Mealey's Trademarks : Mealey's : Legal News & Analysis

Mealey's Trademarks

March 17, 2023
Trademark Relief Modified, Reissued Following 2nd Circuit Order

NEW YORK — In accordance with a February directive from the Second Circuit U.S. Court of Appeals, a federal judge in New York has modified and reissued her July 2022 preliminary injunction.
March 13, 2023
Jack Daniel’s Tells High Court Lanham Act Applies To Trademark Use In Parodies

WASHINGTON, D.C. — In its March 10 merits reply brief in a trademark infringement and tarnishment dispute, Jack Daniel’s Properties Inc. asks the U.S. Supreme Court to find that the artistic expression test of Rogers v. Grimaldi conflicts with the Lanham Act’s purpose of “regulat[ing] confusing and misleading uses of trademarks,” thereby “enabling profiteers to misappropriate marks to create their own brands, regardless of serious consumer confusion or mistaken association with incompatible brands.”
March 10, 2023
Federal Circuit Affirms: ‘Oxipurity’ Mark Likely To Cause Confusion

WASHINGTON, D.C. — In a March 9 ruling, the Federal Circuit U.S. Court of Appeals said the Trademark Trial and Appeal Board did not err in upholding a refusal to register “Oxipurity” in connection with chemical products.
March 09, 2023
Domain Expert’s Opinion Excluded In Cybersquatting Dispute With Penn State

HARRISBURG, Pa. — A website domain expert proffered by a recreational vehicle (RV) company accused of trademark infringement and cybersquatting by Pennsylvania State University (Penn State) did not establish a reliable methodology for his opinion that the defendant’s GoPSUrv.com domain did not imply affiliation with the university, a Pennsylvania federal judge found, granting Penn State’s motion to exclude his opinion.
March 07, 2023
United States May Argue At Trademark Arguments, But MPA Will Not

WASHINGTON, D.C. — The U.S. Supreme Court on March 6 granted an unopposed request by the United States to participate in upcoming oral arguments over the free speech implications of parodying a trademark but denied a similar motion by the Motion Picture Association Inc. (MPA).
March 03, 2023
Panel Upholds Patent, False Advertising Rulings By Delaware Federal Judge

WASHINGTON, D.C. — A denial by a federal judge in Delaware of judgment as a matter of law (JMOL) that two patents directed to caller ID are infringed was affirmed by the Federal Circuit U.S. Court of Appeals, along with a grant of JMOL in favor of the defendant, which was also accused of false advertising.
March 03, 2023
Citing Patent Precedents, Virginia Federal Judge Rejects Trademark Manual Challenge

ALEXANDRIA, Va. — Efforts by an unsuccessful trademark applicant to seek judicial review were turned away by a Virginia federal judge, who agreed with the U.S. Patent and Trademark Office (PTO) that administrative remedies in the dispute have not been exhausted.
March 02, 2023
U.S. Company Appeals Cancellation Of Trademarks In Cuban Cigar Dispute

ALEXANDRIA, Va. — An American cigar company recently filed an appeal in Virginia federal court seeking the reversal and vacatur of a Trademark Trial and Appeal Board (TTAB) decision canceling its trademarks in favor of Cuba’s state-owned tobacco company, which the American company says is precluded from challenging the trademarks after it brought similar claims 26 years ago that were rejected.
March 01, 2023
California Federal Judge Won’t Enjoin Franchisees From Trademark Use

LOS ANGELES — A bid by a franchisor for an ex parte temporary restraining order (TRO) barring its former franchisees from using the “LeanFeast” trademark was denied by a federal judge in California, who said evidence of irreparable harm is lacking.
March 01, 2023
Trade Dress Claims Dismissed In Texas, With Leave To Amend

HOUSTON — A dispute over fitness equipment was partly dismissed with prejudice by a federal judge in Texas, who said allegations of unfair competition, conversion, tortious interference and unjust enrichment are preempted and cannot be repleaded.
February 28, 2023
Panel Affirms Dismissal Of Tortious Interference Suit Against Insurer’s Counsel

CHICAGO — The Seventh Circuit U.S. Court of Appeals on Feb. 27 affirmed a federal court’s dismissal of an insured’s tortious interference lawsuit against its insurer’s outside counsel, in-house counsel and supervisor, finding that the insured twice failed to overcome the attorneys’ conditional privilege from tortious interference lawsuits.
February 28, 2023
Jack Daniel’s Opposes MPA Arguing In High Court Trademark Parody Suit

WASHINGTON, D.C. — In a Feb. 27 opposition brief, Jack Daniel’s Properties Inc. asks the U.S. Supreme Court to deny a motion by the Motion Picture Association Inc. (MPA) to participate in oral argument on March 22, arguing that the association, which filed one of 24 amicus curiae briefs in the dispute over the application of trademark law to parodies, would not represent any argument not covered by the parties or the United States, which also seeks to participate in oral argument.
February 28, 2023
In Minnesota Trademark Case, Defendant Wins Preliminary Injunction

MINNEAPOLIS — An infringement counterclaimant was awarded a preliminary injunction on Feb. 27, with a Minnesota federal judge ordering declaratory judgment plaintiffs to cease using the words “server” and “lift” or “lifter” in immediate sequence on their websites.
February 28, 2023
U.S. Will Participate At Upcoming Arguments In Trademark Case

WASHINGTON, D.C. — In its Feb. 27 order list, the U.S. Supreme Court granted a request by the United States to participate in March 21 oral arguments in a dispute over the extraterritorial application of federal trademark law.
February 24, 2023
New York City, FDNY Enjoined From Using ‘MSOC’ Trademarks

BROOKLYN, N.Y. — A federal judge in New York on Feb. 23 granted a rescue paramedic’s request for a preliminary injunction barring New York City and Fire Department of New York (FDNY) from using the “MSOC” and “Medical Special Operations Conference” trademarks.
February 21, 2023
N.Y. Federal Magistrate Recommends $10M Award In Trademark, Contract Row

NEW YORK — A defaulting breach of contract and trademark infringement defendant should pay a health care company more than $10 million in connection with the parties’ dispute over cosmetic microneedle technology, a federal magistrate judge in New York recommended Feb. 17.
February 17, 2023
‘WallStreetBets’ Creator Sues Reddit For Suspending Him In Alleged Trademark Row

SAN FRANCISCO — An investor and entrepreneur sued online forum host Reddit Inc. and accused it of violating California’s unfair competition law (UCL) and other statutes by banning him from moderating a forum he created on its platform, “WallStreetBets,” and allegedly infringing his proposed trademark of the forum’s name.
February 15, 2023
Trademark Dispute Over LED Micro Lights To Proceed In Washington

SEATTLE — Citing the parties’ “starkly different views” on a likelihood of confusion, a federal judge in Washington on Feb. 14 denied a plaintiff’s bid for summary judgment on allegations of trademark infringement.
February 14, 2023
United States Asks To Argue In High Court Trademark Extraterritoriality Suit

WASHINGTON, D.C. — Citing a “substantial interest” in the outcome of a dispute over extraterritorial application of U.S. trademark laws, the United States filed a motion with the U.S. Supreme Court, seeking to participate in March 21 oral arguments and suggesting that the government’s views “would materially assist the Court in its consideration of this case.”
February 13, 2023
9th Circuit: Standing Lacking At Bench Trial Over Trademark Validity

SAN FRANCISCO — A federal judge in California wrongly proceeded to a bench trial on common-law trademark validity after granting a declaratory judgment plaintiff a summary judgment of noninfringement, the Ninth Circuit U.S. Court of Appeals held Feb. 10.
February 13, 2023
Disney To Supreme Court: ‘Lots Of Hugs’ Bear Trademark Suit Doesn’t Merit Certiorari

WASHINGTON, D.C. — A toy company’s 11-year-old lawsuit alleging infringement of its stuffed animals’ trademark by a movie character does not belong before the U.S. Supreme Court, Disney Enterprises Inc. says in a brief opposing certiorari, asserting that the Ninth Circuit U.S. Court of Appeals properly dismissed the lawsuit by applying Rogers v. Grimaldi.
February 10, 2023
$4M Intellectual Property Fee Not Triggered, 11th Circuit Affirms

ATLANTA — The 11th Circuit U.S. Court of Appeals upheld a Florida federal judge’s rejection of breach of contract claims by an appellant that argued that it was entitled to a $4 million payment when jointly developed intellectual property was included in a reverse triangular merger.
February 10, 2023
N.Y. Appeals Court Affirms Damages Award In Insurers’ Spat Over Insured’s Defense

NEW YORK — A New York appeals court on Feb. 9 affirmed a lower court’s $684,516.81 judgment in favor of an insurer in its breach of contract lawsuit seeking reimbursement from another insurer for the money it already spent providing their mutual insured a defense in an underlying Lanham Act lawsuit, finding that the defendant insurer “fails to articulate any persuasive basis to disturb” the lower court’s damages award.
February 09, 2023
NFTs Bearing Birkin Bags Images Deemed Infringing By New York Federal Jury

NEW YORK — A self-described marketing strategist and entrepreneur was found liable for trademark infringement and dilution by a New York federal jury on Feb. 8 for creating and selling digital “MetaBirkins” images that were linked to nonfungible tokens (NFTs), with the jury awarding $133,000 to Hermès International, manufacturer and owner of the Birkin line of luxury handbags.
February 06, 2023
Summary Judgment Motions Denied In Trademark Suit Over Birkin Bags NFTs

NEW YORK — A month after issuing an order denying cross-motions for summary judgment in a trademark infringement suit centering on nonfungible tokens (NFTs) bearing images of designer Birkin handbags, a New York federal judge issued an opinion on the eve of trial explaining that the motions were denied because genuine issues of dispute exist as to factors such as the artistic relevance of the images and free speech rights under the First Amendment to the U.S. Constitution.