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Mealey's Trademarks

August 11, 2023
Counterclaim For Trademark Cancellation Dismissed By Massachusetts Federal Judge

BOSTON — A dispute over the “NuSpeech” trademark will proceed without a counterclaim for trademark cancellation, a federal judge in Massachusetts ruled Aug. 10, because the counterclaimant fails to assert a commercial interest that has been harmed by the registration.
August 10, 2023
$43M Profit Disgorgement Award In Trademark Row Affirmed By 4th Circuit

RICHMOND, Va. — A judgment by a federal judge in Virginia that included a $43 million award of disgorged profits and a permanent injunction barring a real estate development group led by an individual with the surname “Dewberry” from rebranding itself as “Dewberry Group” will stand, a divided Fourth Circuit U.S. Court of Appeals ruled Aug. 9.
August 04, 2023
Food Manufacturer Defends 3rd Circuit Appeal Of Default, Injunction Denials

PHILADELPHIA— A manufacturer and distributor of Indian foods that owns the U.S. rights to the “Bournvita” trademark tells the Third Circuit U.S. Court of Appeals that a trial court’s denials of its motions for default judgment against purported counterfeiters and a motion for reconsideration constituted final rulings that establish jurisdiction in the appeals court.
August 03, 2023
Amici Brief High Court On 1st Amendment Issues Over ‘Trump Too Small’ Trademark

WASHINGTON, D.C. — The Motion Picture Association Inc. (MPA) filed one of five amicus curiae briefs in a case where the U.S. Supreme Court will consider the constitutionality of a decision by the U.S. Patent and Trademark Office (PTO) to deny registration for trademarks that include the name of a public figure, with the amici weighing in on balancing the interests of the First Amendment to the U.S. Constitution with the protections of the Lanham Act.
August 02, 2023
Orders Related To Proposed Settlement Vacated In Grubhub Faulty Info Class Suit

DENVER — A federal magistrate judge in Colorado issued a minute order vacating orders related to an amended proposed settlement agreement in a class lawsuit by restaurants accusing Grubhub Inc. of deceiving consumers by offering faulty information regarding restaurants that did not partner with it after the parties filed a notice of termination of settlement.
August 02, 2023
Ex-Coach Wins Fee Award In Trademark Dispute With University

CHICAGO — A federal judge in Illinois on Aug. 1 deemed trademark infringement allegations leveled by Saint Xavier University (SXU) against its former head men’s baseball coach sufficiently baseless to warrant an award of attorney fees.
August 01, 2023
Emergency TRO Entered In Trademark, Copyright Row Between Shein, Temu

CHICAGO — A federal judge in Illinois said July 31 that Roadget Business Pte. Ltd., operator of the low-cost fashion and home goods website Shein.com, is likely to succeed on its contributory and vicarious trademark infringement and copyright infringement claims against the operators of the competing website Temu.com.
July 28, 2023
Copyright, Trademark Claims Leveled Over Kushner Documentary Tossed

ROANOKE, Va. — A Virginia federal judge on July 27 granted dismissal of allegations of copyright and trademark infringement by the author of “Slumlord Millionaire,” a how-to book about the real estate industry, in connection with an identically-titled episode of the Netflix Inc. series “Dirty Money.”
July 28, 2023
Award Of Fees, Profits In ‘La Bamba’ Trademark Row Upheld By 6th Circuit

CINCINNATI — A restaurant that incorporated “La Bamba” into its name without the permission of the owner of the trademark for use in connection with restaurant services was correctly ordered by a federal judge in Kentucky to pay $22,907.26 in infringer’s profits, the Sixth Circuit U.S. Court of Appeals said July 27.
July 25, 2023
9th Circuit Clarifies Standard For Willful Blindness In Trademark Cases

SAN FRANCISCO — General knowledge that a party is using a product to engage in trademark infringement is not enough to sustain a finding of willful contributory infringement, the Ninth Circuit U.S. Court of Appeals ruled July 24; instead, according to the panel, a defendant must have knowledge of “specific infringers or instances of infringement.”
July 24, 2023
Dispute Over Alleged Infringement Of ‘Taser’ Trademark Will Go To Trial

LAS VEGAS — A federal judge in Nevada has rejected claims that the term “Taser” has become generic for a class of conducted-energy weapons (CEWs), clearing a path for an upcoming trial on allegations of trademark infringement.
July 21, 2023
After Remand From Supreme Court, 9th Circuit Asks Parties To Brief Trademark Row

SAN FRANCISCO — Jack Daniel’s Properties Inc. and the maker of a dog toy that parodies the “Jack Daniel’s” trademark have been directed by the Ninth Circuit U.S. Court of Appeals to brief, within 21 days, how to proceed following a June vacatur and remand by the U.S. Supreme Court.
July 21, 2023
On Remand, Michigan Federal Judge Again Denies Relief In Trade Dress Case

DETROIT — A renewed motion to enjoin sales of the post-2020, redesigned “ROXOR” off-road vehicle was denied by a federal judge in Michigan, who said application of the safe-distance rule to the trade dress dispute is not warranted.
July 20, 2023
2nd Circuit Affirms: Plaintiff Failed To Show Trademark Ownership

NEW YORK — A federal judge in New York correctly granted a trademark infringement defendant judgment on the pleadings that the action against it fails for lack of ownership, the Second Circuit U.S. Court of Appeals ruled.
July 14, 2023
11th Circuit Affirms Court’s Ruling In Coverage Dispute Over False Advertising Suit

ATLANTA — The 11th Circuit U.S. Court of Appeals on July 13 affirmed a lower federal court’s ruling that a general liability insurance policy’s “failure to conform” exclusion relieved insurers of their duty to defend a generic pharmaceutical manufacturer insured against an underlying lawsuit alleging that it “falsely or misleadingly” advertised its products as generic equivalents to a competitor’s product, further affirming the lower court’s finding that the insurers are not entitled to reimbursement of the legal costs they incurred in defending the insured pursuant to a reservation of rights.
July 14, 2023
Patent, Copyright, False Advertising Claims Won’t Proceed In Utah Dispute

SALT LAKE CITY — A lawsuit by two companies that assert a variety of intellectual property-related claims against a competitor and former employee was trimmed substantially by a federal judge in Utah at the summary judgment stage.
July 14, 2023
Online Firms Brief 9th Circuit On Jack Daniel’s Relevance In ‘Punchbowl’ Mark Row

PASADENA, Calif. — In post-decision, supplemental briefs, two internet-based companies debate in the Ninth Circuit U.S. Court of Appeals whether the U.S. Supreme Court’s recent ruling in Jack Daniel’s Properties Inc. v. VIP Products LLC mandates that their dispute over their uses of the “Punchbowl” trademark merits remand for a trial court to determine whether the Rogers v. Grimaldi test should be applied.
July 12, 2023
‘WallStreetBets’ Creator’s UCL Suit Dismissed Due To Lack Of Trademark Rights

SAN FRANCISCO — A California federal judge on July 11 granted online forum host Reddit Inc.’s motion to dismiss a lawsuit filed against it by an investor and entrepreneur who claims that it violated California’s unfair competition law (UCL) and his trademark in part by banning him from the “WallStreetBets” forum on its platform, which he created, finding that he did not establish trademark rights and that Reddit was immune from his other claims as an online publisher.
July 12, 2023
$6.5M Default Judgment In Trademark Dispute Will Stand, Panel Rules

PHILADELPHIA — Trademark infringement defendants whose misconduct led two law firms to withdraw their representation were properly found to be in default by a U.S. circuit judge sitting by designation in the District of Delaware, the Third Circuit U.S. Court of Appeals said July 11.
July 11, 2023
Panel: Trademark Abandonment Defense Rightly Rejected By Florida Federal Judge

ATLANTA — The 11th Circuit U.S. Court of Appeals has upheld a ruling in favor of a franchisor that alleged that a former franchisee used the “Navaka” trademark after the parties’ implied license was rescinded.
July 06, 2023
9th Circuit: Online Sale, Shipment Of Infringing Product Confers Jurisdiction

SAN FRANCISCO — An Arizona federal judge erred in finding a lack of personal jurisdiction over defendants accused of trademark infringement, the Ninth Circuit U.S. Court of Appeals ruled July 5, because the defendants’ sale and subsequent shipment of allegedly infringing, physical products to Arizona caused an Arizona-based plaintiff harm.
July 06, 2023
‘WallStreetBets’ Creator’s UCL Suit May Proceed While TTAB Case Paused, Judge Says

SAN FRANCISCO — A California federal judge denied online forum host Reddit Inc.’s motion to stay a lawsuit filed by an investor and entrepreneur accusing it of violating California’s unfair competition law (UCL) and violating his trademark in part by banning him from the “WallStreetBets” forum on its platform, citing a suspension of a related proceeding ordered by the Trademark Trial and Appeal Board (TTAB).
June 26, 2023
COMMENTARY: Parody Proves To Be “Whiskey” Business—But U.S. Supreme Court Sidesteps Clarifying The Rogers Test In Recent Trademark Decision

By Paula Hopkins and Victoria Villella
June 29, 2023
High Court: Only Domestic Trademark Uses In Commerce Are Actionable

WASHINGTON, D.C. — The 10th Circuit U.S. Court of Appeals wrongly applied federal trademark law to infringing uses in commerce of a disputed trademark that took place entirely abroad, the U.S. Supreme Court ruled today.
June 27, 2023
Federal Circuit Vacates, Remands Trademark Board Likely Confusion Findings

WASHINGTON, D.C. — In sustaining opposition to a proposed registration for the “FL FLEX” trademark on grounds of likely confusion with three existing trademarks making use of the word “FLEX” the Trademark Trial and Appeal Board made several “errors of significance,” the Federal Circuit U.S. Court of Appeals ruled June 26.