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Mealey's Trademarks

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).
April 23, 2020
Willfulness Showing Not Required For Award Of Profits, Supreme Court Says

WASHINGTON, D.C. — In a ruling issued April 23, the U.S. Supreme Court vacated and remanded to the Federal Circuit U.S. Court of Appeals its March 2016 holding that a trademark owner is barred from seeking profits from a trademark infringer without first establishing willfulness (Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233, U.S. Sup.).
April 22, 2020
In California Federal Court, ‘Wool Runners’ Trademark Case Will Proceed

SAN FRANCISCO — Allegations that an Austrian company and its U.S. affiliate infringed the “Wool Runners” trademark won’t be dismissed, a federal judge in California ruled April 20 (Allbirds Inc. v. Giesswein Walkwaren AG, et al., No. 19-5638, N.D. Calif., 2020 U.S. Dist. LEXIS 69160).
April 21, 2020
Divided Panel Upholds Denied Request For $4.5M In Disgorged Profits

SAN FRANCISCO — In an April 20 holding, a dissenting judge sitting by designation in the Ninth Circuit U.S. Court of Appeals argued that an Arizona federal judge erred in denying a trademark owner’s request for $4.5 million in disgorged profits in connection with infringement of the “Stone Creek” trademark (Stone Creek Inc. v. Omnia Italian Design Inc., Nos. 18-15914 19-15167, 9th Cir., 2020 U.S. App. LEXIS 12535).
April 20, 2020
11th Circuit Affirms: Copyright, Lanham Act Claims Cannot Proceed

ATLANTA — A federal judge in Florida did not err in rejecting allegations that a guitar maker is liable for copyright infringement and unfair competition in connection with its use of a “lightning storm” graphic without the consent of an appellant, the 11th Circuit U.S. Court of Appeals ruled April 16 (Buddy Webster v. Dean Guitars, No. 19-10013, 11th Cir., 2020 U.S. App. LEXIS 12078).
April 16, 2020
Federal Circuit: Confusion Analysis By Trademark Board Not Erroneous

WASHINGTON, D.C. — In an April 14 ruling, the Federal Circuit U.S. Court of Appeals upheld a decision by the Trademark Trial and Appeal Board that denied a registration for “Stratus” on grounds of likely confusion with an existing “Strata” trademark (Stratus Networks Inc. v. UBTA-UBET Communications Inc., No. 19-1351, Fed. Cir., 2020 U.S. App. LEXIS 11701).
April 14, 2020
Fabric Supplier Answers Trademark Suit With UCL Counterclaims In Federal Court

LOS ANGELES — A fabric supplier on April 6 answered a wholesale upholstery company’s trademark infringement and unfair competition lawsuit and brought counterclaims for trademark infringement, unfair competition and false advertising under California law and common-law unfair competition two weeks after a California federal judge rejected its argument that the common-law claims for trademark infringement and unfair competition are legally duplicative of the other statutory claims (Pelm Products LLC v. Plaza Fabrics Inc., No. 2:19-cv-08017, C.D. Calif., 2020 U.S. Dist. LEXIS 50174).
April 13, 2020
In Franchise Row, Minnesota Federal Judge Enters 2-Year Injunction

MINNEAPOLIS — In an April 9 decision, a federal judge in Minnesota enjoined several former franchisees from using or displaying the “Mainstream Boutique” trademarks, copyrights and “Mac and Me” exclusive products for a period of two years or until further modification by the court (Mainstream Fashions Franchising Inc. v. All These Things LLC, et al., No. 19-2953, D. Minn., 2020 U.S. Dist. LEXIS 62673).
April 10, 2020
7th Circuit Affirms: Conveyor Belt Fastener Trade Dress Is Invalid

CHICAGO — An Illinois federal judge did not err in declaring invalid as functional a claimed trade dress consisting of a beveled concave curve of the leading edge of a conveyor belt fastener, the Seventh Circuit U.S. Court of Appeals ruled April 7 (Flexible Steel Lacing Co. v. Conveyor Accessories Inc., No. 19-2035, 7th Cir., 2020 U.S. App. LEXIS 10835).
April 07, 2020
No Disgorged Profits, Fees In Party Bus Trademark Case, Panel Affirms

ST. LOUIS — In an April 6 holding, a divided Eighth Circuit U.S. Court of Appeals agreed with a Minnesota federal judge that although a party bus company should be permanently enjoined from infringing two unregistered trademarks, it need not pay the trademark owner disgorged profits (Safeway Transit LLC, et al. v. Discount Party Bus Inc., et al., No. 18-2990, 8th Cir., 2020 U.S. App. LEXIS 10691).
April 06, 2020
Exclusions Bar Coverage For Contempt Proceeding Against Insured, 9th Circuit Affirms

SAN FRANCISCO — The Ninth Circuit U.S. Court of Appeals on April 1 affirmed a lower federal court’s ruling that coverage for an underlying contempt proceeding against an insured is barred by a general liability insurance policy’s intellectual property and unfair competition exclusions, rejecting the appellants’ argument that the exclusions violate public policy pursuant to California law (Great American E&S Insurance Company v. Theos Medical Systems, Inc., No. 19-15351, 9th Cir., 2020 U.S. App. LEXIS 10345).
April 03, 2020
Storm Shelter Firm Seeks Review Of Manufacturer-Distributor Trademark Standard

WASHINGTON, D.C. — In a March 16 reply brief supporting its petition for certiorari, a maker of storm shelters asks the U.S. Supreme Court to consider the application of a manufacturer-distributor test in its dispute over the ownership of the “LifeSaver Storm Shelters” trademark with a former dealer of its products (Southern Illinois Storm Shelters Inc., et al. v. 4SEMO.Com Inc., No. 19-990, U.S. Sup.).
April 02, 2020
Parties Debate Assignability Of Trademark Consent Decree In Supreme Court Briefs

WASHINGTON, D.C. — In an April 2 opposition brief, a water quality firm tells the U.S. Supreme Court that the Sixth Circuit U.S. Court of Appeals correctly found that it was the assignee of a 2003 consent judgment that pertained to trademarks and trade secrets at issue in the present suit, asking the high court to deny a petition for certiorari raising questions of assignability and enforcement of such consent decrees (M.W. Watermark LLC, et al. v. Evoqua Water Technologies LLC, No. 19-1079, U.S. Sup.).
April 02, 2020
In Trademark Case, Panel Undoes Injunction Barring Dog Toy Sales

SAN FRANCISCO — Although agreeing with an Arizona federal judge’s determination that the Jack Daniel’s trademark and related bottle design trade dress are valid, the Ninth Circuit U.S. Court of Appeals on March 31 reversed findings that the trademark and trade dress are infringed and diluted by a squeaking dog toy in the shape of a liquor bottle (VIP Products LLC v. Jack Daniel’s Properties Inc., No. 18-16012, 9th Cir., 2020 U.S. App. LEXIS 10037).
April 02, 2020
New Jersey Federal Judge Enters $11M Award In Trademark Case

TRENTON, N.J. — In an April 1 memorandum, a federal judge in New Jersey ordered a nonprofit organization to pay a fellow nonprofit more than $11 million in disgorged profits for trademark infringement (Kars 4 Kids Inc. v. America Can!, Nos. 14-7770, 16-4232, D. N.J., 2020 U.S. Dist. LEXIS 56857).
April 02, 2020
PTO Asks Supreme Court To Find ‘Generic.com’ Trademarks Unprotectable

WASHINGTON, D.C. — In a March 13 merits reply brief, the U.S. Patent and Trademark Office (PTO) tells the U.S. Supreme Court that longstanding case law teaches that the adding of a top-level domain (TLD), such as “.com,” to a generic term does not create a registrable, protectable trademark, asking the high court to reverse a Fourth Circuit U.S. Court of Appeals ruling to the contrary in favor of Booking.com B.V. (U.S. Patent and Trademark Office, et al. v. Booking.com B.V., No. 19-46, U.S. Sup.).
March 31, 2020
Dispute Between Miller, Craft Brewer To Proceed In California Court

SAN DIEGO — A federal judge in California on March 27 denied a motion for summary judgment by MillerCoors LLC, which stands accused of willfully infringing the “STONE®” trademark when “refreshing” the packaging for its sub-premium “Keystone” beer (Stone Brewing Company LLC v. MillerCoors LLC, No. 18-331, S.D. Calif., 2020 U.S. Dist. LEXIS 54864).