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Mealey's Trademarks

February 13, 2024
Genericness, Infringement Of ‘Appliance Liquidation’ Mark Debated In 5th Circuit

NEW ORLEANS — An appliance outlet operator maintains in its reply brief to the Fifth Circuit U.S. Court of Appeals that there is no evidence that it used the disputed “Appliance Liquidation Outlet” trademark “to identify the origin or sponsorship of its products” and, thus, the infringement claims against it failed and should have been dismissed by the trial court.
February 13, 2024
9th Circuit Upholds Injunction In Trademark Dispute Over Tattoo Ink

SAN FRANCISCO — A federal judge in California did not abuse his discretion in preliminarily enjoining a defendant from using the “Advanced Tattoo Ink” tag line or “ZUPER BLACK” and “INTENZE” trademarks while litigation over their potential infringement is pending, the Ninth Circuit U.S. Court of Appeals has ruled.
February 13, 2024
Profits On Trademark Claims Affirmed But Punitive Damage Award Do-Over Needed

CINCINNATI — A jury verdict in favor of two trademark plaintiffs and corresponding award of infringer’s profits will not be disturbed, but the jury’s award of punitive damages against defendants on state law unfair competition claims was premised on an incorrect instruction by a Kentucky federal judge, according to the Sixth Circuit U.S. Court of Appeals.
February 12, 2024
Injunction Is Part Of Agreement To Resolve Lloyd’s Trademark Infringement Case

HOUSTON — Lloyd’s America Inc. and Corporation of Lloyd’s and the individual they sued in Texas federal court over alleged defamation and trademark infringement have reported reaching an agreement to resolve the suit, with terms including entry of a permanent injunction.
February 06, 2024
Parties Debate Injunction Record, Await Ruling In OpenAI Trademark Dispute

SAN FRANCISCO — OpenAI Inc. submitted what it portrays as an administrative motion to supplement the record but really is a local-rule-breaking attempt at filing a surreply in support of its motion for a preliminary injunction and fails to show the type of confusion the relief it seeks would warrant, defendants in a suit over a trademark and domain name argue in an opposition brief filed in California federal court.
February 01, 2024
Scope Of Blue Cross Common-Law Trademark Rights Not Ripe For Adjudication

BIRMINGHAM, Ala. — A federal judge in Alabama on Jan. 31 denied a bid for summary judgment that the first two plans to use the Blue Cross Blue Shield Association (BCBSA) trademarks acquiesced to later use by other plans or engaged in naked licensing of the marks.
February 01, 2024
Home Chef Asks High Court To Standardize Trademark Likelihood-Of-Confusion Test

WASHINGTON, D.C. — After being denied injunctive relief in a trademark dispute with GrubHub Inc., a food preparation firm filed a petition for certiorari, asking the U.S. Supreme Court to rule that courts must consistently consider all of the relevant factors when undertaking a likelihood-of-confusion analysis in an infringement lawsuit.
January 31, 2024
Dismissal Bid Denied In Rare Criminal Trademark Counterfeiting Case

PHILADELPHIA — A federal judge in Pennsylvania on Jan. 30 said that criminal charges against the operator of a website where the trademarks of brand name drugs were used in connection with the sale of “prop” pills will remain in place.
January 31, 2024
5th Circuit Issues Limited Remand Over Typos In Trademark Injunction

NEW ORLEANS — A federal judge in Texas properly declared the “Rolex” trademarks infringed by a watch reseller, but two typographical errors in a subsequent permanent injunction render the ordered relief “vague and unqualified,” the Fifth Circuit U.S. Court of Appeals has concluded.
January 26, 2024
N.Y. Federal Judge Voices Skepticism Over Viability Of Atari Trademark Claims

NEW YORK — Three months after entering a temporary restraining order (TRO) in the case, a federal judge in New York on Jan. 25 denied a bid by Atari Interactive Inc. to obtain a preliminary injunction against a print-on-demand company, questioning whether the video game maker is likely to succeed on the merits of its trademark infringement claims.
January 25, 2024
American Airlines’ Trademark Case Against Travel Company Survives Dismissal Request

FORT WORTH, Texas — Allegations that a travel company inflated the costs of airline tickets by charging customers more than the actual ticket price and, in so doing, infringed the American Airlines (AA) trademark will proceed, a federal judge in Texas ruled in denying a motion to dismiss.
January 25, 2024
Damages Expert Admissible In Lanham Act Case For Aftermarket Pool Products

CHARLOTTE, N.C. — An expert retained to opine on damages a company incurred due to consumer confusion about aftermarket products for a pool can testify after a North Carolina federal judge rejected two companies’ motion to exclude and ruled that their objections go to weight, not admissibility.
January 23, 2024
Panel Rejects Mandamus Bid By Musician Seeking Cancellation Of Apple Mark

WASHINGTON, D.C. — A petition for a writ of mandamus by an applicant for the “Apple Jazz” trademark directing the Trademark Trial and Appeal Board to decide his request for cancellation of the “Apple” trademark for entertainment services in class 41 was denied Jan. 23 by the Federal Circuit U.S. Court of Appeals.
January 23, 2024
Panel Grants PTO Request, Reissues Trademark Ruling As Precedential

WASHINGTON, D.C. — A recent nonprecedential ruling by the Federal Circuit U.S. Court of Appeals that a trademark application containing informational matter is refusable when the applied-for mark is not perceived as a source-identifier of the applicant’s goods or services was reissued Jan. 22, this time as precedential.
January 22, 2024
High Court Won’t Review Owner’s Individual Liability In Tobacco Trademark Row

WASHINGTON, D.C. — The U.S. Supreme Court on Jan. 22 denied a petition for a writ of certiorari filed by a wholesale company and its owner seeking review of whether the owner may be held individually liable under the Lanham Act for an $11 million trademark infringement judgment despite his argument that he did not knowingly commit an act of infringement, which they claimed is the subject of a circuit split.
January 17, 2024
High Court Told ‘Chaos’ Will Ensue ‘In A World Without Chevron’ Deference

WASHINGTON, D.C. — The U.S. Supreme Court was told Jan. 17 that “chaos” will ensue “in a world without Chevron” deference by government attorneys, who urged it to apply stare decisis and uphold Chevron, which is being challenged in two cases arising out of federal fishing regulations.
January 18, 2024
Law Firm To 9th Circuit: ‘Common Practice’ Of Keyword Ads Infringed No Trademarks

SAN FRANCISCO — Asking the Ninth Circuit U.S. Court of Appeals to affirm a trial court’s judgment that its purchasing of a competitor’s trademark in Google keyword ads was not trademark infringement, an Arizona law firm contends in its appellee brief that the purchasing of such online advertisements is a “common practice” that, at best, resulted in de minimis consumer confusion.
January 17, 2024
On Remand, Judge Awards Fees To Copyright, Trademark Defendants

ANN ARBOR, Mich. — A federal judge in Michigan on Jan. 16 rejected the “quixotic” positions advanced by a copyright and trademark owner and his company in opposing a request for attorney fees by prevailing infringement defendants, declining what he said was a call to “unwind the entire litigation and revisit almost every substantive ruling that has been rendered to date.”
January 16, 2024
Per Jack Daniel’s Ruling, 9th Circuit Reverses In ‘Punchbowl’ Trademark Suit

PASADENA, Calif. — The U.S. Supreme Court’s recent ruling in Jack Daniel’s Properties Inc. v. VIP Products LLC “altered the law that governed” when it previously found that an online news service’s use of the “Punchbowl” mark did not dilute a party-planning firm’s trademark, a Ninth Circuit U.S. Court of Appeals panel held Jan. 12, leading it to, after rehearing, issue a revised opinion reversing a trial court’s dismissal and remanding for further consideration under the traditional likelihood of confusion test.
January 12, 2024
Appellant: Dismissal Of Patent, Copyright, Lanham Act Claims Was Error

WASHINGTON, D.C. — A patent owner is seeking reinstatement of its lawsuit against a former employee and his new company, asserting in an appellant brief filed with the Federal Circuit U.S. Court of Appeals that a Utah federal judge wrongly construed “positioned between” and “formed between” in relation to a claimed air gap in the steel core of a buckling-restrained brace (BRB).
January 10, 2024
Panel Reinstates Unfair Competition Claim, Opens Door To Trade Dress Claim

NEW YORK — A dispute over alleged knock-off coats was revived Jan. 9 by the Second Circuit U.S. Court of Appeals, which said that although the owners of the fashion label Mackage cannot assert trade dress infringement and dilution by a defendant, their claim of common-law unfair competition was wrongly dismissed by a New York federal judge.
January 09, 2024
Early Challenge To Validity Of ‘Beverly Hills Hotel’ Trademark Rebuffed

LOS ANGELES — Allegations made in a motion to dismiss that “Beverly Hills Hotel” is aesthetically functional and thus unprotectable as a trademark have been rejected by a federal judge in California.
January 08, 2024
High Court Won’t Weigh In On Trade Dress Row Between Furniture Companies

WASHINGTON, D.C. — Several months after requesting a response from a high-end furniture designer and trade dress owner, the U.S. Supreme Court on Jan. 8 denied a petition for a writ of certiorari in the case, which posed the question of when intentional copying constitutes evidence of secondary meaning and warrants a finding of infringement.
January 08, 2024
Pet Brush Maker May Subpoena Meta To Obtain Online Counterfeiters’ Identities

SAN FRANCISCO — A group of website operators accused of selling and advertising counterfeit goods lost their bid to quash a discovery subpoena on Meta Platforms Inc., with a California federal judge finding that the plaintiff demonstrated that good cause exists to obtain the defendants’ identifying information for the purpose of serving them with its complaint for intellectual property infringement and unfair competition.
January 05, 2024
Caesars Wins Dismissal Of ‘Suite Series’ Trademark Infringement Claims

LOS ANGELES — A federal judge in California has granted a motion by Caesars Entertainment Inc. to dismiss allegations that it infringed a common-law trademark, rejecting a plaintiff’s claim that its use of “Suite Series” in a 2018 press release qualifies it as trademark owner.