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Mealey's Trademarks

  • May 23, 2019

    In Dispute Over Schlafly Intellectual Property, Panel Upholds Denial Of Relief

    ST. LOUIS — In a May 22 holding, the Eighth Circuit U.S. Court of Appeals dismissed an appeal of an order staying trademark litigation for lack of appellate jurisdiction and affirmed a Missouri federal judge’s denial of preliminary injunctive relief, in a dispute over the copyrights and trademarks associated with the conservative activist Phyllis Schlafly (Phyllis Schlafly Revocable Trust, et al. v. Anne Cori, et al., No. 17-2115, 8th Cir., 2019 U.S. App. LEXIS 15123).

  • May 22, 2019

    11th Circuit Upholds Infringement Finding But Vacates Damage Award

    ATLANTA — Although finding no error in a Georgia federal judge’s determination, following a bench trial, that a defendant infringed a plaintiff’s trademark, the 11th Circuit U.S. Court of Appeals on May 21 disagreed that the infringement was willful (PlayNation Play Systems Inc. v. Velex Corporation, No. 17-15226, 11th Cir., 2019 U.S. App. LEXIS 14956).

  • May 22, 2019

    Hard Rock Defeats Fee Request In Florida Trademark Case

    MIAMI — A federal magistrate judge in Florida on May 21 recommended that a defendant who was accused by Hard Rock Café International USA Inc. of trademark and trade dress infringement be denied its request for $438,390 in attorney fees (Hard Rock Café International USA, Inc. v. RockStar Hotels Inc., No. 17-62013, S.D. Fla., 2019 U.S. Dist. LEXIS 85437).

  • May 20, 2019

    9th Circuit Agrees: Trademark Infringement Claims Were Untimely

    SAN FRANCISCO — A California federal magistrate judge’s denial of post-trial motions for judgment as a matter of law and a permanent injunction was not erroneous, the Ninth Circuit U.S. Court of Appeals ruled May 17, because although a plaintiff’s trademark was willfully infringed, the plaintiff filed suit outside the relevant statute of limitations (A.C.T. 898 Products Inc. v. W.S. Industries Inc., No. 17-56046, 9th Cir., 2019 U.S. App. LEXIS 14689).

  • May 20, 2019

    Divided Supreme Court: Trademark Rights Survive Rejection

    WASHINGTON, D.C. — The U.S. Supreme Court on May 20 found that rejection by a debtor of an executory contract under Section 365 of the Bankruptcy Code, 11 U.S.C. § 365, has “the same effect as a breach outside bankruptcy” and that such a rejection cannot rescind trademark rights that were previously granted (Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, U.S. Sup.).

  • May 17, 2019

    New Mexico Panel Upholds Tax Assessment, Abated Penalty

    ALBUQUERQUE, N.M. — A New Mexico Taxation and Revenue Department decision that assessed a franchisor with an unpaid gross receipts tax of $344,672 was affirmed May 7 by the New Mexico Court of Appeals, which rejected claims by the taxpayer that it was acting as a disclosed agent for its franchisee (ATC Healthcare Services Inc. v. New Mexico Taxation and Revenue Department, No. A-1-CA-36081, N.M. App.).

  • May 15, 2019

    Dismissal Of Trademark Cancellation Petition Affirmed By Panel

    WASHINGTON, D.C. — Allegations that the “Sport Court” trademark as it relates to plastic, interlocking floor tiles is generic and unprotectable were properly rejected by the Trademark Trial and Appeal Board, the Federal Circuit U.S. Court of Appeals ruled May 13 (James Maksimuk v. Connor Sport Court International, No. 19-1156, Fed. Cir., 2019 U.S. App. LEXIS 14127).

  • May 13, 2019

    Federal Judge Partially Grants Franchisor’s Motion For Preliminary Injunction

    LOUISVILLE, Ky. — A Kentucky federal judge on May 9 held that a franchisor has justified a preliminary injunction on its Lanham Act claims, further finding that that franchisor has shown that a preliminary injunction is proper on its claim under the Defend Trade Secrets Act (DTSA) but limited the scope of that injunction compared to what the franchisor sought in its motion (JTH Tax, Inc., et al. v. Freedom Tax, Inc., et al., No. 19-00085, W.D. Ky., 2019 U.S. Dist. LEXIS 78532).

  • May 10, 2019

    Judge: 4 Claims Relate To Facebook Posts Occurring After Insurer Canceled Policy

    CENTRAL ISLIP, N.Y. — A New York federal judge on May 8 granted in part and denied in part an insurer’s motion for summary judgment in a coverage dispute arising from underlying claims that the insured used five people’s images as part of its promotions on social media without their consent or payment, finding that coverage is barred for the claims of all but one of the underlying plaintiffs (Bullseye Restaurant, Inc., et al. v. James River Insurance Company, No. 17-2996, E.D. N.Y., 2019 U.S. Dist. LEXIS 77701).

  • May 9, 2019

    ITC Findings Affirmed In ‘Swagway’ Hoverboard Trademark Case

    WASHINGTON, D.C. — The Federal Circuit U.S. Court of Appeals on May 9 affirmed the conclusion reached by the International Trade Commission (ITC) that the “Segway” trademarks are infringed by a competitor’s “Swagway”-branded hoverboards (Swagway LLC v. International Trade Commission, No. 18-1672, Fed. Cir.).

  • May 9, 2019

    Judge: Fact Questions Mostly Preclude Judgment In ‘IMI’ Cybersquatting Case

    SAN JOSE, Calif. — Finding that “numerous” questions of fact exist on whether an internet domain was registered in bad faith and whether a purportedly infringed trademark merits protection, a California federal judge on May 6 mostly denied the parties’ motions for summary judgment in a cybersquatting lawsuit (Jeffrey Dean Black v. Irving Materials Inc., No. 5:17-cv-06734, N.D. Calif., 2019 U.S. Dist. LEXIS 76418).

  • May 7, 2019

    Federal Judge: Insurer Has Duty To Defend Creamery Against Infringement Suit

    HARRISBURG, Pa. — A Pennsylvania federal judge on May 6 held that a commercial general liability insurer has a duty to defend Hershey Creamery Co. against an underlying lawsuit alleging that the ice cream manufacturer unlawfully copied a competitor’s self-serve milkshake machine and its related marketing designs, display and verbiage (Hershey Creamery Company v. Liberty Mutual Fire Insurance Co., et al., No. 18-694, M.D. Pa., 2019 U.S. Dist. LEXIS 75760).

  • May 3, 2019

    Federal Judge Enters Default Against Hoverboard Makers, Awards $2M In Damages

    LOS ANGELES — After holding that a product safety company adequately demonstrated the substantive merits of its claims for trademark infringement, violation of California’s unfair competition law (UCL) and other causes of action, a California federal judge on April 30 granted its request for a default judgment against entities and individuals it alleged used its marks on their hoverboard products and awarded it more than $2 million (UL, LLC v. Gangsong Group Corp., et al., No. 17-8166, C.D. Calif., 2019 U.S. Dist. LEXIS 72782).

  • May 3, 2019

    Supreme Court Won’t Review Dispute Over Religious Trademarks

    WASHINGTON, D.C. — In its April 29 orders list, the U.S. Supreme Court denied certiorari in a dispute over the genericness of the trademark “universal” when used in a religious context (The Universal Church Inc. v. Calvin Toellner, et al., No. 18-1159, U.S. Sup.).

  • May 1, 2019

    Booking.com Appeals Attorney Fees Award To Supreme Court In Trademark Suit

    WASHINGTON, D.C. — A travel booking website operator that prevailed in its appeal of a trademark registration denial by the U.S. Patent and Trademark Office (PTO) filed a petition for certiorari with the U.S. Supreme Court April 10, arguing that the Fourth Circuit U.S. Court of Appeals erred in assessing attorney fees against it in violation of the presumptions of the American Rule and the First Amendment to the U.S. Constitution (Booking.com B.V. v. Andrei Iancu, No. 18-1309, U.S. Sup.).

  • April 29, 2019

    Fees Partly Affirmed, Partly Vacated In Copyright, Trademark Row

    SAN FRANCISCO — Although vacating a California federal judge’s award of attorney fees incurred in connection with a successful defense of copyright infringement claims, the Ninth Circuit U.S. Court of Appeals on April 23 agreed that related allegations premised on “extraordinarily weak” trademarks qualify as exceptional (Amusement Art LLC v. Life is Beautiful LLC, et al., No. 17-55045, 9th Cir., 2019 U.S. App. LEXIS 11916).

  • April 29, 2019

    Judge: Insurer Has No Duty To Defend Bed And Breakfast Owner Against Infringement Suit

    HONOLULU — A Hawaii federal judge on April 24 granted a business liability insurer’s motion for summary judgment in its declaratory judgment lawsuit, finding that it has no duty to defend its bed and breakfast owner insured against an underlying infringement lawsuit brought by a competitor (State Farm Fire and Casualty Company v. Joan Prescott, No. 18-00127, D. Hawaii, 2019 U.S. Dist. LEXIS 69804).

  • April 29, 2019

    Franchisee’s Trademark Use After Termination Of Agreement Is Not Counterfeiting

    SANTA ANA, Calif. — A federal judge in California on April 25 entered default judgment in favor of two franchisors on their claims for trademark infringement, false designation of origin, breach of franchise agreement, breach of sublease and unfair competition, but found that they could not prevail on their claims for trademark counterfeiting based on the franchisee’s use of the trademark after the termination of the franchise agreement (Meineke Franchisor SPV LLC, et al. v. Sharif Atta, No. SACV-18-1205-JVS, C.D. Calif., 2019 U.S. Dist. LEXIS 70085).

  • April 26, 2019

    Panel: Disgorged Profits In Trademark Context Are Equitable In Nature

    ATLANTA — In what it deemed a case of first impression, the 11th Circuit U.S. Court of Appeals on April 23 found that there is no right to a jury trial under the Seventh Amendment, U.S. Const. amend. VII, where a trademark plaintiff seeks recovery of an infringement defendant’s profits in lieu of actual damages (Hard Candy LLC v. Anastasia Beverly Hills Inc., No. 18-10877, 11th Cir., 2019 U.S. App. LEXIS 11877).

  • April 26, 2019

    Costco Tells 2nd Circuit It Used ‘Tiffany’ Descriptively, Not As A Trademark

    NEW YORK — Appealing a trial court’s finding that it infringed the trademark of Tiffany and Co. by advertising certain rings as “Tiffany,” Costco Wholesale Corp. tells the Second Circuit U.S. Court of Appeals in an April 24 brief that it used the term in a generic, non-trademark manner to describe the rings (Tiffany and Company, et al. v. Costco Wholesale Corp., Nos. 17-2798, 19-338 and 19-404, 2nd Cir.).