Mealey's Trademarks

  • July 08, 2019

    Monster Energy Co. Appeals Denial Of Permanent Injunction, Dismissal Of UCL Claim

    LOS ANGELES — Monster Energy Co. on July 3 appealed a federal district court’s order that denied its motion seeking a permanent injunction under the Lanham Act and California’s Unfair Competition Law (UCL) against the producer and distributor of "Monster Mobile" automotive tools and other related goods and the court’s dismissal of its UCL claim for lack of standing (Monster Energy Company v. Integrated Supply Network, LLC, No. 17-548, C.D. Calif.).

  • July 03, 2019

    Insurer Has No Duty To Defend Against Trademark Infringement Claim, Panel Affirms

    BOSTON — The First Circuit U.S. Court of Appeals on July 2 affirmed a lower federal court’s ruling that a commercial general liability insurance policy’s intellectual property (IP) exclusion bars coverage for underlying trademark infringement claims against a dental product manufacturer insured (Sterngold Dental, LLC v. HDI Global Insurance Company, No. 18-2084, 1st Cir., 2019 U.S. App. LEXIS 19781).

  • July 03, 2019

    Apiarists Debate Infringement Of ‘Bee-Quick’ Trademark, Copyrights In 2nd Circuit

    NEW YORK — In a July 1 appellee brief in the Second Circuit U.S. Court of Appeals, a bee farm defends a trial court’s dismissal of trademark and copyright claims brought by a former licensor, contending that it did not remove copyright management information (CMI) from the plaintiff’s advertising materials (James H. Fischer v. Stephen T. Forrest Jr., et al., No. 18-2959, 2nd Cir.).

  • July 01, 2019

    In Kansas Federal Court, Judge Reconsiders Trade Dress Ruling

    KANSAS CITY, Kan. — A plaintiff persuaded a Kansas federal judge on June 27 to revisit and, ultimately, undo in part her April dismissal of federal and state trade dress infringement allegations levied by a bridalwear designer (Jenny Yoo Collection Inc. v. Essense of Australia Inc., No. 17-2666, D. Kan., 2019 U.S. Dist. LEXIS 108254).

  • June 28, 2019

    Trademark Infringement Coverage Suit Dismissed For Lack Of Personal Jurisdiction

    NEW YORK — Finding that insureds have not waived their right to defend on grounds of a lack of personal jurisdiction, a federal judge in New York on June 26 granted their motion to dismiss an insurer’s declaratory judgment suit challenging coverage for an underlying trademark infringement dispute (Hiscox Insurance Co., Inc. v. Curtis Bordenave, et al., No. 18-10222, S.D. N.Y., 2019 U.S. Dist. LEXIS 107012).

  • June 28, 2019

    Panel:  Jurisdiction To Confirm Award In Trademark Case Lacking

    ST. LOUIS — The Eighth Circuit U.S. Court of Appeals on June 27 instructed a Minnesota federal judge to dismiss a complaint seeking confirmation of an arbitrator’s award that required a Florida insurance company to cease use of the term “Federated” within 90 days (Federated Mutual Insurance Company v. FedNat Holding Company, No. 18-2430, 8th Cir., 2019 U.S. App. LEXIS 19216).

  • June 28, 2019

    Certiorari Granted In Dispute Over Preclusion, ‘Get Lucky’ Trademark

    WASHINGTON, D.C. — The question of whether a defendant accused of new offenses can be barred from raising defenses not actually litigated in a previous case involving the same plaintiff will be addressed by the U.S. Supreme Court, which on June 28 granted certiorari in a trademark dispute that stretches back to 2001 (Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., No. 18-1086, U.S. Sup.).

  • June 28, 2019

    Supreme Court To Decide Standard For Profit Awards In Trademark Cases

    WASHINGTON, D.C. — In its June 28 orders list, the U.S. Supreme Court granted certiorari in a long-running trademark case presenting an issue that has “sharply divided the courts of appeal,” according to a petitioner (Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233, U.S. Sup.).

  • June 24, 2019

    Ex-Franchisee Seeks Reconsideration After Tim Hortons Is Granted Injunction

    MIAMI — A former franchisee on June 18 moved for a Florida federal court to reconsider its order a day earlier granting a motion for preliminary injunction that bars it from using Tim Hortons trademarks or service marks and from representing the restaurants as authorized Tim Hortons restaurants (Tim Hortons USA, Inc., States, et al. v. Tims Milner LLC, et al., No. 18-cv-24152, S.D. Fla.; 2019 U.S. Dist. LEXIS 100978).

  • June 24, 2019

    Supreme Court Strikes Down Ban On Immoral, Scandalous Trademarks

    WASHINGTON, D.C. — Drawing heavily on its 2017 holding in Matal v. Tam that the Lanham Act ban on registering disparaging marks is unconstitutional, a divided U.S. Supreme Court on June 24 found that the statute’s related prohibition on registrations for “immoral or scandalous” trademarks also “collides” with the First Amendment to the U.S. Constitution (Andrei Iancu v. Erik Brunetti, No. 18-302, U.S. Sup.).

  • June 20, 2019

    In Texas, Trademark Defendants Win Summary Judgment

    AUSTIN, Texas — Allegations of trademark dilution and infringement were rejected on summary judgment on June 18, when a federal judge in Texas found that confusion between Austin-area restaurants “Picnik” and “Bento Picnic” is possible, but not probable (Picnik Holdings LLC v. Bento Picnic LLC, et al., No. 18-897, W.D. Texas, 2019 U.S. Dist. LEXIS 101439).

  • June 19, 2019

    7th Circuit Affirms Cancellation Of ‘Capsule’ Mark For Phone Cases

    CHICAGO — In a June 11 holding, a panel of the Seventh Circuit U.S. Court of Appeals affirmed a determination by a federal judge in Illinois that the “capsule” trademark for use in connection with cellular phone cases is invalid as descriptive (Uncommon LLC v. Spigen Inc., No. 18-1917, 7th Cir., 2019 U.S. App. LEXIS 17350).

  • June 17, 2019

    In French Press Trade Dress Row, 7th Circuit Upholds Verdict

    CHICAGO — The Seventh Circuit U.S. Court of Appeals on June 12 found no error in an Illinois federal judge’s decision to deny a trade dress infringement defendant judgment as a matter of law (JMOL) that a plaintiff failed to prove that its “Chambord” French press coffeemaker features a nonfunctional design (Bodum USA Inc. v. A Top New Casting Inc., No. 18-3020, 7th Cir., 2019 U.S. App. LEXIS 17555).

  • June 14, 2019

    Travel Site To High Court: PTO’s Fees Award In Trademark Appeal Was Improper

    WASHINGTON, D.C. — In a May 30 reply supporting its petition for certiorari over an attorney fees award granted to the U.S. Patent and Trademark Office (PTO) after a successful challenge of a trademark registration denial, Booking.com B.V. asks the U.S. Supreme Court to consolidate its case with a similar already granted petition over a fees award in a patent validity lawsuit (Booking.com B.V. v. Andrei Iancu, No. 18-1309, U.S. Sup.).

  • June 14, 2019

    Fastener Maker Seeks High Court Review Of Trademark Award Willfulness Standard

    WASHINGTON, D.C. — A fastener manufacturer in a June 4 reply brief asks the U.S. Supreme Court to grant its second petition for certiorari in a long-running trademark dispute, arguing that a deep split exists among the circuit courts over whether the finding of willfulness is a prerequisite to an award of profits after a finding of trademark infringement (Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233, U.S. Sup.).

  • June 12, 2019

    Discovery Sanctions Granted In Suit Over Hong Kong Photos’ Copyrights, Trademarks

    OAKLAND, Calif. — A California federal judge on June 7 granted a motion for discovery sanctions to the widow of a photographer embroiled in a lawsuit over her husband’s works’ intellectual property rights, with the judge mostly adopting a magistrate’s report and recommendation related to the defendants’ ongoing failure to comply with their discovery obligations (Rita C. Ho v. Mark Pinsukanjana, et al., No. 4:17-cv-06520, N.D. Calif., 2019 U.S. Dist. LEXIS 96274).

  • June 11, 2019

    Recommended Relief Largely Adopted In New York ‘Subway’ Franchise Row

    BROOKLYN, N.Y. — In a June 4 ruling, a New York federal judge endorsed a magistrate judge’s earlier recommendation that a former Subway franchisee should be barred from any further use of the “Subway” trademarks and a related, copyrighted mural (Doctor’s Associates LLC, et al. v. Abdul Hai, No. 19-1968, E.D. N.Y., 2019 U.S. Dist. LEXIS 95417).

  • June 10, 2019

    Search Engines Not Liable For Scam Locksmith Listings, D.C. Circuit Rules

    WASHINGTON, D.C. — Affirming a lower court’s dismissal of antitrust and Lanham Act claims brought by a coalition of locksmiths, a District of Columbia U.S. Court of Appeals panel on June 7 found that Google LLC, Microsoft Corp. and Yahoo Inc. were immune from liability under the Communications Decency Act (CDA) for the online publication on their respective search engines of listings for purported scam locksmith companies (Marshall’s Locksmith Service Inc., et al. v. Google LLC, et al., No. 18-7018, D.C. Cir., 2019 U.S. App. LEXIS 17123).

  • June 10, 2019

    9th Circuit Affirms Verdict Of Willful Trade Dress Infringement

    SAN FRANCISCO — In a June 7 unpublished decision, the Ninth Circuit U.S. Court of Appeals found no error in a Washington federal judge’s denial of a renewed motion for judgment as a matter of law (JMOL) of no willful trade dress infringement (National Products Inc. v. Arkon Resources Inc., Nos. 18-35220 and 18-35221, 9th Cir., 2019 U.S. App. LEXIS 17170).

  • June 07, 2019

    In Tennessee Trademark, Copyright Lawsuit, Dismissal Granted In Part

    NASHVILLE, Tenn. — In a June 5 decision, a federal judge in Tennessee found that failure by a trademark and copyright infringement plaintiff to establish that a foreign company is the parent company of a domestic co-defendant compels dismissal of the foreign company from the action (TailGate Beer LLC v. Boulevard Brewing Company, et al., No. 18-563, M.D. Tenn., 2019 U.S. Dist. LEXIS 94271).

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