Mealey's Trademarks

  • December 7, 2017

    Indiana Magistrate Judge Denies Wal-Mart Request To Transfer Trademark Case

    SOUTH BEND, Ind. — Efforts by Wal-Mart.com USA LLC and a co-defendant to move allegations of trademark infringement to the U.S. District Court for the Northern District of California were unsuccessful Dec. 6, when an Indiana federal magistrate judge found that “the only factor that narrowly favors transfer is convenience of the third-party Chinese witnesses” (Dwyer Instruments Inc. v. Wal-Mart.com USA LLC, et al., No. 17-636, N.D. Ind., 2017 U.S. Dist. LEXIS 200566).

  • December 6, 2017

    Trademark Dispute Over Literacy Program Survives Dismissal Request In Texas

    DALLAS — Efforts by a defendant to obtain dismissal of trademark infringement allegations stemming from the use of — among other things — a million-dollar bill bookmark in connection with a literacy program were unsuccessful on Dec. 5, when a Texas federal judge denied the request (Springboards to Education v. Demco Inc., et al., No. 16-2398, N.D. Texas).

  • December 5, 2017

    Florida Federal Judge: Trademark Not Promoted In Unsolicited Facsimiles

    WEST PALM BEACH, Fla. — Citing a lack of personal jurisdiction over two defendants accused of violating the Telephone Consumer Protection Act (TCPA), a Florida federal judge on Dec. 1 reversed course, vacating his earlier finding that unsolicited facsimile (fax) advertisements bearing the “Ulesfia” trademark were sent on behalf of the mark owner (S.A.S.B. Corporation, et al., v. Concordia Pharmaceuticals Inc., et al., No. 16-14108, S.D. Fla., 2017 U.S. Dist. LEXIS 199021).

  • December 1, 2017

    Fastener Maker Tells 8th Circuit Fraud, Mark Lapse Defeat Infringement Claims

    ST. LOUIS — In a Nov. 20 appellee brief, the defendant in a long-running dispute over the “Sealtight” and “Sealtite” trademarks asks the Eighth Circuit U.S. Court of Appeals to affirm a trial court’s judgment in its favor, citing its opponent’s fraud on the U.S. Patent and Trademark Office (PTO), as well as a lapse in the plaintiff’s registration for its purportedly incontestable trademark (B&B Hardware Inc. v. Hargis Industries Inc., No. 17-1570 and 17-1755, 8th Cir.).

  • December 1, 2017

    Furniture Maker Seeks High Court Review Of Tea Rose- Rectanus Doctrine Ruling

    WASHINGTON, D.C. — A Ninth Circuit U.S. Court of Appeals ruling deepened a circuit split on the interpretation of good faith adoption of a regional, common-law trademark under the Tea Rose-Rectanus doctrine, a furniture manufacturer argues in a Nov. 13 petition for certiorari, asking the U.S. Supreme Court to provide guidance on the matter (Omnia Italian Design Inc. v. Stone Creek Inc., No. 17-731, U.S. Sup.).

  • November 30, 2017

    California Magistrate Judge Dismisses Trademark Claim, Trade Libel Claim Survives

    SAN FRANCISCO — A dispute between two beauty product suppliers will proceed in California federal court but without a claim for trademark infringement against an individual defendant, a federal magistrate judge ruled Nov. 27 (BioZone Laboratories Inc. v. Next Step Laboratories Corporation and Richard Rigg, No. 17-2768, N.D. Calif., 2017 U.S. Dist. LEXIS 194454).

  • November 30, 2017

    Abandonment Of Mark Not Proven, Washington Federal Judge Rules

    SEATTLE — Although denying a trademark infringement plaintiff summary judgment, a Washington federal judge on Nov. 29 rejected assertions by defendants in the case that they “strictly proved” trademark abandonment (Kische USA LLC v. Ali Simsek, et al., No. 16-168, W.D. Wash., 2017 U.S. Dist. LEXIS 196191).

  • November 29, 2017

    Federal Circuit Affirms Denial Of Registrations For ‘Magnesita’ Trademarks

    WASHINGTON, D.C. — A decision by the Trademark Trial and Appeal Board to deny two trademark registration applications for “Magnesita” on grounds that the marks are generic for refractory products was not erroneous, the Federal Circuit U.S. Court of Appeals concluded Nov. 27 (In re:  Magnesita Refractories Company, No. 16-2345, Fed. Cir., 2017 U.S. App. LEXIS 23845).

  • November 21, 2017

    Copyright, Trademark Claims Survive Dismissal Request In Illinois Court

    CHICAGO — Efforts by two defendants to obtain dismissal of allegations they committed copyright and trademark infringement by copying and exhibiting photographs by the late Vivian Maier were unsuccessful on Nov. 20, when an Illinois federal judge deemed claims by a public administrator appointed to Maier’s estate upon her death in 2009 adequately pleaded (The Estate of Vivian Maier v. Jeffrey Goldstein, et al., No. 17-2951, N.D. Ill., 2017 U.S. Dist. LEXIS 191294).

  • November 20, 2017

    9th Circuit Affirms: Use Of ‘Empire’ Mark Protected By 1st Amendment

    SAN FRANCISCO — Two broadcasters were properly granted a summary judgment that their use of the name “Empire” is protected under the First Amendment to the U.S. Constitution, the Ninth Circuit U.S. Court of Appeals ruled Nov. 16 (Twentieth Century Fox Television, et al. v. Empire Distribution Inc., No. 16-55577, 9th Cir.).

  • November 17, 2017

    Distinctiveness, Infringement Of ‘Sturgis’ Trademarks Argued In 8th Circuit

    ST. LOUIS — A South Dakota organization affiliated with the Sturgis Motorcycle Rally tells the Eighth Circuit U.S. Court of Appeals in a Nov. 6 brief that a jury correctly found its “Sturgis” trademarks to be valid and infringed by the sale of unlicensed Sturgis items.  However, the plaintiff appeals a post-verdict ruling that vacated a damages award for the infringement (Sturgis Motorcycle Rally Inc. v. Rushmore Photo & Gifts Inc., et al., Nos. 17-1762, -1869, -2712 and -2731, 8th Cir.).

  • November 16, 2017

    Refusal To Register ‘Sensi’ Trademark Upheld By Federal Circuit

    WASHINGTON, D.C. — Findings by the Trademark Trial and Appeal Board that the “Sensi” trademark in Class 5 of the Trademark Classifications for Goods and Services for diapers would likely cause confusion with two previously registered marks for “Sensi-Care” for use in connection with a treatment for diaper rash were not erroneous, the Federal Circuit U.S. Court of Appeals ruled Nov. 13 (In re: P.T. Arista Latindo, No. 17-1292, Fed. Cir., 2017 U.S. App. LEXIS 22637).

  • November 15, 2017

    Jack In The Box Says Terminated Agreement Ended Franchisee’s Trademark Rights

    SAN FRANCISCO — In a Nov. 6 brief, Jack in the Box Inc. asks the Ninth Circuit U.S. Court of Appeals to affirm a trial court’s finding that a former franchisee engaged in infringement by continuing to use the “Jack in the Box” trademarks after its franchise agreement was terminated for contractual breaches (Jack in the Box Inc. v. Deepak Mehta, et al., No. 17-15336, 9th Cir.).

  • November 10, 2017

    75 Website Operators Enjoined From Offering Counterfeit Gucci Items

    FORT LAUDERDALE, Fla. — A Florida federal judge on Nov. 8 granted Gucci America Inc.’s motion for  a preliminary injunction against 75 website operators that the plaintiff said were selling counterfeit goods bearing the “Gucci” mark, finding Gucci “very likely” to succeed in its trademark infringement claims (Gucci America Inc. v. 532buy.com, et al., No.0:17-cv-62068, S.D. Fla.).

  • November 9, 2017

    2nd Circuit Affirms Rejection Of DMCA Claim, Denial Of Attorney Fees

    NEW YORK — A New York federal judge did not err in rejecting allegations that a licensee violated the Digital Millennium Copyright Act (DMCA), 17 U.S.C. § 1201(a), when it modified security measures to prevent two software programs from self-enforcing certain licensing restrictions because the plaintiffs failed to demonstrate the copyrightability of the underlying programs, the Second Circuit U.S. Court of Appeals ruled Nov. 8 (Dynamic Concepts Inc. and Point 4 Data Corp. v. Tri-State Surgical Supply, et al., Nos. 15-0563, -3212, 2nd Cir., 2017 U.S. App. LEXIS 22348).

  • November 9, 2017

    Federal Circuit: Fees Due On Trade Dress Claims, Not Copyright, Patent Claims

    WASHINGTON, D.C. — A Texas federal judge’s denial of a motion to dismiss a declaratory judgment action relating to patent, copyright and trade dress protection for fiberglass utility bodies for use with trucks was affirmed Nov. 7 by the Federal Circuit U.S. Court of Appeals, which agreed that an actual case or controversy existed between the parties (Industrial Models Inc. v. SNF Inc., et al., Nos 17-1172, -1173, Fed. Cir.).

  • November 9, 2017

    Judge Clarifies Fact, Opinion Work Product In Patent Antitrust Suit

    SAN JOSE, Calif. — Responding to discovery disputes by the parties in a lawsuit alleging monopolization and false advertising of patents for specialty medical software, a California federal judge on Nov. 6 clarified a previous order compelling production, differentiating between fact and opinion work product in the context of waiver of privilege (Cave Consulting Group Inc. v. OptumInsight Inc., No. 3:15-cv-03424, N.D. Calif, 2017 U.S. Dist. LEXIS 183672).

  • November 6, 2017

    2nd Circuit Affirms: Claimed Trade Dress Is Functional, Unprotectable

    NEW YORK — A New York federal judge did not err in determining, following a bench trial, that a declaratory judgment plaintiff’s bag closure products do not infringe or dilute a competitor’s trade dress, the Second Circuit U.S. Court of Appeals concluded Nov. 2 (Schutte Bagclosures Inc. and Schutte Bagclosures B.V. v. Kiwk Lok Corporation, No. 16-2767, 2nd Cir., 2017 U.S. App. LEXIS 21864).

  • November 3, 2017

    Clothing, Cosmetics Firms Debate Laches In 9th Circuit ‘Lush’ Trademark Suit

    SAN FRANCISCO — Two companies claiming ownership of the “Lush” trademark debate in briefs to the Ninth Circuit U.S. Court of Appeals whether a cosmetics firm’s infringement claim was barred under the doctrine of laches and whether it was filed within the statute of limitations (Pinkette Clothing Inc. v. Cosmetic Warriors Limited, No. 17-55325, 9th Cir.).

  • November 3, 2017

    Wal-Mart, Variety Stores Argue Over Disgorgement In ‘Backyard’ Mark Suit

    RICHMOND, Va. — Retailers Variety Stores Inc. and Wal-Mart Stores Inc. recently briefed the Fourth Circuit U.S. Court of Appeals on whether Wal-Mart infringed Variety’s “The Backyard” trademark and whether the amount of disgorged profits was properly limited to $32 million (Variety Stores Inc. v. Wal-Mart Stores Inc., No. 17-1503 and 17-1644, 4th Cir.).