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

Mealey's Trademarks

April 17, 2023
Board Denial Of ‘Spark Living’ Trademark Registration Affirmed

WASHINGTON, D.C. — The Federal Circuit U.S. Court of Appeals found no error in a determination by the U.S. Patent and Trademark Office (USPTO)’s Trademark Trial and Appeal Board that a proposed “Spark Living” trademark for residential real estate services would cause confusion with an existing registration for “Spark.”
April 12, 2023
Copyright, Trade Secret, Lanham Act Case Against TikTok To Remain In Texas

WACO, Texas — Efforts by TikTok Inc. and others to transfer copyright infringement, trade secret and false advertising claims leveled against them to California federal court failed April 11, when a Texas federal magistrate judge said the defendants failed to show that a different venue would clearly be more convenient.
April 12, 2023
Panel Reverses Finding That Trademarks Are Functional, Utilitarian

SAN FRANCISCO — A federal judge in California erred in finding that various color-coded dental retention inserts have utilitarian functionality without also asking whether other colors could serve to differentiate the inserts’ retention strengths “equally well,” the Ninth Circuit U.S. Court of Appeals has ruled.
April 04, 2023
Federal Circuit: Trademark Board Erred In Dismissing Opposition To ‘Apple Music’

WASHINGTON, D.C. — In an April 4 holding it deemed a case of first impression, the Federal Circuit U.S. Court of Appeals said the Trademark Trial and Appeal Board wrongly dismissed opposition by the longtime user of “Apple Jazz” to an application by Apple Inc. to trademark “Apple Music.”
April 04, 2023
Copyright, Trademark UCL Claims Over ‘Tangle’ Toy Dismissed In California

SAN FRANCISCO — A federal judge in California on April 3 granted a defendant’s motion to dismiss on personal jurisdiction grounds allegations that it infringed the “Tangle” trademark when selling a similar, competing “Twist & Tangle” toy.
March 30, 2023
In ‘Restaurantware’ Mark Row, Keyword Advertising- Related Claim Tossed

CHICAGO — A federal judge in Illinois on March 29 granted a defendant partial summary judgment that its actions relating to keyword advertising cannot be used as a basis by a trademark owner to assert infringement at trial.
March 28, 2023
‘Socios’ Trademark Usage By Fan Engagement Company Enjoined In United States

SAN FRANCISCO — A trademark dispute between competing providers of professional soccer “fan engagement” programs will proceed with a preliminary injunction in place, a California federal judge ruled March 27.
March 28, 2023
High Court Won’t Review Trademark Case Involving Role Of Licensors

WASHINGTON, D.C. — In its March 27 orders list, the U.S. Supreme Court denied a petition for writ of certiorari that posed the question of whether a trademark licensor is a necessary defendant in a trademark infringement suit against licensees.
March 27, 2023
Counterclaim Seeking Cancellation Of Trademark Application Denied In Florida

ORLANDO, Fla. — A federal judge in Florida on March 24 dismissed as procedurally improper a first amended counterclaim for antitrust violations in a dispute over the “Worlds” trademark as used in connection with cheerleading competitions.
March 22, 2023
Dog Toy Maker, Distillery Square Off At High Court In Trademark Parody Row

WASHINGTON, D.C. — An attorney for Jack Daniel’s Properties Inc. today urged the U.S. Supreme Court to remand to the Ninth Circuit U.S. Court of Appeals an infringement dispute over a chewable dog toy resembling a bottle of Old No. 7 Black Label Tennessee Whiskey, telling the justices, “‘ha ha ha’ is not a standard” under federal trademark law.
March 21, 2023
Attorneys Debate Lanham Act Applicability To Foreign Trademark Infringement

WASHINGTON, D.C. — The U.S. Supreme Court heard oral arguments today in a dispute that poses the question of whether foreign sales by foreign defendants can nonetheless serve as the basis for an award of damages and injunctive relief in favor of a domestic trademark owner.
March 21, 2023
Georgia Federal Judge Dismisses Trademark Case Against Contractor

ROME, Ga. — Claims by the former warranty provider for a bedframe manufacturer that an independent contractor for the manufacturer committed trademark infringement were dismissed March 20 by a federal judge in Georgia, who deemed the allegations conclusory.
March 20, 2023
In Dispute Over Similarly Named Treatment Centers, Defendant Prevails

SEATTLE — Following an October bench trial, a federal judge in Washington on March 17 issued findings of fact and conclusions of law that a defendant’s name and logo do not constitute false designation of origin.
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.