Mealey's Trademarks
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September 24, 2021
Copyright, False Advertising Counterclaims Dismissed By N.Y. Federal Judge
NEW YORK — A dispute over the digitization of various material relating to the artist Amodeo Modigliani will proceed without counterclaims of copyright infringement and false advertising, a federal judge in New York ruled Sept. 22.
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September 24, 2021
Federal Circuit Rejects Mandamus Bid, Clears Path For New Patent Trial
WASHINGTON, D.C. — In a Sept. 22 order, the Federal Circuit U.S. Court of Appeals denied a petition for mandamus by a patent owner seeking reversal of a Delaware federal judge’s decision to order a new trial on allegations of patent infringement.
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September 21, 2021
Request For Trademark Cancellation Does Not Preclude Infringement Case
PHILADELPHIA — In a Sept. 17 holding, the Third Circuit U.S. Court of Appeals reversed and remanded findings by a New Jersey federal judge that a plaintiff’s request for cancellation of “The Ebonys” trademark by the Trademark Trial and Appeal Board (TTAB) precludes a subsequent complaint for trademark infringement.
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September 20, 2021
Dismissal By Trademark Board Of Opposition To Registration Upheld
WASHINGTON, D.C. — An appellant’s challenge to a decision by the Trademark Trial and Appeal Board dismissing his opposition to registration of the “Coca-Cola Energy” trademark was unsuccessful Sept. 16, when the Federal Circuit U.S. Court of Appeals said the appeal lacks merit.
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September 16, 2021
Graffiti Artists Say Apparel Company Wrongly Used Mural In Ads
LOS ANGELES — Two artists on Sept. 14 filed a complaint in California federal court alleging that an apparel company violated federal trademark law and California’s unfair competition law (UCL) by using images of their graffiti mural in its advertisements.
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September 14, 2021
Judge Dismisses Businessman’s UCL, Trademark Claims Against Facebook
OAKLAND, Calif. — A federal magistrate judge on Sept. 10 dismissed with prejudice a businessman’s claims that Facebook Inc. violated California’s unfair competition law (UCL) and federal trademark laws by using his “Face” trademark, ruling that the businessman released all claims when he sold Facebook his trademark in 2008 and that his time-barred state law claims could not be tolled due to an alleged period of mental disability.
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September 14, 2021
In Longstanding Florida Trademark Row, Fee Amount Recommended
ORLANDO, Fla. — The Grammy Award-winning band The Commodores are entitled to an award of $602,618.67 in attorney fees and $4,560.56 in costs in connection with successful trademark litigation against a former member, a Florida federal magistrate judge said Sept. 9.
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September 09, 2021
Judge: Alleged Counterfeiters Liable For Juul’s Trademark, UCL Claims
LOS ANGELES — A California federal judge on Aug. 30 granted summary judgment in favor of Juul Labs Inc. (JLI) on its claims for violation of federal trademark statutes and California’s unfair competition law (UCL) against a Chinese national and his companies in relation to the sales of counterfeit Juul products but said material facts remain in dispute regarding damages.
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September 02, 2021
Panel Rejects Arthrex-Type Challenge To Composition Of Trademark Board
WASHINGTON, D.C. — In a Sept. 1 decision upholding cancellation by the Trademark Trial and Appeal Board (TTAB) of the “Schiedmayer” trademark, the Federal Circuit U.S. Court of Appeals found that “the statutory scheme governing” TTAB decision-making “is not subject to the” same constitutional defects identified and remedied by the U.S. Supreme Court in the patent case of United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021).
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September 01, 2021
Arizona Federal Judge Enjoins Use Of ‘AAA’ In Reverse Confusion Case
PHOENIX — In an order issued Aug. 30, a federal judge in Arizona declared a plaintiff likely to succeed on the merits of its allegation that a defendant’s use of “AAA” as a trademark will result in reverse confusion.
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September 01, 2021
N.Y. Federal Magistrate Judge: Dismiss Trademark Cancellation Request
BROOKLYN, N.Y. — In an Aug. 30 report and recommendation, a federal magistrate judge in New York said not only that an action seeking cancellation of the “LEFT CENTER RIGHT” trademark should be dismissed but also that the plaintiff in the case “should show cause why it should not be subject to an anti-suit injunction” and required to pay the trademark owner’s attorney fees.
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August 30, 2021
Adjustable Bed Company Asks High Court To Consider Initial Interest Confusion
WASHINGTON, D.C. — The Eighth Circuit U.S. Court of Appeals erred in belatedly adopting the “outdated” doctrine of presale initial interest confusion, a bed and mattress seller tells the U.S. Supreme Court in an Aug. 11 petition for certiorari, arguing that the doctrine and the appeals court’s ruling fail to take into account the realities of online shopping.
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August 30, 2021
Appellant: Jurisdiction Established By Single Sale From Interactive Website
ST. LOUIS — In an Aug. 12 reply brief in the Eighth Circuit U.S. Court of Appeals, a clothing retailer argues that a trial court erred in holding that a single online sale of an item that infringed its trademark did not confer Missouri jurisdiction over an out-of-state defendant in light of the website’s highly interactive nature.
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August 30, 2021
9th Circuit Reverses Dismissal Of Dispute Over Beauty Trademarks
SAN FRANCISCO — In an Aug. 27 holding, the Ninth Circuit U.S. Court of Appeals ruled in a trademark case that the exercise of nationwide jurisdiction over a nonresident defendant does not violate due process where the defendant’s contacts with the United States were extensive.
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August 30, 2021
3rd Circuit Affirms Franchisor’s Motion Seeking To Halt Use Of Trademarks
PHILADELPHIA — Two companies that purchased the right to franchise fitness studios failed to show that they are likely to succeed on claims that the fitness studio creator and her two companies breached their agreement or violated a noncompete clause when the creator failed to immediately begin operating her existing studios as franchises and instead began operating them under another name, the Third Circuit U.S. Court of Appeals held Aug. 10, affirming a district court’s denial of a motion for preliminary injunction.
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August 25, 2021
Divided Panel: Domain Names Are Confusingly Similar To Trademarks
ATLANTA — A panel majority of the 11th Circuit U.S. Court of Appeals on Aug. 6 upheld a Florida federal judge’s grant of summary judgment, agreeing that several accused domain names are confusingly similar to a trademark owned by a nationwide franchisor of hair removal services.
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August 25, 2021
10th Circuit Dismisses Appeal Of Trademark Injunction As Moot
DENVER — The 10th Circuit U.S. Court of Appeals on Aug. 5 dismissed an appeal by a Sonic franchisee and its affiliates of a preliminary injunction barring their use of the “Sonic” trademark, which was later converted by an Oklahoma federal judge to a permanent injunction.
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August 24, 2021
ASU’s Trademark Claims Over ‘Hoax-19’ Instagram Account Dismissed
PHOENIX — One year after Arizona State University (ASU) filed suit against a John Doe defendant who created an Instagram account that was critical of the university’s policies and practices related to COVID-19, an Arizona federal judge on Aug. 17 denied the university’s motion for default judgment and dismissed its trademark-related claims, finding that no reasonable consumer would have mistaken the account as being affiliated with the university.
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August 19, 2021
9th Circuit Upholds Disgorged Profits Award In Lanham Act Row
SAN FRANCISCO — Citing a defendant’s willful infringement of a competitor’s trademark, the Ninth Circuit U.S. Court of Appeals on Aug. 17 left intact a Washington federal judge’s award of disgorged profits in the case.
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August 16, 2021
Law Firm Obtains Default Judgment, Domain Transfer In Cybersquatting Suit
PHOENIX — A law firm prevailed in its efforts to regain control of an internet domain for which it had allowed the registration to lapse, when an Arizona federal judge granted its motion for a default judgment on Aug. 12, finding that the firm had sufficiently stated its claim under the Anti-Cybersquatting Consumer Protection Act and that the unidentified defendant had failed to defend against the claim or to respond to the suit at all.