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

Mealey's Trademarks

February 15, 2023
Trademark Dispute Over LED Micro Lights To Proceed In Washington

SEATTLE — Citing the parties’ “starkly different views” on a likelihood of confusion, a federal judge in Washington on Feb. 14 denied a plaintiff’s bid for summary judgment on allegations of trademark infringement.
February 14, 2023
United States Asks To Argue In High Court Trademark Extraterritoriality Suit

WASHINGTON, D.C. — Citing a “substantial interest” in the outcome of a dispute over extraterritorial application of U.S. trademark laws, the United States filed a motion with the U.S. Supreme Court, seeking to participate in March 21 oral arguments and suggesting that the government’s views “would materially assist the Court in its consideration of this case.”
February 13, 2023
9th Circuit: Standing Lacking At Bench Trial Over Trademark Validity

SAN FRANCISCO — A federal judge in California wrongly proceeded to a bench trial on common-law trademark validity after granting a declaratory judgment plaintiff a summary judgment of noninfringement, the Ninth Circuit U.S. Court of Appeals held Feb. 10.
February 13, 2023
Disney To Supreme Court: ‘Lots Of Hugs’ Bear Trademark Suit Doesn’t Merit Certiorari

WASHINGTON, D.C. — A toy company’s 11-year-old lawsuit alleging infringement of its stuffed animals’ trademark by a movie character does not belong before the U.S. Supreme Court, Disney Enterprises Inc. says in a brief opposing certiorari, asserting that the Ninth Circuit U.S. Court of Appeals properly dismissed the lawsuit by applying Rogers v. Grimaldi.
February 10, 2023
$4M Intellectual Property Fee Not Triggered, 11th Circuit Affirms

ATLANTA — The 11th Circuit U.S. Court of Appeals upheld a Florida federal judge’s rejection of breach of contract claims by an appellant that argued that it was entitled to a $4 million payment when jointly developed intellectual property was included in a reverse triangular merger.
February 10, 2023
N.Y. Appeals Court Affirms Damages Award In Insurers’ Spat Over Insured’s Defense

NEW YORK — A New York appeals court on Feb. 9 affirmed a lower court’s $684,516.81 judgment in favor of an insurer in its breach of contract lawsuit seeking reimbursement from another insurer for the money it already spent providing their mutual insured a defense in an underlying Lanham Act lawsuit, finding that the defendant insurer “fails to articulate any persuasive basis to disturb” the lower court’s damages award.
February 09, 2023
NFTs Bearing Birkin Bags Images Deemed Infringing By New York Federal Jury

NEW YORK — A self-described marketing strategist and entrepreneur was found liable for trademark infringement and dilution by a New York federal jury on Feb. 8 for creating and selling digital “MetaBirkins” images that were linked to nonfungible tokens (NFTs), with the jury awarding $133,000 to Hermès International, manufacturer and owner of the Birkin line of luxury handbags.
February 06, 2023
Summary Judgment Motions Denied In Trademark Suit Over Birkin Bags NFTs

NEW YORK — A month after issuing an order denying cross-motions for summary judgment in a trademark infringement suit centering on nonfungible tokens (NFTs) bearing images of designer Birkin handbags, a New York federal judge issued an opinion on the eve of trial explaining that the motions were denied because genuine issues of dispute exist as to factors such as the artistic relevance of the images and free speech rights under the First Amendment to the U.S. Constitution.
February 06, 2023
Request For Dismissal Of Copyright Ownership Counterclaim Denied

TAMPA, Fla. — A dispute over the television series “The Seahunter” will proceed with a declaratory judgment counterclaim for copyright ownership in place, a federal judge in Florida has ruled.
February 03, 2023
PTO Director Asks High Court To Rule On Whether Famous Names Can Be Trademarked

WASHINGTON, D.C. — Arguing that the Lanham Act bars the registration of celebrities’ and politicians’ names as trademarks, the director of the U.S. Patent and Trademark Office (PTO) filed a petition for certiorari asking the U.S. Supreme Court to provide guidance on whether the denial of such registrations violates the First Amendment to the U.S. Constitution.
February 02, 2023
Bid By Patent, Trademark Plaintiff For Voluntary Dismissal Denied In Tenn.

KNOXVILLE, Tenn. — A defendant accused of patent and trademark infringement successfully opposed a plaintiff’s motion to dismiss its claims without prejudice on Feb. 1, when a Tennessee federal judge agreed that the plaintiff’s purported covenant not to sue is not “unconditional.”
February 01, 2023
Panel: False Advertising Claim Over Christmas Trees Properly Dismissed

NEW YORK — Allegations that Whole Foods Market Inc. falsely advertised balsam fir Christmas trees as Fraser firs fail where a plaintiff is unable to identify any false labels affixed to the trees in question, the Second Circuit U.S. Court of Appeals ruled.
January 30, 2023
In New Jersey Copyright, Trademark Litigation, Defendant Prevails In Part

TRENTON, N.J. — Allegations of copyright infringement leveled in connection with a book that teaches piano to beginners will not proceed, a federal judge in New Jersey ruled, because the accused books do not qualify as derivative works.
January 27, 2023
4th Circuit Upholds Bad Faith Finding In ‘Pru.com’ Domain Dispute

RICHMOND, Va. — A federal judge in Virginia did not err in finding a Chinese internet financial information firm’s $100,000 purchase of pru.com was in bad faith, the Fourth Circuit U.S. Court of Appeals has affirmed.
January 26, 2023
Delaware Federal Judge: Confusion Theory In Trademark Case ‘Plausible’

WILMINGTON, Del. — Allegations of trademark infringement by the owner of “Javo” for coffee concentrates, brews and extracts against the distributor of “Javy”-branded coffee and coffee-related goods will proceed, a federal judge in Delaware ruled Jan. 25.
January 25, 2023
Trademark Injunction Granted To H&R Block Vacated By 8th Circuit

ST. LOUIS — A federal judge in Missouri wrongly found that ordinary consumers would likely be confused by a rebrand of Square Inc. to Block Inc., justifying a preliminary injunction in favor of H&R Block Inc., a divided Eighth Circuit U.S. Court of Appeals panel ruled Jan. 24.
January 24, 2023
Dispute Between Insurance, Shell Companies Over ‘Foremost’ Trademark Reinstated

ATLANTA — A federal judge in Florida’s likelihood-of-confusion analysis in a dispute over the “Foremost” trademark between a multibillion-dollar insurance company and a law firm’s shell company was erroneous, the 11th Circuit U.S. Court of Appeals ruled in reversing a summary judgment ruling and remanding.
January 24, 2023
Indiana Federal Judge Sends Patent, Trademark Case To Washington

INDIANAPOLIS — A patent and trademark dispute between two leaders in the sports apparel and footwear industry will proceed in Washington federal court, where defendant Brooks Sports Inc. is headquartered, a federal judge in Indiana has ruled.
January 20, 2023
Panel Partly Reverses Ruling In Coverage Suit Over Trademark Infringement Claims

ST. LOUIS — The Eighth Circuit U.S. Court of Appeals on Jan. 19 reversed a lower federal court’s grant of summary judgment in favor of an insurer on the issue of whether it was required to reimburse its insured for pre-notice fees in an underlying lawsuit filed in Oregon, affirming the remainder of the court’s summary judgment ruling in favor of the insurer in a coverage dispute arising from underlying trademark infringement claims.
January 20, 2023
Nike Asks 3rd Circuit To Reverse Infringement Ruling Over ‘Cool Compression’ Mark

PHILADELPHIA — An apparel maker’s brief on purported infringement of the “Cool Compression” trademark was “long on emotional rhetoric and short on substantial evidence” to support a jury’s verdict on liability, Nike Inc. tells the Third Circuit U.S. Court of Appeals in a reply brief maintaining that it used the mark descriptively and in good faith.
January 19, 2023
United States, Nike, Campbell Soup Back Jack Daniel’s In High Court Trademark Row

WASHINGTON, D.C. — One week after Jack Daniel’s Properties Inc. filed its opening merits brief asking the U.S. Supreme Court to reverse the Ninth Circuit U.S. Court of Appeals’ “egregiously wrong” finding that the use of its trademarks and trade dress in a parody is protected under the First Amendment to the U.S. Constitution, 13 amicus curiae briefs were filed in support of the whiskey maker on Jan. 18, by parties including the United States, the Motion Picture Association Inc. (MPA), Nike Inc. and Campbell Soup Co.
January 19, 2023
Illinois Federal Judge Dismisses Copyright Claims By Extortionist

CHICAGO — Allegations that myriad media outlets violated the Copyright Act when publishing photographs of a former actor posing alongside celebrities in news articles detailing his arrest for extortion were dismissed Jan. 18 by a federal judge in Illinois.
January 13, 2023
Unfair Competition Claims Over Drinking Vessel Preempted By Patent Law

PHILADELPHIA — A Pennsylvania federal judge granted partial summary judgment on allegations of common-law unfair competition leveled by the maker of the “Beer Bat” over a defendant’s decision to name a competing baseball bat-shaped drinking vessel the “Beverage Bat.”
January 13, 2023
New York Federal Jury Rejects Adidas Trademark Claims Against Fashion Designer

NEW YORK — A jury empaneled in the U.S. District Court for the Southern District of New York on Jan. 12 sided with Thom Browne Inc. on allegations that the fashion designer infringed the three-stripe trademark belonging to adidas America Inc.
January 10, 2023
Trademark Damages Trial Won’t Be Bifurcated From Patent Trial In Delaware

WILMINGTON, Del. — In a Jan. 9 order, a federal judge in Delaware rejected a defendant’s request for a separate trial on damages for its admitted trademark infringement, concluding that the issue can be decided alongside the question of whether the defendant also infringed two patents.