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

Mealey's Trademarks

September 20, 2023
Florida Federal Magistrate Judge: Trademark Owner Entitled To $284K Fee Award

ORLANDO, Fla. — Alan Parsons, co-founder of The Alan Parsons Project rock band, should be awarded $284,919.05 in attorney fees in connection with his successful litigation of a trademark infringement action against a former business associate, a federal magistrate judge in Florida found.
September 19, 2023
Judge Grants AI Image Company Default Judgment In Trademark Dispute

SAN FRANCISCO — A federal judge in California adopted a report and recommendation granting default judgment in a trademark case involving the “brazen conduct” of a “trademark pirate,” enjoining the defendants from infringing on artificial intelligence image generator Midjourney Inc.’s trademark and awarding $72,972 in attorney fees but denying a request for damages.
September 19, 2023
Bid For Trademark Cancellation Was Properly Dismissed, Panel Rules

NEW YORK — The Second Circuit U.S. Court of Appeals on Sept. 18 upheld dismissal of a lawsuit seeking cancellation of the “LEFT CENTER RIGHT” trademark, agreeing with a federal magistrate judge in New York that there is no case or controversy between the parties.
September 18, 2023
Government Urges High Court To Uphold ‘Bedrock Principle’ Of Chevron Deference

WASHINGTON, D.C. — The U.S. secretary of Commerce, two National Oceanic and Atmospheric Administration (NOAA) officials and the National Marine Fisheries Service (NMFS) (collectively, the government) urge the U.S. Supreme Court in a Sept. 15 brief to not overrule the doctrine of Chevron deference in a challenge to fishery regulations that were upheld by the District of Columbia Circuit U.S. Court of Appeals, writing that doing so could “cause disruption” to complex federal regulatory schemes.
September 18, 2023
Panel Articulates Standard For Comparison Prior Art In Design Patent Disputes

WASHINGTON, D.C. — Four years after vacating a summary judgment of infringement in a dispute over a patented heat reflecting material, the Federal Circuit U.S. Court of Appeals on Sept. 15 vacated a jury’s verdict, on remand, of noninfringement in the same dispute.
September 18, 2023
Defaulting Trademark Defendant Won’t Be Ordered To Pay Plaintiff’s Fees

MINNEAPOLIS — Although granting permanent injunctive relief and deeming a trademark defendant’s infringement willful, a federal judge in Minnesota on Sept. 15 denied the trademark owner’s request for attorney fees.
September 15, 2023
Declaratory Judgment Action Over ‘Impossible’ Trademark Reinstated

SAN FRANCISCO — A federal judge in California erred in dismissing, for lack of personal jurisdiction, a request by Impossible Foods Inc. for a declaration of noninfringement with regard to the “IMPOSSIBLE” trademark, a divided Ninth Circuit U.S. Court of Appeals has ruled.
September 15, 2023
Credit Union To High Court: Noninfringement Ruling Does Not Moot Invalidity Claim

WASHINGTON, D.C. — In a reply brief supporting its petition for certiorari, a California credit union asks the U.S. Supreme Court to take up “important trademark questions” related to whether a federal district court retains jurisdiction over a declaratory validity claim when an accompanying infringement allegation has been resolved.
September 14, 2023
Adidas Says Jury Instructions, Expert Testimony Rulings Require New Trademark Trial

NEW YORK — A trial court’s failure to instruct the jury on the proper trademark infringement standard and its errant conclusion on expert witness methodologies necessitate a new trial in a dispute over whether designer Thom Browne Inc. infringed or diluted its longtime “Three-Bar Signature” trademark, adidas America Inc. argues in a reply brief in the Second Circuit U.S. Court of Appeals.
September 08, 2023
Injunction Entered In Florida Trademark, Copyright Dispute Over ‘Masha And The Bear’

MIAMI — A federal judge in Florida on Sept. 7 adopted in full a Florida federal magistrate judge’s recommendation that the owner of copyrights and trademarks associated with the hit children’s television show “Masha and the Bear” be awarded a preliminary injunction while it proceeds with an infringement action against myriad online counterfeiters.
September 08, 2023
Panel Undoes JMOL, In Part, In ‘Rex Real Estate’ Trademark Row

NEW ORLEANS — A federal judge in Texas wrongly concluded that a reasonable jury could not find a likelihood of confusion between a real estate company and an artificial intelligence (AI)-based real estate website both operating as “Rex Real Estate,” the Fifth Circuit U.S. Court of Appeals has ruled, partially reversing and remanding a grant of judgment as a matter of law (JMOL).
September 07, 2023
Trademark Owner To High Court: Lanham Act’s Names Clause Violates 1st Amendment

WASHINGTON, D.C. — A man who was denied registration of the trademark “Trump Too Small” by the U.S. Patent and Trademark Office (PTO) argues in the U.S. Supreme Court that the Federal Circuit U.S. Court of Appeals properly reversed the registration denial by finding a Lanham Act provision against the trademark registration of public figures’ names to be in violation of the First Amendment to the U.S. Constitution as a content-based restriction on speech.
September 06, 2023
9th Circuit Nixes ‘Punchbowl’ Trademark Holding In Light Of Jack Daniel’s Ruling

PASADENA, Calif. — The U.S. Supreme Court’s recent trademark dilution decision in Jack Daniel’s Properties Inc. v. VIP Products LLC led a Ninth Circuit U.S. Court of Appeals panel to vacate its ruling in a dispute between two online-based companies over the “Punchbowl” trademark and designate the case for reargument.
August 31, 2023
After Jury Trial Over Swim School Trade Dress, Enhanced Damages Denied

HOUSTON — A federal magistrate judge in Texas has awarded a prevailing trade dress infringement plaintiff $482,863.75 in attorney fees on grounds that the case qualifies as exceptional but in the same order denied a request for enhanced damages.
August 29, 2023
Credit Unions Argue Trademark Invalidity, Jurisdiction In Supreme Court Briefs

WASHINGTON, D.C. — Two credit unions that had concurrent trademark proceedings in the Trademark Trial and Appeal Board (TTAB) and federal court argue in the U.S. Supreme Court as to whether certiorari is needed to establish when a summary judgment ruling in a trademark dispute moots federal jurisdiction for declaratory claims of trademark registration validity.
August 28, 2023
Injunction In ‘KitchenAid’ Trademark, Trade Dress Case Upheld By Panel

NEW ORLEANS — Efforts by a Chinese company and its subsidiaries to enter the stand mixer market with a product that bears a resemblance to the “iconic” KitchenAid stand mixer are likely to infringe the KitchenAid trade dress, the Fifth Circuit U.S. Court of Appeals said Aug. 25.
August 24, 2023
Judge Awards Spanish Company Attorney Fees After Confirming Award In Dog Meds Row

COLUMBIA, S.C. — A South Carolina federal judge awarded a Spanish company nearly $150,000 in attorney fees after confirming an arbitral award in which it was ordered to pay a nominal amount of 5,000 euros to two U.S. companies for a dog medication intellectual property dispute but was still determined to be the prevailing party and awarded nearly $1 million worth of attorney fees and arbitration costs.
August 24, 2023
No Trademark Retrial In Nevada Row Between Airline Charter, Airplane Maker

LAS VEGAS — A bid for a jury trial by a counterclaimant who lost at a bench trial on its allegations of trademark infringement and unfair competition was denied by a federal magistrate judge in Nevada Aug. 23.
August 24, 2023
Trademark Dispute Between Isley Brothers Will Proceed, Illinois Federal Judge Rules

CHICAGO — A bid by Ronald Isley for dismissal of his brother Rudolph Isley’s lawsuit seeking a declaration of 50% ownership of “The Isley Brothers” was denied Aug. 23 by a federal judge in Illinois.
August 23, 2023
Dismissal Motion Ordered For J&J Former Debtor’s Suit Over Asbestos Talc Study

TRENTON, N.J. — The author of an asbestos talc study who is accused of fraud by Johnson & Johnson (J&J) spinoff LTL Management LLC must file her proposed motion to dismiss the case by Sept. 8, according to a docket entry by a New Jersey federal judge, who also rejected a pre-motion conference.
August 23, 2023
11th Circuit: Trademark Licensee Can Sue For Federal Unfair Competition

ATLANTA — A federal judge in Georgia erred when deciding that a trademark licensee lacks sufficient ownership rights to maintain an action for federal unfair competition without express authorization from the trademark licensor, the 11th Circuit U.S. Court of Appeals ruled Aug. 22.
August 22, 2023
Judge Adopts Report As To Expert Testimony In ‘Vitamin Energy’ Coverage Suit

PHILADELPHIA —A federal judge in Pennsylvania adopted a magistrate’s report that recommended denying the manufacturer and marketer of a vitamin energy shot’s motion to exclude the testimony of the insurer’s expert to the extent it seeks to exclude the expert from testifying altogether in a coverage dispute arising from an underlying false advertising lawsuit brought by a competitor.
August 22, 2023
2nd Circuit Vacates $2M Damage Award In ‘Kirby’ Sailboat Trademark Row

NEW YORK — Although upholding findings by a federal judge in Connecticut that two former licensees of a sailboat design misappropriated the designer’s name in violation of Connecticut common law, the Second Circuit U.S. Court of Appeals vacated an award of $2,056,736.33 for willful trademark infringement.
August 18, 2023
AI Legal Application Founder Says Japanese Company Is Infringing Trademark

SAN FRANCISCO — A Japanese company and its United States-based entity are a single enterprise that sucked up all available venture capital funding in the artificial intelligence based legal applications by using an already trademarked name, a Arizona-based intellectual property law firm told a federal judge in California in opposing a motion to dismiss California unfair competition law and other claims.
August 15, 2023
OpenAI Says Name Of Competitor ‘Transparent’ Attempt To Leverage Reputation

SAN FRANCISCO — Artificial intelligence company OpenAI Inc. says in a complaint that a competitor adopted a nearly identical name in a “transparent” attempt to “sow consumer confusion” and trade on its hard work and reputation in the wake of the release of ChatGPT.