Mealey's Trademarks
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June 01, 2022
1st Amendment Protects Trademark Use, California Federal Judge Rules
LOS ANGELES — Efforts by a self-styled “social innovation consultancy firm” to control the use of the “Be Woke. Vote” trademark fail because the trademark infringement defendants’ use of the phrase is “fundamentally noncommercial,” a federal judge in California ruled May 31 in granting the defendants judgment on the pleadings.
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June 01, 2022
Dispute Over ‘Rugged Entrepreneur’ Mark Sent To Ohio Federal Court
JACKSONVILLE, Fla. — In a May 26 holding, a federal judge in Florida said the inconvenience of litigating parallel cases involving the “Rugged Entrepreneur” trademark in two separate forums, along with the interests of justice and judicial efficiency, necessitate transfer of the Florida action to the Southern District of Ohio.
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May 26, 2022
Trademark Infringement Row Dismissed As Sanction By Virginia Federal Judge
ABINGDON, Va. — Citing the “breathtaking nature and extent” of various misrepresentations by a trademark infringement plaintiff, a federal judge in Virginia on May 25 agreed with a defendant that the action should be dismissed with prejudice as a sanction.
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May 23, 2022
In New York Counterfeiting Case, Roku Denied Preliminary Injunction
NEW YORK — Allegations of trademark infringement and counterfeiting leveled by Roku Inc. against more than 100 defendants will proceed without a preliminary injunction in place, a federal judge in New York ruled May 20.
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May 23, 2022
California Federal Judge Denies Injunction In ‘Pinkberry’ Franchise Row
LOS ANGELES — Despite finding that a franchisor demonstrates some likelihood of success on allegations that a former franchisee continues to infringe the “Pinkberry” trademark, a federal judge in California on May 20 denied entry of preliminary injunctive relief in the case.
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May 20, 2022
Panel Affirms Relief, Says THC-Containing Products Aren’t Illegal
SAN FRANCISCO — The Ninth Circuit U.S. Court of Appeals on May 19 upheld a preliminary injunction barring the sale of allegedly counterfeit e-cigarette and vaping products, rejecting a copyright infringement and unfair competition defendant’s claim that certain tetrahydrocannabinol (THC)-containing products cannot be trademarked or copyrighted because THC is unlawful under federal law.
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May 18, 2022
Application Of Laches To Trademark Claims Was Error, Panel Rules
ST. LOUIS — A dispute between two insurance-related companies over the “AIG” trademark was reinstated May 13 by the Eighth Circuit U.S. Court of Appeals, which reversed findings by a Missouri federal judge that the case is barred by the doctrine of laches.
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May 17, 2022
9th Circuit Affirms Dismissal Of Trademark Suit Over Instagram ‘Hoax-19’ Account
PASADENA, Calif. — The sua sponte dismissal of a trademark infringement suit brought by Arizona State University (ASU) against the John Doe creator of an Instagram account that mocked the university’s Covid-19 policies was affirmed May 13 by a Ninth Circuit U.S. Court of Appeals panel that found no error in a judge’s determination that there was no likelihood of confusion from Doe’s use of ASU’s trademarks.
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May 16, 2022
9th Circuit Upholds $500K+ Fee Award In Counterfeiting Case
SAN FRANCISCO — In an unpublished opinion filed May 11, the Ninth Circuit U.S. Court of Appeals agreed with a California federal judge that allegations of counterfeiting leveled in connection with the “EYE DEW” trademark qualify as exceptional.
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May 11, 2022
Magistrate Settles Discovery Disputes In Duracell ‘Optimum’ Trademark Suit
NEWARK, N.J. — A company that sued Duracell U.S. Operations Inc. for trademark infringement related to its “Optimum” batteries failed to show that Duracell’s sales projections are relevant to its claims or to an award, a New Jersey federal magistrate judge held May 6 in a ruling that resolved several ongoing discovery matters between the parties.
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May 03, 2022
Magistrate Denies Summary Judgment In Premium Cigar Maker’s Trademark Claim
MIAMI — A Florida federal magistrate judge on April 29 denied motions for summary judgment brought by each side in a trademark dispute between a premium cigar maker and a manufacturer of discount cigarillos on all but one claim, finding that too many issues of fact are in dispute regarding whether consumers are likely to be confused by the similarity in the parties’ marks.
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May 03, 2022
Government Views Sought By High Court In Dispute Over Foreign Infringement
WASHINGTON, D.C. — In its May 2 order list, the U.S. Supreme Court called for the views of the U.S. solicitor general on a decision by the 10th Circuit U.S. Court of Appeals that endorsed extraterritorial application of the Lanham Act to find trademark infringement in a dispute over purely foreign sales.
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May 02, 2022
Michaels’ Bid To Dismiss Copyright, Trademark Claims Fails In Pennsylvania
PHILADELPHIA — A federal judge in Pennsylvania on April 29 denied a motion to dismiss by Michaels Stores Inc., finding that allegations that the craft chain is liable for trademark and copyright infringement are adequately plead.
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May 02, 2022
Test Prep Company Can’t Shake Texas Trademark Claims
DALLAS — A federal judge in Texas on April 28 denied a motion to dismiss allegations of federal and state infringement leveled against a test prep and tutoring company over the “Varsity” trademark.
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April 28, 2022
Trade Secret Defendant’s Trademark Counterclaims Tossed In California
SACRAMENTO, Calif. — A trade secret misappropriation dispute between a former couple will proceed in California without a counterclaim for infringement of the “Bioworld” and “Bioworld Products” trademarks in place, a federal judge there ruled April 26.
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April 27, 2022
Mich. Federal Judge Cites Geographic Descriptiveness Of Mark, Denies Relief
DETROIT — In an April 22 holding, a federal judge in Michigan refused to enter preliminary injunctive relief in a dispute between breweries over the “Three Bridge” trademark on grounds that the mark owner “has no likelihood of success on the merits.”
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April 22, 2022
9th Circuit: Confusion Unlikely In Dispute Over Distilled Spirits
SAN FRANCISCO — In an April 21 holding, the Ninth Circuit U.S. Court of Appeals clarified that “under the distinctive regime established for the Madrid Protocol,” a foreign appellant’s subsequent bona fide use of its registered trademark on certain products gives rise to a priority of right to enforce the trademark under the Lanham Act.
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April 21, 2022
Panel Says Trademark Examiner Did Not Err In Refusing Registration
WASHINGTON, D.C. — In a summary order issued April 20, the Federal Circuit U.S. Court of Appeals left intact a final written decision by the Trademark Trial and Appeal Board that “Scientific Study of God” is merely descriptive.
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April 21, 2022
In Kentucky Copyright, Trademark Case, Fee Request Partly Granted
LEXINGTON, Ky. — A Kentucky federal judge on April 19 agreed that a prevailing copyright infringement defendant is entitled to reimbursement of its attorney fees but disagreed with the amount recommended by a magistrate judge.
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April 20, 2022
In Illinois Infringement Action, Federal Judge Cancels Trademark
CHICAGO — An infringement defendant is the senior user of the “This We’ll Defend” trademark and a plaintiff’s federal registration for the same must be canceled, a federal judge in Illinois ruled April 12.
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April 18, 2022
Minnesota Trademark Claim Over Falsified Credentials Yields Injunction
MINNEAPOLIS — A federal judge in Minnesota in an April 14 order issued a permanent injunction barring a trademark infringement defendant from holding himself out as credentialed by the American Registry of Radiologic Technologists (ARRT).
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April 18, 2022
Foreign Firms Dispute Extraterritorial Application Of Lanham Act In High Court
WASHINGTON, D.C. — In an April 12 reply brief supporting their petition for certiorari, a group of foreign companies asks the U.S. Supreme Court to find that the 10th Circuit U.S. Court of Appeals improperly applied the Lanham Act extraterritorially to find trademark infringement in a dispute over purely foreign sales.
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April 08, 2022
Panel Says First Sale Doctrine Could Apply In Dispute Over ‘Bluetooth’
SAN FRANCISCO — The Ninth Circuit U.S. Court of Appeals on April 6 vacated a Washington federal judge’s partial summary judgment that the first sale doctrine is inapplicable when a trademarked product is incorporated into a new product.
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April 04, 2022
D.C. Federal Judge Won’t Block Publication Of Industry Standards
WASHINGTON, D.C. — In a March 31 ruling, a District of Columbia federal judge said that the online publication of industry standards already incorporated into law qualifies as a fair use and that an injunction barring publication of unincorporated standards is not warranted “in light of the meager evidence of irreparable harm and the possibility that these standards will be incorporated into law at a later date.”
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March 31, 2022
Panel Vacates Denial Of Injunctive Relief On Trademark Claims
NEW YORK — A pizza restaurant was erroneously denied preliminary injunctive relief barring ongoing, unauthorized use of the “Colony Grill” trademark, the Second Circuit U.S. Court of Appeals ruled March 30.