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

Mealey's Trademarks

October 26, 2022
In Protracted Trademark Battle, New York Federal Judge Denies JMOL Request

NEW YORK — A June jury verdict of willful infringement of the “Lexington” trademark and subsequent award of $1.6 million in disgorged profits will stand, a federal judge in New York ruled.
October 24, 2022
Motion To Enforce Copyright, Trademark Settlement Granted In New York

NEW YORK — A federal judge in New York on Oct. 21 granted a request by copyright and trademark infringement plaintiffs to enforce an informal settlement with a defendant who “balked” and later filed invalidity and cancellation counterclaims.
October 24, 2022
Petitioners: ‘Widespread Confusion’ Exists On Foreign Lanham Act Application

WASHINGTON, D.C. — Lauding a recently filed amicus curiae brief by the U.S. government, a group of foreign petitioners tells the U.S. Supreme Court in a supplemental brief that the case, which included the issuance of a worldwide injunction, provides an opportunity for the court to resolve a “deep, mature, and multifarious circuit” split over extraterritorial application of the Lanham Act.
October 21, 2022
Hoping Case Will Remain An ‘Anomaly,’ Panel Reverses Ruling In Insurer’s Favor

CHICAGO — The Seventh Circuit U.S. Court of Appeals reversed a lower federal court’s entry of judgment on the pleadings in favor of an insurer in a coverage dispute arising from underlying trade dress infringement claims that were brought against the insured a decade ago, remanding for the lower court to resolve the remaining issue of breach of contract damages and emphasizing “that this case is, and hopefully will remain, an anomaly.”
October 21, 2022
Florida Federal Magistrate Recommends $1M Award Per Counterfeited Mark

FORT LAUDERDALE, Fla. — Several luxury watch makers are entitled to $1 million from each of nearly two dozen defaulting defendants accused of selling counterfeit products, a Florida federal magistrate judge has recommended.
October 20, 2022
Dog Toy Firm To High Court: Jack Daniel’s Lacks Sense Of Humor In Trademark Row

WASHINGTON, D.C. — The Ninth Circuit U.S. Court of Appeals correctly found that a dog toy at the heart of a trademark tarnishment lawsuit is a parody of a Jack Daniel’s whiskey bottle that is protected by the First Amendment to the U.S. Constitution, the toy maker tells the U.S. Supreme Court in a brief opposing Jack Daniel’s Properties Inc.’s petition for certiorari.
October 19, 2022
Lanham Act Plaintiffs’ Bid To Lift Stay Denied By Illinois Federal Judge

CHICAGO — In an Oct. 18 order, a federal judge in Illinois denied a request by two restaurants to lift a stay of their allegations that Grubhub Inc. misappropriated their trademarks, entitling them to an award of disgorged profits, upon finding that a proposed amended class action settlement in Colorado “could potentially resolve several aspects of Plaintiffs’ claims.”
October 18, 2022
Pennsylvania Federal Judge Says Penn State Acted In Bad Faith In Trademark Row

HARRISBURG, Pa. — Although granting a motion by The Pennsylvania State University (Penn State) to amend its trademark infringement complaint to add new defendants, claims and allegations, a federal judge in Pennsylvania said the school may not remove a trademark from the case that is the subject of a cancellation counterclaim.
October 17, 2022
No Coverage For Trademark Infringement Suit, 3rd Circuit Affirms

PHILADELPHIA — The Third Circuit U.S. Court of Appeals on Oct. 14 affirmed a lower federal court’s ruling in favor of a commercial liability insurer in an insured’s lawsuit seeking coverage for an underlying trademark infringement lawsuit, finding that the policy coverage for trade dress infringement did not extend to the underlying action.
October 13, 2022
New York Federal Trademark Case Tossed Over Forum Selection Clause

NEW YORK — Allegations of infringement by a cryptocurrency software company against its former CEO over the “SingularDTV” trademark were dismissed by a federal judge in New York, who said a forum selection clause requires the dispute to proceed in Switzerland.
October 10, 2022
Tractor Trade Dress Claim Over Video Game Dismissed In Washington

SEATTLE — Allegations of trade dress infringement by the maker of “Mudrunner” were tossed by a federal judge in Washington, but the plaintiff was awarded leave to amend its complaint against the makers of a competing video game for a third time.
October 10, 2022
Texas Federal Judge: Acquiescence No Defense To Copyright Claims

DALLAS — On the eve of trial, a plaintiff embroiled in Texas federal litigation with a former associate has prevailed on its position that acquiescence is unavailable as an affirmative defense to allegations of copyright infringement.
October 10, 2022
Amici Support Jack Daniel’s In High Court Trademark Tarnishment Dispute

WASHINGTON, D.C. — In amicus curiae briefs filed in the U.S. Supreme Court, Jack Daniel’s Properties Inc. received support from such parties as Levi Strauss & Co., American Intellectual Property Law Association (AIPLA) and Campbell Soup Co., which encourage the high court to grant the whiskey maker’s petition for certiorari over questions about the use of another’s trademark on a commercial product or in a humorous context.
October 05, 2022
Washington Federal Judge Says Injunctive Relief Not Warranted In Trademark Row

SEATTLE — A dispute over the “Allure” trademark for use in connection with cosmetic surgery will proceed without a preliminary injunction in place, a federal judge in Washington ruled Oct. 4.
September 29, 2022
Trademark Claims Over Durian-Cake Packaging Won’t Be Dismissed

BROOKLYN, N.Y. — Efforts to dismiss allegations of trademark infringement leveled against a supermarket, an importer and distributor and several individuals over the packaging of durian cakes were largely unsuccessful Sept. 28, when a federal judge in New York ruled that only one individual defendant is entitled to dismissal.
September 28, 2022
Virginia Federal Judge Denies Bid To Dismiss ‘GNG’ Trademark Case

RICHMOND, Va. — Allegations by a former garage that its former employees infringed its unregistered trademark and refused to hand over administrative access to a business Facebook page will proceed, a federal judge in Virginia ruled.
September 28, 2022
United States Backs Certiorari In Dispute Over Foreign Application Of Lanham Act

WASHINGTON, D.C. — A question raised by a group of foreign companies, which were hit with a $100 million trademark infringement judgment, “is an important and recurring one,” the U.S. government asserts in an amicus curiae brief, urging the U.S. Supreme Court to grant their petition for certiorari and asking the high court to “provid[e] greater clarity” on when the foreign use of a domestic party’s trademark is likely “to cause U.S. consumer confusion” justifying extraterritorial application of the Lanham Act.
September 28, 2022
Lanham, Sherman Act Claims Filed Over ‘.Wallet’ Blockchain Domain, Trademark

WILMINGTON, Del. — The owner of the “.wallet” top-level domain (TLD) within a particular blockchain domain sued a competitor in Delaware federal court, claiming that the defendant was unlawfully attempting to monopolize the TLD, despite its use in distinct, self-contained areas of cryptocurrency transactions.
September 27, 2022
Adidas Wins Partial Summary Judgment In New York On Trademark Counterclaims

BROOKLYN, N.Y. — A federal judge has sided primarily with Adidas America and Adidas AG (Adidas, collectively) in their countersuit against a declaratory judgment plaintiff who asserted that the shoemaker’s famous trademarks were abandoned via naked licensing and, alternatively, not infringed.
September 26, 2022
Nevada Federal Judge Says Trademark Damages Unavailable At Trial

LAS VEGAS — A defendant won summary judgment by a Nevada federal judge that a trademark owner is unable to seek actual damages or disgorged profits in connection with allegations that the “ProDoc” trademark was infringed, following a 2006 settlement.
September 23, 2022
In ‘Zioness’ Trademark, Copyright Row, Third-Party Complaint Receives OK

NEW YORK — A dispute between a think tank and a former executive over copyrighted images and the right to use the “Zioness” trademark will proceed with the nonprofit’s third-party claims of infringement in place, a federal judge in New York ruled Sept. 22.
September 22, 2022
Trademark Counterclaims Against Former Bandmate Survive Dismissal Bid

MIAMI — A federal judge in Florida rejected a motion by the current owner of the “Linear” trademark to dismiss allegations that his efforts to renew the registration were premised on fraudulent supporting documentation.
September 20, 2022
6th Circuit: Safe Distance Rule May Apply In Trade Dress Dispute

CINCINNATI — A federal judge in Michigan did not adequately support his denial of a request to apply the safe-distance rule when assessing a motion for permanent injunctive relief in a dispute over the trade dress of Jeep vehicles, the Sixth Circuit U.S. Court of Appeals ruled Sept. 19.
September 20, 2022
‘Violet Crown’ Trademark Case Will Proceed Without Injunctive Relief

AUSTIN, Texas — A federal judge in Texas on Sept. 15 said the owner of a movie theater failed to establish a likelihood of success on the merits of its trademark infringement claim against the developer of a planned amphitheater.
September 14, 2022
New York Federal Judge Stands By Dismissal In Copyright, Trademark Row

NEW YORK — A request by two pro se copyright and trademark infringement plaintiffs for reconsideration of a New York federal judge’s recent dismissal of the case against Sony Pictures Entertainment Inc. and others was denied Sept. 11.