Mealey's Trademarks
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September 13, 2022
Florida Federal Judge Cites Patent, Declares Trade Dress Functional
FORT MYERS, Fla. — In a Sept. 9 decision, a federal judge in Florida granted a defendant’s motion for judgment on the pleadings that allegations that it infringed trade dress associated with a floating dock system fail.
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September 12, 2022
Copyright Counterclaim, Trademark Preemption Defense Dismissed In New York
NEW YORK — A dispute between two similarly named organizations centered on the modern architect Paul Rudolph will proceed without a counterclaim for copyright infringement in place, a federal judge in New York ruled Sept. 8.
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September 12, 2022
Consent Order Modification Sought In Suit Over Alleged Counterfeit Policies
LOUISVILLE, Ky. — After plaintiffs and intervening plaintiffs in a suit over allegations of fraud, trademark counterfeiting and trademark infringement involving captive reinsurance programs filed an Aug. 29 motion in Kentucky federal court seeking to lift portions of a consent order to allow novation settlements regarding one defendant to proceed, the court issued a Sept. 8 text order directing that defendant to state its position by Sept. 22.
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August 31, 2022
Panel: University Licensees Properly Awarded Dismissal Of Trademark Claims
NEW ORLEANS — The Fifth Circuit U.S. Court of Appeals on Aug. 24 said a Louisiana federal judge correctly deemed the licensing arm of Jackson State University entitled to dismissal of trademark infringement allegations where the university cannot be joined to the action pursuant to the doctrine of sovereign immunity.
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August 29, 2022
9th Circuit Reinstates Trade Dress Claims Over ‘Four-In-A-Row’ Game
SAN FRANCISCO — Secondary meaning is acquired whenever a consumer links trade dress to a single source or company, even one that is anonymous, a Ninth Circuit U.S. Court of Appeals panel ruled Aug. 24.
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August 26, 2022
Jack Daniel’s Again Seeks Certiorari In Dog Chew Toy Trade Dress Infringement Suit
WASHINGTON, D.C. — In the wake of a second ruling against it by the Ninth Circuit U.S. Court of Appeals in a trade dress dispute with a dog toy manufacturer, Jack Daniel’s Properties Inc. on Aug. 5 filed its second petition for certiorari in as many years, asking the U.S. Supreme Court to provide guidance on when a humorous item’s use of another’s trademark or trade dress constitutes infringement and when it is protected under the First Amendment to the U.S. Constitution.
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August 26, 2022
5th Circuit Affirms ‘Across The Board’ In Protracted Trademark Row
NEW ORLEANS — In its third ruling in the case, the Fifth Circuit U.S. Court of Appeals on Aug. 23 upheld several rulings by a Louisiana federal judge in a longstanding dispute over the “Camellia Grill” trademark.
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August 26, 2022
7th Circuit: Shipment Of Counterfeit Product Conferred Jurisdiction
CHICAGO — Entry of a default judgment by an Illinois federal judge against a defendant accused of trademark infringement by NBA Properties Inc. was upheld Aug. 16, when the Seventh Circuit U.S. Court of Appeals agreed that the defendant’s shipment of a counterfeit product to Illinois constituted purposeful availment.
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August 24, 2022
Insurer Has No Duty To Defend, Indemnify Technology Company, 11th Circuit Affirms
ATLANTA — The 11th Circuit U.S. Court of Appeals on Aug. 23 affirmed a lower federal court’s ruling that an insurer has no duty to defend or indemnify two underlying lawsuits against a technology company insured because the claims in the second lawsuit relate to the claims in the first lawsuit that occurred before the policy’s inception.
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August 18, 2022
Panel: Reverse Confusion Theory Of Trademark Infringement Fails
SAN FRANCISCO — The Ninth Circuit U.S. Court of Appeals on Aug. 9 upheld a California federal judge’s determination that no reasonable juror could find in favor of a trademark owner on its reverse confusion theory of infringement by a popular yoga apparel maker.
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August 17, 2022
1st Circuit Partly Reinstates Lanham Act Claims Against Drug Compounder
BOSTON — Dismissal by a Massachusetts federal judge of allegations of false advertising leveled against a drug compounding company was vacated, in part, by the First Circuit U.S. Court of Appeals on Aug. 12.
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August 17, 2022
3rd Circuit Upholds Denial Of Injunction In Pesticide Trademark Row
PHILADELPHIA — In a ruling affirming a Delaware federal judge’s decision to deny a trademark owner a preliminary injunction in its infringement litigation with a competitor, the Third Circuit U.S. Court of Appeals on Aug. 12 articulated a three-step test for district courts applying the rebuttable presumption of irreparable harm under a recently enacted statute.
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August 15, 2022
Magistrate Recommends Transfer Of Infringing Domains To Debevoise
ALEXANDRIA, Va. — A Virginia federal magistrate judge on Aug. 10 found that law firm Debevoise & Plimpton LLP had sufficiently established that the registrants of two internet domains incorporating its trademark had violated the Anti-Cybersquatting Consumer Protection Act (ACPA) by registering them in bad faith, recommending permanent transfer of the domains to the plaintiff.
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August 09, 2022
11th Circuit: Summary Judgment Not Warranted On False Advertising Claims
ATLANTA — A federal judge in Florida wrongly awarded more than 30 plaintiffs summary judgment on their allegations of false advertising and false endorsement by the managing members of a Miami nightclub, the 11th Circuit U.S. Court of Appeals said Aug. 4.
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August 09, 2022
8th Circuit: Single Online T-Shirt Sale Does Not Confer Jurisdiction
ST. LOUIS — Upholding a trial court’s dismissal of a trademark infringement lawsuit for lack of jurisdiction, an Eighth Circuit U.S. Court of Appeals panel on Aug. 2 ruled that a California T-Shirt company’s sale of one shirt via its website to a Missouri customer was not sufficient to constitute purposeful availment that would establish specific jurisdiction over the out-of-state defendant.
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August 02, 2022
Following Bench Trial, Florida Federal Judge Says Trademark Not Abandoned
MIAMI — A federal judge in Florida on July 31 awarded a franchisor $271,250 in connection with allegations that a franchisee continued to use the “Navaka” trademark after an implied license between the parties was rescinded.
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August 02, 2022
2nd Circuit Reinstates False Advertising Case Over Building Codes
NEW YORK — A sua sponte dismissal by a federal judge in New York of false advertising claims leveled over building codes was vacated and remanded, in part, by the Second Circuit U.S. Court of Appeals on July 29.
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August 01, 2022
Texas Federal Judge Enjoins Sale Of Certain Counterfeit Guitars
SHERMAN, Texas — In a July 28 opinion, a federal judge in Texas declared Gibson Brands Inc. the prevailing party after a jury in May 2022 found willful infringement and counterfeiting of the Gibson trademarks by a fellow guitar maker.
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July 27, 2022
Trademark Dilution Claim Tossed, But Infringement Claims Survive In Massachusetts
BOSTON — A federal judge in Massachusetts on July 25 dismissed allegations of false advertising and trademark dilution leveled against a physical therapy and surgical services provider but said a similarly named plaintiff providing similar services may proceed with the remainder of its complaint.
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July 27, 2022
Jurisdiction In ‘Baby Shark’ Copyright, Trademark Row Lacking
NEW YORK — A federal judge in New York on July 21 said that because service by email on residents of China is impermissible under the Hague Convention, the owner of various copyrights and trademarks associated with the song “Baby Shark” is not entitled to a default judgment in an infringement action.
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July 26, 2022
Relief Partly Modified In Dispute Over Name, Dilution, Social Media
NEW YORK — A plaintiff who successfully limited a bridal designer’s ability to use her own name in connection with her bridal design work won modification of the injunction, in part, by a federal judge in New York on July 25.
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July 26, 2022
2nd Circuit Undoes Trademark Injunction In Win For PepsiCo
NEW YORK — A federal judge in New York wrongly concluded that a plaintiff’s “RISE” trademark is strong when used in connection with a canned coffee beverage, the Second Circuit U.S. Court of Appeals ruled July 22, vacating a preliminary injunction entered against PepsiCo Inc.
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July 22, 2022
Florida Federal Judge Trims Award In Dispute Over ‘Nextel’ Mark
MIAMI — In a July 19 order, a federal judge in Florida said Sprint Communications LLC is entitled to less than half the $9.7 million it was awarded in April by jurors in a trademark dispute over counterfeit handheld devices.
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July 20, 2022
California Federal Judge Partly Grants Relief In Trade Dress Case
SAN DIEGO — Although a dispute over the trade dress associated with a suite of dental attachment products will proceed with a preliminary injunction in place, a California federal judge ruled July 18 that the relief requested will be granted only in part.
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July 19, 2022
Dispute Over Pocket Stitch Design Will Proceed In Pennsylvania
PITTSBURGH — A bid by American Eagle Outfitters Inc. (AEO) for summary judgment on its allegations of trademark infringement against Walmart Inc. was denied July 18 by a federal judge in Pennsylvania, who cited ongoing material disputes between the parties over trademark validity, secondary meaning and the likelihood of confusion.