the newsletter community, being named publisher of the year by the National Newsletter Association and president of the National Newsletter Association. Mike and Judy Mealey started Mealey Publications Inc. in 1984. As president, Mike grew the Mealey’s Litigation Report portfolio, introduced email news bulletins and electronic CD formats and launched a continuing legal education conference business. Mealey’s was sold to LexisNexis in 2000. We hope to carry on his journalistic curiosity and integrity in the titles we continue to publish today under his name.
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January 28, 2022
In Trademark Case, Panel Reverses Order Requiring Removal Of Sculptures
DENVER — Although a federal judge in Wyoming did not abuse his discretion in finding that a trademark infringement plaintiff would likely be irreparably injured without an injunction, he erred in ordering a defendant to remove two sculptures bearing a disputed logo, the 10th Circuit U.S. Court of Appeals ruled Jan. 27.
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January 27, 2022
2nd Circuit Upholds Injunction Barring Appellant From Using Own Name
NEW YORK — In a Jan. 25 decision, the Second Circuit U.S. Court of Appeals rejected a bridal designer’s claim that a contract limits a bridal company’s right to use her name — “Hayley Paige Gutman” — and its derivative “Hayley Paige” only in connection with bridal designs she “substantially participating in” designing “during her employment.”
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January 27, 2022
Dismissal Of Trademark Claims Over Meta Title Affirmed On Appeal
BOSTON — A federal judge in Massachusetts did not err in dismissing, on jurisdiction grounds, allegations of trademark infringement leveled in connection with the use of “corporate reimbursement services” in the meta title of a website for a company that provides employee expense reporting services, the First Circuit U.S. Court of Appeals ruled Jan. 18.
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January 26, 2022
Fee Request Denied In Longstanding ‘Sturgis’ Trademark Dispute
SIOUX FALLS, S.D. — A federal judge in South Dakota on Jan. 25 found that defendants who ultimately prevailed on allegations that they infringed a “Sturgis Bike Week” trademark are not entitled to reimbursement of their attorney fees because the plaintiff was successful at trial and on appeal, in part.
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January 25, 2022
Panel: Jurisdiction Lacking Over Stay Issued In Trademark Dispute
ST. LOUIS — The Eighth Circuit U.S. Court of Appeals on Jan. 7 refused to weigh in on the merits of a Missouri judge’s stay of federal trademark infringement allegations by a window franchisor because the stay is neither a final order nor an appealable collateral interlocutory order.
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January 21, 2022
Professor Backs Dismissal Of ASU Trademark Suit Over ‘Hoax-19’ Instagram Account
SAN FRANCISCO — Filing an amicus curiae brief on Jan. 18 supporting a trial court’s dismissal of Arizona State University’s (ASU’s) trademark infringement lawsuit against a John Doe who created an Instagram account that used the university’s trademarks, a law professor tells the Ninth Circuit U.S. Court of Appeals that the account’s use of the trademarks was “absurdist mockery,” not commercial, “and thus did not implicate the Lanham Act.
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January 20, 2022
Citing First-To-File Rule, New York Federal Judge Transfers Copyright Case
NEW YORK — A dispute over copyrighted designs for stencils and decals intended to help reduce sensory stimulation in children belongs in Mississippi federal court, a federal judge in New York ruled Jan. 12.