Mealey's Trademarks
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April 03, 2024
Panel Majority: Applications Cancelable In Cases That Include Registered Marks
SAN FRANCISCO — In a pair of rulings issued the same day, a divided Ninth Circuit U.S. Court of Appeals panel reinstated an infringement action and found that federal courts have jurisdiction to consider challenges to applications for trademarks as long as infringement of at least one registered trademark is also alleged.
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April 02, 2024
Pa. Federal Judge Clarifies, But Won’t Reconsider, Penn State Trademark Ruling
HARRISBURG, Pa. — Over the objection of The Pennsylvania State University, a federal judge in Pennsylvania on April 2 clarified a February 2024 ruling granting the school summary judgment on several affirmative defenses raised by an apparel maker accused of trademark infringement.
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March 26, 2024
Modelo Loses Appeal; 2nd Circuit Affirms ‘Beer’ In Contract Is Ambiguous
NEW YORK — The Second Circuit U.S. Court of Appeals said March 25 it will not disturb a summary judgment ruling by a federal judge in New York that a trademark license to make and sell “beer” in the United States under the “Modelo” and “Corona” trademarks was not shown to be violated by a sublicensee’s use of the marks in connection with fermented sugar-based hard seltzer drinks.
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March 26, 2024
UCL, Declaratory Judgment Counterclaims Tossed In Dispute Over Marks, Logo
HARTFORD, Conn. — Trademark infringement and false advertising plaintiffs secured dismissal on March 25 of allegations that they violated the California unfair competition law (UCL), with a federal judge in Connecticut ruling that complained-of securities transactions took place overseas.
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March 26, 2024
Deficiencies Cured By Amended Complaint In ‘Wicked Fish’ Mark Row
TRENTON, N.J. — A federal judge in New Jersey on March 25 denied dismissal of trademark infringement, false designation of origin and unfair competition claims leveled in a dispute between the owner of the “Wicked Fish” trademark and its former licensee, nearly one year after dismissing the case with leave to amend.
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March 20, 2024
Panel Affirms: Confusion Unlikely Between ‘Jackpot,’ ‘Jackpocket’ Trademarks
NEW YORK — Findings by a federal judge in New York at the conclusion of a bench trial that consumers are unlikely to be confused by “Jackpot.com” and a lottery courier services company operating as “Jackpocket” have been upheld by the Second Circuit U.S. Court of Appeals.
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March 19, 2024
Parties Await Ruling On Reconsideration Requests In Trademark Row
HARRISBURG, Pa. — Briefing is complete in a bid for reconsideration of a wide-ranging Feb. 6 opinion by a Pennsylvania federal judge that, among other things, granted The Pennsylvania State University summary judgment on an apparel maker’s affirmative defense that its use of historical images incorporating the trademarks of others is ornamental in nature and thus nonactionable.
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March 19, 2024
Judge Says OpenAI Prevails In Dispute Over Use Of Name
SAN FRANCISCO — Since OpenAI Inc. saw its attempt to trademark its name denied, “the landscape has changed” through its introduction of two applications that have made it a household name, a federal judge in California said in enjoining defendants from using the Open AI mark or open.ai.
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March 19, 2024
Divided 2nd Circuit Won’t Undo Trademark Fair Use Findings
NEW YORK — A Connecticut federal judge’s determination that use by an appellee of the term “red gold” in connection with gold-copper luxury watches qualifies as fair under federal trademark law will not be disturbed, a panel majority of the Second Circuit U.S. Court of Appeals has ruled.
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March 18, 2024
Executive Can’t Shake Claims Company Infringed ‘Playground AI’ Mark
SAN JOSE, Calif. — Litigation over the “Playground AI” trademark will proceed in California with the founder of the artificial intelligence company Mighty Computing Inc. named as a co-defendant, a federal judge there held in denying a motion to dismiss.
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March 14, 2024
Subpoena For Deposition In Trademark Opposition Will Stay Quashed, Panel Rules
RICHMOND, Va. — Although with a different rationale than the one espoused by a Virginia federal judge, the Fourth Circuit U.S. Court of Appeals on March 13 upheld an order that quashed a subpoena issued to a foreign entity in opposition proceedings before the U.S. Patent and Trademark Office (PTO) Trademark Trial and Appeal Board.
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March 14, 2024
Designer, PTO Argue If Vulgar Word Was Properly Denied Trademark Registration
WASHINGTON, D.C. — An artist and designer who had four trademark registrations for a vulgar word denied by the U.S. Patent and Trademark Office (PTO) tells the Federal Circuit U.S. Court of Appeals in his reply brief that the agency inappropriately relied on newly created doctrines regarding commonly used words in rejecting his applications, despite the fact that many other commonly used words have been used as trademarks.
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March 13, 2024
Per Gucci, Jury Demand In New York Federal Trade Dress Row Stricken
BROOKLYN, N.Y. — A trade dress dispute between two ice cream makers will proceed but not before jurors because a request for disgorged profits is equitable in nature and thus will be decided at a bench trial, a federal judge in New York has ruled.
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March 12, 2024
Colorado Federal Judge: App Store Notices Not Enough For Jurisdiction
DENVER — A Colorado-based business on March 11 saw its infringement complaint dismissed without prejudice by a federal judge in Colorado, who said trademark notices sent by defendants to the Apple and Google app stores did not rise to the level of “express aiming” at the state.
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March 12, 2024
Crocs Must Face Defamation Claims In Colorado Over Patent Press Release
DENVER — Allegations by a Canadian shoe seller and former patent infringement defendant that it was defamed in a press release by Crocs Inc. that touted a settlement of their longstanding litigation as a “judgment of infringement” were deemed plausible on March 11 by a federal judge in Colorado.
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March 11, 2024
Judge Amends Consent Decree Order In Case Over Alleged Counterfeit Policies
LOUISVILLE, Ky. — In a March 8 amended ruling entering a consent decree in a sprawling suit over allegations of fraud, trademark counterfeiting and trademark infringement involving captive reinsurance programs, a Kentucky federal judge said he “inadvertently omitted the names of two parties.”
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March 11, 2024
Nevada Federal Judge Modifies Injunction After Finding Mark Use Not Fair
LAS VEGAS — On the heels of concluding, upon reconsideration, that a defendant did not fairly use “TASER” in connection with its conducted-energy weapon (CEW) refurbishing business, a federal judge in Nevada on March 8 modified her earlier permanent injunction.
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March 11, 2024
Judge Won’t Overturn Jury’s $2.3M Verdict In Tobacco Rolling Papers Dispute
ATLANTA — A Georgia federal judge denied two defense motions asking the court to deem excessive or reduce a $2.3 million jury verdict against them for trademark infringement against a rolling papers company and order a new trial, finding that the jury properly weighed the evidence and that its verdict was proper.
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March 07, 2024
Fee Award Slashed, But Dismissal Of Lanham Act, Copyright Claims Upheld
SAN FRANCISCO — The Ninth Circuit U.S. Court of Appeals on March 6 did not reach allegations by two appellants that the “idea-expression dichotomy” under federal copyright law is unconstitutional, deeming the position waived in view of their failure to raise it before an Oregon federal magistrate judge.
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March 05, 2024
Minnesota Federal Judge: Product And Product Trademark Are Distinct
MINNEAPOLIS — A Minnesota federal judge on March 4 rejected a plaintiff’s claim that a contractual provision directing a distributor to “discontinue use of any and all . . . trademarks” in the event of termination “encompasses an obligation to stop selling” its remaining inventory.
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March 04, 2024
Both Parties Win Interim Relief, But More Briefing Sought In Trademark Row
NEW YORK — On remand from the Second Circuit U.S. Court of Appeals for a second time, a federal judge in New York on March 1 tweaked her earlier preliminary junction but directed a bridal gown company and its former designer to further brief the “issues raised” in a recent appellate decision.
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February 27, 2024
Defense Motion Denied By Illinois Federal Judge In ‘Tribe’ Trademark Case
CHICAGO — In a Feb. 26 opinion, a federal judge in Illinois declined to decide whether, as asserted by two infringement defendants, the term “tribe” cannot be trademarked.
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February 26, 2024
NBC Must Face Claims ‘Time Machine’ Car Infringes DeLorean Mark
LOS ANGELES — Although agreeing with NBCUniversal Media LLC (NBCU) that allegations of breach of contract leveled by DeLorean Motor Co. (DMCT) over royalties associated with the use of a modified DeLorean DMC-12 “Time Machine” car in the “Back to the Future” film franchise fail for lack of standing, a federal judge in California said disputes of material fact preclude summary judgment on DMCT’s related trademark infringement claims.
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February 23, 2024
Amici Tell High Court Jury Should Decide Likelihood Of Confusion
WASHINGTON, D.C. — Filing a brief in favor of neither party in a dispute over the “Home Chef” trademark, amici curiae comprising “law school faculty and students” urge the U.S. Supreme Court to resolve a circuit split over the proper way to determine when there is a likelihood of confusion between two marks, stressing the importance of having a single national standard on this matter and contending that it should be a deference standard in which juries make such decisions.
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February 21, 2024
Trademark, Copyright Owner Denied Summary Judgment By Illinois Federal Judge
CHICAGO — Citing a plaintiff’s “trend of under-developing arguments” in trademark and copyright litigation over its continuous positive airway pressure (CPAP) filters, a federal judge in Illinois denied summary judgment, finding — among other things — that there is “no case law supporting the proposition that a product itself . . . can constitute a spurious mark for the purposes of establishing a counterfeit.”