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

Mealey's Trademarks

February 03, 2023
PTO Director Asks High Court To Rule On Whether Famous Names Can Be Trademarked

WASHINGTON, D.C. — Arguing that the Lanham Act bars the registration of celebrities’ and politicians’ names as trademarks, the director of the U.S. Patent and Trademark Office (PTO) filed a petition for certiorari asking the U.S. Supreme Court to provide guidance on whether the denial of such registrations violates the First Amendment to the U.S. Constitution.
February 02, 2023
Bid By Patent, Trademark Plaintiff For Voluntary Dismissal Denied In Tenn.

KNOXVILLE, Tenn. — A defendant accused of patent and trademark infringement successfully opposed a plaintiff’s motion to dismiss its claims without prejudice on Feb. 1, when a Tennessee federal judge agreed that the plaintiff’s purported covenant not to sue is not “unconditional.”
February 01, 2023
Panel: False Advertising Claim Over Christmas Trees Properly Dismissed

NEW YORK — Allegations that Whole Foods Market Inc. falsely advertised balsam fir Christmas trees as Fraser firs fail where a plaintiff is unable to identify any false labels affixed to the trees in question, the Second Circuit U.S. Court of Appeals ruled.
January 30, 2023
In New Jersey Copyright, Trademark Litigation, Defendant Prevails In Part

TRENTON, N.J. — Allegations of copyright infringement leveled in connection with a book that teaches piano to beginners will not proceed, a federal judge in New Jersey ruled, because the accused books do not qualify as derivative works.
January 27, 2023
4th Circuit Upholds Bad Faith Finding In ‘Pru.com’ Domain Dispute

RICHMOND, Va. — A federal judge in Virginia did not err in finding a Chinese internet financial information firm’s $100,000 purchase of pru.com was in bad faith, the Fourth Circuit U.S. Court of Appeals has affirmed.
January 26, 2023
Delaware Federal Judge: Confusion Theory In Trademark Case ‘Plausible’

WILMINGTON, Del. — Allegations of trademark infringement by the owner of “Javo” for coffee concentrates, brews and extracts against the distributor of “Javy”-branded coffee and coffee-related goods will proceed, a federal judge in Delaware ruled Jan. 25.
January 25, 2023
Trademark Injunction Granted To H&R Block Vacated By 8th Circuit

ST. LOUIS — A federal judge in Missouri wrongly found that ordinary consumers would likely be confused by a rebrand of Square Inc. to Block Inc., justifying a preliminary injunction in favor of H&R Block Inc., a divided Eighth Circuit U.S. Court of Appeals panel ruled Jan. 24.
January 24, 2023
Dispute Between Insurance, Shell Companies Over ‘Foremost’ Trademark Reinstated

ATLANTA — A federal judge in Florida’s likelihood-of-confusion analysis in a dispute over the “Foremost” trademark between a multibillion-dollar insurance company and a law firm’s shell company was erroneous, the 11th Circuit U.S. Court of Appeals ruled in reversing a summary judgment ruling and remanding.
January 24, 2023
Indiana Federal Judge Sends Patent, Trademark Case To Washington

INDIANAPOLIS — A patent and trademark dispute between two leaders in the sports apparel and footwear industry will proceed in Washington federal court, where defendant Brooks Sports Inc. is headquartered, a federal judge in Indiana has ruled.
January 20, 2023
Panel Partly Reverses Ruling In Coverage Suit Over Trademark Infringement Claims

ST. LOUIS — The Eighth Circuit U.S. Court of Appeals on Jan. 19 reversed a lower federal court’s grant of summary judgment in favor of an insurer on the issue of whether it was required to reimburse its insured for pre-notice fees in an underlying lawsuit filed in Oregon, affirming the remainder of the court’s summary judgment ruling in favor of the insurer in a coverage dispute arising from underlying trademark infringement claims.
January 20, 2023
Nike Asks 3rd Circuit To Reverse Infringement Ruling Over ‘Cool Compression’ Mark

PHILADELPHIA — An apparel maker’s brief on purported infringement of the “Cool Compression” trademark was “long on emotional rhetoric and short on substantial evidence” to support a jury’s verdict on liability, Nike Inc. tells the Third Circuit U.S. Court of Appeals in a reply brief maintaining that it used the mark descriptively and in good faith.
January 19, 2023
United States, Nike, Campbell Soup Back Jack Daniel’s In High Court Trademark Row

WASHINGTON, D.C. — One week after Jack Daniel’s Properties Inc. filed its opening merits brief asking the U.S. Supreme Court to reverse the Ninth Circuit U.S. Court of Appeals’ “egregiously wrong” finding that the use of its trademarks and trade dress in a parody is protected under the First Amendment to the U.S. Constitution, 13 amicus curiae briefs were filed in support of the whiskey maker on Jan. 18, by parties including the United States, the Motion Picture Association Inc. (MPA), Nike Inc. and Campbell Soup Co.
January 19, 2023
Illinois Federal Judge Dismisses Copyright Claims By Extortionist

CHICAGO — Allegations that myriad media outlets violated the Copyright Act when publishing photographs of a former actor posing alongside celebrities in news articles detailing his arrest for extortion were dismissed Jan. 18 by a federal judge in Illinois.
January 13, 2023
Unfair Competition Claims Over Drinking Vessel Preempted By Patent Law

PHILADELPHIA — A Pennsylvania federal judge granted partial summary judgment on allegations of common-law unfair competition leveled by the maker of the “Beer Bat” over a defendant’s decision to name a competing baseball bat-shaped drinking vessel the “Beverage Bat.”
January 13, 2023
New York Federal Jury Rejects Adidas Trademark Claims Against Fashion Designer

NEW YORK — A jury empaneled in the U.S. District Court for the Southern District of New York on Jan. 12 sided with Thom Browne Inc. on allegations that the fashion designer infringed the three-stripe trademark belonging to adidas America Inc.
January 10, 2023
Trademark Damages Trial Won’t Be Bifurcated From Patent Trial In Delaware

WILMINGTON, Del. — In a Jan. 9 order, a federal judge in Delaware rejected a defendant’s request for a separate trial on damages for its admitted trademark infringement, concluding that the issue can be decided alongside the question of whether the defendant also infringed two patents.
January 09, 2023
In ‘Sleep Number’ Trademark Case, Plaintiff Request For Bench Trial Is Denied

MINNEAPOLIS — A plaintiff’s assertion that it will seek only equitable remedies in connection with a defendant’s alleged trademark infringement was rejected by a Minnesota federal judge, who found that the “purported disgorgement damages” being sought “do not strictly seek disgorgement of Defendants’ profits.”
January 03, 2023
Copyright, Trademark Claims Over Fudge Recipe Tossed In Pennsylvania

PITTSBURGH — A federal magistrate judge in Pennsylvania ruled that although copyright and trademark infringement allegations by a fudge maker against his former wife fail, genuine issues of material fact preclude summary judgment on the question of whether reasonable measures were taken to protect a disputed fudge recipe.
January 03, 2023
United States, EU, Amici Brief High Court On Lanham Act’s Extraterritoriality

WASHINGTON, D.C. — A U.S. Supreme Court case concerning the extraterritorial application of the Lanham Act in trademark infringement cases has sparked the filing of 11 amicus curiae briefs so far, with three supporting the foreign-based petitioners and eight in support of neither party, including briefs from the United States and the European Union (EU).
January 03, 2023
In Michigan Federal Trademark Row, Judge Allows Gibson Counterclaims

GRAND RAPIDS, Mich. — An answer by Gibson Brands Inc. that added counterclaims of trade secret misappropriation is permissible, a federal judge in Michigan ruled, because an amended complaint in the parties’ dispute over guitar designs added allegations of state and federal antitrust law.
December 28, 2022
Common-Law Trademark Claim By Powerboat Maker Survives Motion To Dismiss

MONTGOMERY, Ala. — A federal judge in Alabama has concluded that a counterclaimant’s allegations of common-law trademark infringement and dilution will proceed in view of the counterclaimant’s demonstration that its “K2”-related mark is “plausibly famous.”
December 28, 2022
Federal Circuit Weighs In On Wallet Patent, Trade Dress Dispute

WASHINGTON, D.C. — Although affirming dismissal of infringement allegations as they relate to one patent covering a men’s wallet and upholding a determination of trade dress invalidity, the Federal Circuit U.S. Court of Appeals said another patent asserted in the case was wrongly declared anticipated on summary judgment.
December 19, 2022
Relief Entered In Part In New York Patent, Unfair Competition Case

BROOKLYN, N.Y. — A plaintiff seeking a declaration that it does not infringe a patented towel warmer won a preliminary injunction, in part, on Dec. 18 from a New York federal judge, who said a patent owner’s refusal to retract a complaint to Amazon.com could result in irreparable harm.
December 19, 2022
Laches Defense Remains, But Others Stricken In ‘Three Stripe’ Trademark Row

NEW YORK — A federal judge in New York on Dec. 16 filed an opinion explaining in full his Dec. 2 order denying adidas America Inc. and luxury apparel designer Thom Browne Inc. summary judgment on Thom Browne’s assertion that laches bars adidas’ trademark infringement claim over the “Three Stripe Mark.”
December 16, 2022
Texas Federal Judge Transfers Intellectual Property Row Sua Sponte

AUSTIN, Texas — Allegations of patent, copyright and trademark infringement leveled against more than 600 defendants over the sale of alleged counterfeit animal brushes belong in California, a Texas federal judge ruled sua sponte on Dec. 15.