Mealey's Trademarks

  • September 17, 2019

    Copyright, False Endorsement Claims Against E*Trade Tossed

    NEW YORK — In a Sept. 13 holding a federal judge in New York rejected allegations that E*Trade Financial Corp. infringed copyrighted elements of various videos produced and owned by an Italian entrepreneur (Gianluca Vacchi v. E*Trade Financial Corporation, No. 19-3505, S.D. N.Y., 2019 U.S. Dist. LEXIS 156972).

  • September 13, 2019

    Trade Dress Holdings Remanded With Instructions To Dismiss

    DENVER — In a Sept. 11 ruling, the 10th Circuit U.S. Court of Appeals found that a Colorado federal judge lacked jurisdiction over a declaratory judgment action seeking cancellation of trade dress covering the color pink for medical prostheses (C5 Medical Werks LLC v. CeramTec GMBH, No. 17-1173, 10th Cir., 2019 U.S. App. LEXIS 27361).

  • September 13, 2019

    Dungaree Maker Disputes Claim Preclusion Application In Supreme Court Brief

    WASHINGTON, D.C. — A defendant should not be precluded from raising defenses that were not litigated in a prior lawsuit between the same parties, an apparel company embroiled in a long-running trademark dispute argues in its Sept. 11 opening merits brief to the U.S. Supreme Court, calling a Second Circuit U.S. Court of Appeals “defense preclusion” rule inconsistent with the principles of claim and issue preclusion (Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., No. 18-1086, U.S. Sup.).

  • September 11, 2019

    EP Henry To Face Trademark Claims In New Jersey Federal Court

    TRENTON, N.J. — A dispute over the “ArmorTec” trademark will proceed in view of findings on Sept. 10 by a federal judge in New Jersey that adoption by EP Henry Corp. of the “ColorTech” trademark for a competing paving stone could cause consumer confusion (Cambridge Pavers Inc. v. EP Henry Corporation, No. 18-14187, D. N.J., 2019 U.S. Dist. LEXIS 153971).

  • September 10, 2019

    Trespass Claim, Not Barred By Trademark Case, But Dismissed In New York

    CENTRAL ISLIP, N.Y. — A lawsuit filed in 2017 by the City of New York that accuses a store of selling counterfeit products does not serve as a bar to new claims by the alleged counterfeiter of trespass and harassment, a New York federal judge ruled Sept. 9 (Salvatore Piccolo, et al. v. Gerald Singleton, No. 18-1324, E.D. N.Y., 2019 U.S. Dist. LEXIS 153283).

  • September 09, 2019

    9th Circuit Affirms Rejection Of Trademark Claims By Allstate

    SAN FRANCISCO — In a Sept. 6 per curiam holding, the Ninth Circuit U.S. Court of Appeals upheld a California federal judge’s determination that consumers are unlikely to be confused by Kia Motors America Inc.’s use of “Drive Wise” in connection with its in-car advance driver assistance system (ADAS) (Allstate Insurance Co. v. Kia Motors America Inc, et al., No. 18-55164, 9th Cir., 2019 U.S. App. LEXIS 26994).

  • September 09, 2019

    Judge Permanently Enjoins Nightclub Operator From Using AVENUE, AVE. Trademarks

    SANTA ANA, Calif. — A federal judge in California on Aug. 26 entered judgment in favor of a bar, restaurant and nightclub operator after finding that a competitor infringed on its federal trademark rights under the Lanham Act, as well as its rights under California Business and Professions Code Section 17200 et seq. (Avenue Hospitality Group, LLC v. Avenue Restaurant and Music Lounge, No. 19-00687, C.D. Calif., 2019 U.S. Dist. LEXIS 145841).

  • September 06, 2019

    False Advertising Claim Over Patented Technology Dismissed In Arizona

    PHOENIX — Allegations of false patent marking and false advertising in connection with nitric oxide (N-O) test strips were dismissed Sept. 4 by an Alaska federal judge, who found that a plaintiff lacks standing because the parties are not yet direct competitors in the N-O test strip market (ThermoLife International LLC v. NeoGenis Labs Inc., No. 18-2980, D. Ariz., 2019 U.S. Dist. LEXIS 150457).

  • September 05, 2019

    Summary Judgment Granted In Case Of Unintentional Infringement

    SEATTLE — A federal judge in Washington on Sept. 3 granted a trademark infringement defendant summary judgment upon finding that “the use of admittedly similar logos” by a bus manufacturer and a charter flight company “is nevertheless unlikely to result in any consumer confusion” (New Flyer Industries Canada ULC, et al. v. San Juan Airlines, No. 18-299, W.D. Wash., 2019 U.S. Dist. LEXIS 149689).

  • August 30, 2019

    Fraud On The PTO Requires More Than Negligence, Petitioner Tells Supreme Court

    WASHINGTON, D.C. — Contending that a split exists among the circuit courts of appeal as to what constitutes fraud on the U.S. Patent and Trademark Office (PTO), a trademark holder that lost a long-running infringement suit argues to the U.S. Supreme Court in an Aug. 21 reply brief supporting its petition for certiorari that a uniform standard for considering fraud should be adopted that requires more than a finding of mere negligence (B&B Hardware Inc. v. Hargis Industries Inc., et al., No. 19-48, U.S. Sup.).

  • August 30, 2019

    Kansas Federal Judge Dissolves TRO, Won’t Stop Use Of Trademark

    WICHITA, Kan. — In an Aug. 28 memorandum, a Kansas federal judge granted a defendant’s motion to dissolve a temporary restraining order (TRO) entered by a Kansas state court, which barred further use of the “GEO-SEAL” trademark (EPRO Services Inc. v. Regenesis Bioremediation Products, No. 19-1220, D. Kan., 2019 U.S. Dist. LEXIS 146053).

  • August 29, 2019

    10th Circuit Says Confusion Possible In Trademark Dispute

    DENVER — A Utah federal judge’s summary judgment of no likelihood confusion in a dispute over a fleur-de-lis logo used on vape products was reversed and remanded by the 10th Circuit U.S. Court of Appeals on Aug. 27 (Affliction Holdings LLC v. Utah Vap or Smoke LLC, No. 18-4146, 10th Cir., 2019 U.S. App. LEXIS 25760).

  • August 29, 2019

    Adding ‘.Com’ To Trademark Does Not Defeat Genericness, PTO Tells Supreme Court

    WASHINGTON, D.C. — In an Aug. 21 reply brief supporting its petition for certiorari, the U.S. Patent and Trademark Office (PTO) argues to the U.S. Supreme Court that adding a top-level domain (TLD) to an otherwise generic term does not serve to make that trademark nongeneric and registrable (U.S. Patent and Trademark Office, et al. v. Booking.com B.V., No. 19-46, U.S. Sup.).

  • August 26, 2019

    Settlement Reached In Tax Service Franchisor’s Trademark Lawsuit

    FORT LAUDERDALE, Fla. — A federal judge in Florida on July 25 administratively closed a trademark infringement lawsuit brought by a tax service franchisor based on a mediation report that indicated that the parties reached a settlement (JTH Tax, Inc., et al. v. Jesus Abikarram, et al., No. 19-60328, S.D. Fla.).

  • August 21, 2019

    In Colorado, New Test Articulated For Free Speech Trademark Defense

    DENVER — A federal judge in Colorado on Aug. 20 found that the Rogers v. Grimaldi test “needs adapting” in view of “legitimate considerations brought out in subsequent cases” in which an alleged infringer claims a First Amendment right to use a disputed trademark (Marty Stouffer, et al. v. National Geographic Partners LLC, et al., No. 18-3127, D. Colo., 2019 U.S. Dist. LEXIS 140947).

  • August 16, 2019

    Allstate, Kia Argue About Similarity Of ‘Drivewise,’ ‘Drive Wise’ Before 9th Circuit

    PASADENA, Calif. — The Ninth Circuit U.S. Court of Appeals heard oral arguments on Aug. 12 between Allstate Insurance Co. and Kia Motors America Inc., with the insurer appealing a trial court’s finding that Kia’s “Drive Wise” trademark for its in-car advance driver assistance system (ADAS) does not infringe Allstate’s similarly named “Drivewise” safety product (Allstate Insurance Co. v. Kia Motors America Inc, et al., No. 18-55164, 9th Cir.).

  • August 16, 2019

    Fastener Firm Urges Denial Of 2nd High Court Petition Over ‘Sealtight’ Mark

    WASHINGTON, D.C. — A trademark defendant that prevailed on infringement claims against it asks the U.S. Supreme Court in an Aug. 7 brief to deny the second petition for certiorari by the owner of the disputed “Sealtight” trademark, arguing that there is no split among the circuit courts on the standard for fraud on the U.S. Patent and Trademark Office (PTO), which defeated the petitioner’s claims (B&B Hardware Inc. v. Hargis Industries Inc., et al., No. 19-48, U.S. Sup.).

  • August 16, 2019

    Health Food Company’s Trademark Infringement Claim Is Plausible, Judge Says

    SAN DIEGO — A federal judge in California on Aug. 8 refused to dismiss a health food company’s trademark infringement complaint against its competitor, finding that the claims for federal trademark infringement, federal unfair competition and false designation of origin, violation of California unfair competition law (UCL) and common-law trademark infringement are plausible (Kip's Nut-Free Kitchen, LLC v. Kips Dehydrated Foods, LLC, et al., No. 19-00290, S.D. Calif., 2019 U.S. Dist. LEXIS 134654).

  • August 15, 2019

    Judge Rules On UCL Claim In Trademark Dispute Between 2 Energy Drink Companies

    SACRAMENTO, Calif. — A federal judge in California on Aug. 13 denied Monster Energy Co.’s motion for summary judgment as to its unfair competition claims for the same reasons it denied summary judgment on the Lanham Act claims in its trademark dispute with a competitor (Monster Energy Company v. Beastup LLC, No. 17-01605, E.D. Calif., 2019 U.S. Dist. LEXIS 136772).

  • August 14, 2019

    Twitch May Subpoena ISPs To Identify Anonymous Posters Of Offensive Content

    SAN FRANCISCO — In an Aug. 7 order, a California federal judge found that Twitch Interactive Inc. had shown good cause to conduct early discovery to identify anonymous defendants who posted objectionable content on its video-streaming platform by subpoenaing internet service providers (ISPs) and other companies to obtain information to identify the Doe defendants for the purpose of pursuing trademark infringement and other claims against them (Twitch Interactive Inc. v. John and Jane Does 1 through 100, No. 3:19-cv-03418, N.D. Calif., 2019 U.S. Dist. LEXIS 132842).