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

Mealey's Trademarks

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.
April 19, 2024
Bank Of America Beats Trademark Claims By Search Engine Operator

DENVER — Almost three years after reinstating a trademark infringement action against Bank of America Corp. (BofA), the 10th Circuit U.S. Court of Appeals on April 18 affirmed a Colorado federal judge’s decision on remand to again reject the allegations.
April 18, 2024
Laches Presumption Not Rebutted, 3rd Circuit Says, Barring Relief, Award

PHILADELPHIA — A federal judge in New Jersey in a case on remand for a second time failed to properly apply the presumption in favor of laches, the Third Circuit U.S. Court of Appeals ruled April 17 in a win for a nonprofit ordered to pay more than $7.8 million in disgorged trademark infringer’s profits it earned in Texas.
April 17, 2024
In Trademark Row Over Conference Name, 2nd Circuit Vacates Injunction

NEW YORK — A federal judge in New York abused her discretion in preliminarily enjoining New York City and Fire Department of New York (FDNY, collectively) from using the “Medical Special Operations Conference” trademark, the Second Circuit U.S. Court of Appeals ruled April 16, deeming the term descriptive.
April 16, 2024
Panel: Features Singled Out In Trade Dress Application Lack Distinctiveness

RICHMOND, Va. — An application to register the tube-shaped ankle collar, hexagonal eyelets and other features of Timberland boots was properly rejected by the U.S. Patent and Trademark Office for lacking the distinctiveness required for trade dress protection, the Fourth Circuit U.S. Court of Appeals decided April 15 in a case that drew the interest of the International Trademark Association (INTA) as amicus curiae.
April 16, 2024
Panel: Ad Use Of Flag, Plea To Buy American Is Not Literally False

DENVER — A request for damages in connection with the use of a construction equipment company’s copyrighted photographs in alleged false advertisements that implored consumers to buy a competitor’s American-made products was rightly rejected by a federal judge in Oklahoma, the 10th Circuit U.S. Court of Appeals has ruled.
April 15, 2024
Leap Year Dooms Bid For Certiorari In Vans Trademark Litigation

WASHINGTON, D.C. — An opposed motion for leave to file a petition for a writ of certiorari out of time by the maker of “Wavy Baby” shoes accused of infringing Vans Inc.’s trademarks and trade dress was denied April 15 by the U.S. Supreme Court.
April 12, 2024
Activision Must Face ‘Warzone’ Trademark Counterclaim In California

LOS ANGELES — A federal judge in California on April 11 lifted a previously entered stay of discovery in litigation over “Call of Duty: Warzone” and the “WARZONE” trademark, which Activision Inc. stands accused of infringing by a counterclaimant, in denying the videogame maker’s motion for judgment on the pleadings.
April 11, 2024
Organization, Former President Argue In 11th Circuit Over Trademark Settlement

ATLANTA — An Alabama federal court had jurisdiction to issue an order memorializing the settlement terms accompanying a voluntary dismissal of trademark infringement and cybersquatting claims against its former president, a servicemembers’ families organization argues in a brief to the 11th Circuit U.S. Court of Appeals, calling the ousted president’s appeal meritless.
April 11, 2024
Sanctions Discovery Order In Trademark Row Between ICEE, Slush Puppie Stands

CINCINNATI — A federal judge in Ohio on April 10 said he won’t reconsider his August bench ruling that granted discovery on a defendant’s request for sanctions against opposing counsel, in a contractual dispute involving a fabricated trademark license that was presented as valid for more than two years of litigation.
April 11, 2024
No Disparagement Alleged, No Advertising Injury Coverage Triggered, Panel Affirms

NEW YORK — The Second Circuit U.S. Court of Appeals held that an underlying class action lawsuit brought against the manufacturer of Wipe Out! wipes and sprays failed to allege disparagement and, therefore, its general liability insurance policy’s personal and advertising injury coverage was not triggered, affirming a federal court’s dismissal of the insured’s lawsuit seeking coverage for underlying allegations that it made false and misleading claims on the labels of three of its products.
April 10, 2024
Judge Won’t Reconsider Ruling That OpenAI Is Mark’s Owner

SAN FRANCISCO — A company and its owner have not shown that a finding that OpenAI Inc. is the only bona fide user of a trademark requires reconsideration or was reached in error, and the defendants cannot simply change attorneys and seek “a re-do” of the resulting preliminary injunction ruling, a federal judge in California said.
April 08, 2024
Verdict, Award In Favor Of Sprint On Trademark, ACPA Claims Upheld

ATLANTA — Efforts by sellers of counterfeit mobile phones to undo an award of $4.5 million in statutory damages in favor of Sprint Communications LLC have failed, with the 11th U.S. Circuit Court of Appeals deeming a jury verdict of cybersquatting, infringement and counterfeiting supported by ample evidence.
April 04, 2024
California Federal Judge Offers Glimpse At Hurdles In TikTok IP Row

SAN FRANCISCO — In advance of a planned April 5 hearing on a motion to dismiss copyright infringement and false advertising claims leveled against TikTok Inc. and others, a federal judge in California has directed the video sharing app to be prepared to defend its position that the registration requirement in federal copyright law extends to copyrights registered abroad.
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.
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.
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.
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.
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.
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.
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.
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.