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Mealey's Trademarks

June 12, 2020
Diocese Tells 4th Circuit ‘The Episcopal Church’ Is A Generic Trademark

RICHMOND, Va. — A church diocese that split from the Episcopal Church (TEC) eight years ago asserts that the corresponding trademark for “The Episcopal Church” is generic and unprotectable, asking the Fourth Circuit U.S. Court of Appeals in an April 20 brief to reverse a trial court’s finding that it engaged in trademark infringement and dilution (The Episcopal Church, et al. v. Right Reverend Mark J. Lawrence, et al., Nos. 19-2112, 19-2163 and 20-1061, 4th Cir.).
June 08, 2020
Panel Reverses Fee Award In Longstanding Patent, Trademark Dispute

WASHINGTON, D.C. — In a June 8 holding, the Federal Circuit U.S. Court of Appeals rejected findings by a California federal judge that a trademark, trade dress and patent infringement lawsuit over a spill-proof cup was unreasonable (Munchkin Inc. v. Luv n’ Care Ltd. et al., No. 19-1454, Fed. Cir.).
June 08, 2020
Panel Grants Request For Sanctions In Dispute Over ‘Prevagen’ Mark

CHICAGO — The Seventh Circuit U.S. Court of Appeals on June 5 found that an appeal by an infringement defendant, deemed in default by an Illinois federal judge, was frivolous, entitling a trademark owner to an award of sanctions under Federal Rule of Appellate Procedure 38, Fed. R. App. P. 38 (Quincy Bioscience LLC v. Ellishbooks, No. 19‐1799, 7th Cir., 2020 U.S. App. LEXIS 17726).
June 08, 2020
In Arizona Domain Dispute, Italian Museum Wins $119K Fee Award

PHOENIX — A dispute over the www.uffizi.com domain name yielded an award of $119,460 in attorney fees and costs on June 3, when a federal judge in Arizona agreed that a declaratory judgment action qualifies as exceptional (BoxNic Anstalt v. Gallerie degli Uffizi, No. 18-1263, D. Ariz., 2020 U.S. Dist. LEXIS 98121).
June 05, 2020
2nd Circuit Remands Trademark Injunction For Modifications

NEW YORK — In a June 1 holding, the Second Circuit U.S. Court of Appeals found that although a federal judge in New York properly granted an injunction on behalf of a trademark infringement plaintiff, the scope of the injunction is overly broad, requiring remand (Really Good Stuff LLC v. BAP Investors L.C., et al., No. 19-3395, 2nd Cir., 2020 U.S. App. LEXIS 17233).
May 28, 2020
Trade Secret Claim Trimmed From Lawsuit Over Misused Mailing List

CAMDEN, N.J. — Although the holder of certain trademarks associated with his baseball training and tournament business has sufficiently alleged that his business’s mailing list is a trade secret pursuant to the New Jersey Trade Secrets Act (NJTSA), he has failed to properly show that he took the necessary steps to maintain the secrecy of the mailing list, a federal judge in New Jersey ruled May 27 (Joseph Barth v. Ajay Vulimiri, No. 19-20755, D. N.J., 2020 U.S. Dist. LEXIS 91206).
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 France.com 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 France.com (France.com 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 Booking.com 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 Booking.com 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. Booking.com 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).