Mealey's Trademarks

  • May 24, 2024

    Minority Winery Owner Can’t Satisfy Lexmark In Bid To Cancel Trademarks

    WASHINGTON, D.C. — A minority owner of a California winery on May 23 failed to persuade the Federal Circuit U.S. Court of Appeals to direct the Trademark Trial and Appeal Board to reinstate its petitions for cancellation of the “ALVAREDOS-HOBBS” and “HILLICK AND HOBBS” trademarks for use in connection with wine.

  • May 22, 2024

    WIPO Warns PTO: Fee Increase For Trademarks Violates Madrid Protocol

    ALEXANDRIA, Va. — As the comment period draws to a close on plans by the U.S. Patent and Trademark Office (USPTO) to raise fees in fiscal year 2025 on certain trademark applications, the World Intellectual Property Office (WIPO) has weighed in with a warning that the proposal as written runs afoul of the primary system for international trademark registration.

  • May 21, 2024

    8th Circuit Affirms Insurer Has Duty To Defend Against Trademark Infringement Suit

    ST. LOUIS — The Eighth Circuit U.S. Court of Appeals on May 20 affirmed a lower federal court’s finding that an insurer has a duty to defend its computer networking products reseller insured against an underlying trademark infringement lawsuit, noting that this does not resolve the issue of whether the insurer has a duty to indemnify, which will turn on the resolution of the underlying lawsuit.

  • May 21, 2024

    With Panel ‘Bound By’ Herbal Brands, ‘Detoxify’ Trademark Cases Reinstated

    SAN FRANCISCO — Two online sellers of products that allegedly make an infringing use of the “Detoxify” trademark must defend their actions in court, the Ninth Circuit U.S. Court of Appeals ruled May 20, reversing dismissal of the cases on jurisdiction grounds by two separate California federal judges.

  • May 20, 2024

    Cert Bid By Self-Professed ‘Digital Nomad’ Fails In Trademark Jurisdiction Row

    WASHINGTON, D.C. — The U.S. Supreme Court on May 20 revealed that it will not weigh in on a finding by a divided Ninth Circuit U.S. Court of Appeals panel that a California court can exercise jurisdiction over a one-person company that has not operated in the Golden State since 2016.

  • May 16, 2024

    Despite Phonetic Similarity, Confusion Unlikely Between ‘SUNSAUCE,’ ‘SON SAUCE’

    SAN FRANCISCO — Litigation between two sauce makers will proceed without preliminary injunctive relief in place, a federal judge in California has ruled, because the Thailand-based plaintiff, owner of the “SUNSAUCE” trademark, has not shown that it is likely to succeed on the merits of its allegation that a California company infringes with its “SON SAUCE” product.

  • May 16, 2024

    Appellants Say Court’s OpenAI Secondary Meaning Ruling Was In Error

    SAN FRANCISCO — A trial court erred in finding that the OpenAI mark acquired a secondary meaning with the release of its Dall-E website and before the release of the vastly more popular ChatGPT while ignoring analogous uses of the mark and that all the allegedly irreparable harm was speculative, a company tells the Ninth Circuit U.S. Court of Appeals.

  • May 15, 2024

    PUMA Design Patent Claim Survives Early Challenge In Washington

    SEATTLE — A motion for judgment on the pleadings by Brooks Sports Inc. was partly granted May 14 when a federal judge in Washington ordered a purported trademark licensor to be joined to an infringement action initiated by a rival athletic footwear company.

  • May 15, 2024

    Grubhub Calls Likelihood Of Confusion Cert Petition ‘Unremarkable,’ Poor Vehicle

    WASHINGTON, D.C. — A trial court’s determination of whether there is a likelihood of confusion between two trademarks is due “great deference,” Grubhub Inc. tells the U.S. Supreme Court in a brief opposing a petition for certiorari in a trademark dispute, representing that nothing about the case is noteworthy or in need of attention from the high court.

  • May 14, 2024

    Judge Orders Discovery In Bid To Enforce $1.5M Award Against Bankrupt German CEO

    SAN JOSE, Calif. — A California federal judge refused to dismiss a video game streaming platform’s petition to confirm a JAMS award worth nearly $1.5 million against two German entities and their shareholder, the former CEO of the original award-debtor, and ordered further jurisdictional discovery to determine whether the court can exercise jurisdiction over the German defendants.

  • May 14, 2024

    AI Health Company Seeks Dismissal Of Counterclaims In Sci-Fi-Based Trademark Case

    NEW YORK — An artificial intelligence health care company named in honor of a word created by science fiction author Robert A. Heinlein asked a federal judge in New York to dismiss counterclaims against it, saying courts lack jurisdiction over trademark applications and that the lone exception to the rule does not apply.

  • May 13, 2024

    Judge Orders $1.4M Supersedeas Bond Pending Tobacco Rolling Papers Appeal

    ATLANTA — A Georgia federal judge granted a motion filed by rolling papers companies and ordered defendants found liable for trademark infringement to post a supersedeas bond worth more than $1.4 million pending their appeal of jury verdicts against them to the 11th Circuit U.S. Court of Appeals.

  • May 10, 2024

    Trademark Holder Defends Disgorged Profits Award In Supreme Court Brief

    WASHINGTON, D.C. — The Lanham Act gives courts broad discretion to award disgorged profits to prevailing parties in trademark infringement suits, an engineering firm tells the U.S. Supreme Court in a brief opposing a petition for certiorari by a firm that says a $43 million disgorgement award against it was improperly based on the profits of its affiliates, which are separate corporate entities.

  • May 10, 2024

    Verdict Clearing Thom Browne Of Trademark Infringement Won’t Be Undone, Panel Says

    NEW YORK — In a summary order, the Second Circuit U.S. Court of Appeals found no reversible error in the jury instructions given by a federal judge in New York assigned to oversee litigation over the signature stripe trademark owned by adidas America Inc.

  • May 09, 2024

    Plaintiff Given 1 Week To Hand Over Social Media Logins To Gown Designer

    NEW YORK — A federal judge in New York on May 8 dissolved in part and revised in part her March 1 preliminary injunction in a trademark dispute between a bridal gown company and a former designer, upon finding that the plaintiff company “failed to carry its burden of demonstrating a clear or substantial likelihood of success in establishing that it was the original owner or transferee of” two social media accounts, extinguishing a “crucial element” of its claim for conversion.

  • May 09, 2024

    6th Circuit Reverses Dismissal Of Trademark Case On Jurisdiction Grounds

    CINCINNATI — Findings by a Tennessee federal judge that his court lacks jurisdiction over an Arizona-based trademark infringement defendant were reversed May 8 by a divided Sixth Circuit U.S. Court of Appeals, which said “longstanding precedent establishes that a company’s choice to welcome customers from and regularly sell products into a state subjects the company to that state’s jurisdiction.”

  • May 07, 2024

    PTO Persuades Panel To Remand IFIT Appeal To Trademark Board

    WASHINGTON, D.C. — Over the objection of appellant iFIT Inc., the Federal Circuit U.S. Court of Appeals has remanded the fitness company’s appeal of its failed bid to block an application to register the “I-FIT FLEX” trademark in view of a concession by the U.S. Patent and Trademark Office (PTO) that the Trademark Trial and Appeal Board’s ruling was light on factual support, which the agency said could hamper appellate review.

  • April 30, 2024

    Panel: Discretion Not Abused By Board In Sustaining Trademark Opposition

    WASHINGTON, D.C. — A panel of the Federal Circuit U.S. Court of Appeals on April 30 said it will not disturb a decision by the Trademark Trial and Appeal Board that turned away an application to register the “#TODECACHO” trademark.

  • April 30, 2024

    Temu Beats Trademark Claims In Illinois, But Leave To Amend Granted

    CHICAGO — Allegations by the maker of a hand grip strengthener that the retail platform Temu sells counterfeit products bearing the “FitBeast” trademark were dismissed without prejudice on April 29 by a federal judge in Illinois, who said the accused conduct is not a use in commerce.

  • April 29, 2024

    Trademark Owner Tells High Court Jurisdiction Requires Causal Link To Venue

    WASHINGTON, D.C. — Impossible Foods Inc. “pushe[s] the minimum-contacts test” for jurisdiction “past its breaking point,” a petitioner argues in a reply supporting its petition for certiorari, in which it asks the U.S. Supreme Court to clarify when specific jurisdiction over a trademark defendant requires a causal relationship between the venue and purported infringement.

  • April 26, 2024

    N.Y. Federal Magistrate Judge Recommends Fee Denial In Clash Between Music Schools

    NEW YORK — A request by a music school and its founder for reimbursement of the attorney fees they incurred in successfully defending allegations of copyright infringement, unfair competition and trade secret misappropriation should not be granted, a federal magistrate judge in New York has recommended.

  • April 24, 2024

    Professors Tell High Court Disgorged Profits Shouldn’t Include Separate Affiliates

    WASHINGTON, D.C. — Filing an amicus curiae brief in support of a company that was hit with a $43 million disgorgement of profits award in a trademark infringement dispute, two law professors tell the U.S. Supreme Court that the Fourth Circuit U.S. Court of Appeals erred in upholding the award, which exceeded the trial court's authorization under the Lanham Act to award a defendant’s profits “subject to the principles of equity.”

  • April 24, 2024

    Copyright, Trademark, Trade Dress Case Against TikTok Will Largely Proceed

    SAN FRANCISCO — Although a motion to dismiss by TikTok Inc. was partly granted April 23, the copyright, trademark and trade dress claims by a China-based company can be repleaded in a fourth amended complaint (FAC), a federal judge in California ruled.

  • April 24, 2024

    On Remand From SCOTUS, Panel Takes 2nd Look At Foreign Conduct, Sales

    DENVER — In a revised opinion issued April 23, the 10th Circuit U.S. Court of Appeals, acting on remand from the U.S. Supreme Court, clarified that downstream, foreign sales and steps taken domestically to facilitate foreign sales cannot factor into the analysis of disgorged profits in a trademark infringement case.

  • April 23, 2024

    California Federal Judge Disqualifies Defense Counsel In Trademark, Antitrust Case

    SAN FRANCISCO — The nearly decade-long assistance to HDMI Licensing Administrator Inc. (HDMI LA) by members of a law firm’s Beijing office bars the firm’s New York office from representing a trademark infringement defendant that has leveled antitrust counterclaims against HDMI LA, a federal judge in California ruled April 22.