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

Mealey's Trademarks

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.
December 16, 2022
Mark Licensees’ Response Time Extended In High Court Row Over Licensor’s Joinder

WASHINGTON, D.C. — The U.S. Supreme Court granted an extension motion by a group of Jackson State University (JSU) trademark licensees who prevailed in a trademark infringement suit in the Fifth Circuit U.S. Court of Appeals, giving them an additional two months to respond to a petition for certiorari on a question of whether a trademark licensor is a necessary defendant in a trademark infringement suit against licensees.
December 16, 2022
Toymaker To High Court: 1st Amendment Doesn’t Bar Disney Trademark Suit

WASHINGTON, D.C. — After filing a petition for certiorari asking when the First Amendment to the U.S. Constitution provides protection from trademark infringement liability, a toy company filed a supplemental brief directing the U.S. Supreme Court’s attention to two cases that it suggests have bearing upon its infringement suit against Disney Enterprises Inc. over a stuffed bear toy.
December 14, 2022
MGM Bid To Transfer, Dismiss Dispute Over ‘Rocky’ Marks Denied

NEW YORK — A complaint seeking a declaration of noninfringement with regard to the “Rocky” trademarks will proceed in New York federal court, a federal judge in New York has ruled.
December 08, 2022
Panel Upholds Dismissal Of Trademark Action, But Reinstates Copyright Claim

SAN FRANCISCO — A federal judge in California wrongly granted Yahoo! Inc. dismissal of allegations of copyright infringement leveled over the display of photographs even after Yahoo’s agreement with the creator of the photos was terminated, the Ninth Circuit U.S. Court of Appeals ruled.
December 07, 2022
Lanham Act Claim Fails, But Copyright Claim Survives Dismissal Bid

CHICAGO — A group of defendants who are among the few to not settle copyright infringement and false designation of origin claims by the maker of the “Fidget Cube” saw their efforts to obtain dismissal rejected in part by an Illinois federal judge.
December 06, 2022
Oregon Federal Magistrate Judge Tosses Copyright, Lanham Act Claims Over Books

PORTLAND, Ore. — A federal magistrate judge in Oregon on Dec. 5 granted dismissal of copyright infringement and unfair competition claims leveled over the book “Why God Doesn’t Exist,” finding among other things that the Lanham Act “does not provide a cause of action for unattributed copying.”
December 02, 2022
3rd Circuit Briefed On Fees Award In Nike ‘Cool Compression’ Trademark Suit

PHILADELPHIA— A small athletic apparel company tells the Third Circuit U.S. Court of Appeals in its appellee brief that willful infringement of its “cool compression” trademark by Nike Inc. justified a trial court’s award of enhanced damages, costs and attorney fees in this “David v. Goliath” trademark dispute.
December 01, 2022
‘MTV Floribama Shore’ Satisfies Rogers Test, 11th Circuit Concludes

ATLANTA — In a case it said “lies at the crossroads” of the Lanham Act, 15 U.S.C. 1051 et seq., and the First Amendment, U.S. Const. amend. I, the 11th Circuit U.S. Court of Appeals upheld summary judgment in favor of trademark infringement defendants, which include ViacomCBS Inc., over the MTV reality television show “MTV Floribama Shore.”
November 30, 2022
Dismissal Of Copyright, Trademark Claims Over Board Game Denied

CHICAGO — Allegations that two defendants created a fully interactive website to sell counterfeit versions of the “Match Madness” pattern matching board game will proceed, a federal judge in Illinois ruled.