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

Mealey's Trademarks

October 17, 2024
Panel Issues Split Ruling In Tire Trade Dress Suit On Discovery, Daubert, Privilege

WASHINGTON, D.C. — In a long-running trade dress dispute between two tire companies, a Federal Circuit U.S. Court of Appeals panel partly affirmed a trial court ruling, deeming the asserted trade dress functional and, therefore, not protectable and upholding discovery sanctions and expert testimony exclusion, while reversing in part by finding that litigation privilege barred the defendant’s counterclaims.
October 16, 2024
Pa. Federal Judge Agrees To Trim Counterclaims Filed Against CPAP Equipment Maker

PITTSBURGH — A federal judge in Pennsylvania partially adopted a magistrate judge’s recommendation to deny a motion filed by SoClean Inc., a manufacturer of equipment that uses ozone to clean and disinfect continuous positive air pressure (CPAP) sleep apnea devices and respirators, to dismiss counterclaims filed by Koninklijke Philips N.V., Philips North America LLC and Philips RS North America LLC (collectively, Philips) but agreed to dismiss the Lanham Act trademark dilution counterclaim and found another claim time-barred.
October 15, 2024
5th Circuit: AI Real Estate Firm Forfeited Arguments On Appeal Of Trademark Suit

NEW ORLEANS — A panel of judges in the Fifth Circuit U.S. Court of Appeals on Oct. 14 dismissed a defendant artificial intelligence-based real estate website’s appeal of a Texas federal judge’s grant of a plaintiff real estate company’s motion to dismiss its trademark claims in the wake of the defendant website’s shuttering; the panel held that the defendant website “forfeited any argument that this court has jurisdiction to hear its appeal.”
October 15, 2024
Federal Judge Dismisses Most Trademark, Patent Claims For Lack Of Jurisdiction

LOS ANGELES — A federal judge in California dismissed most of the claims brought by a pro se plaintiff who accused a blind manufacturing company of infringing on marks he held, finding that the plaintiff failed to establish personal jurisdiction or that the court was the appropriate venue.
October 14, 2024
Magistrate: Dental Product Maker Can’t Add Copyright Claim To Trademark Suit

GREENSBORO, N.C. — A plaintiff dental hygiene company cannot amend its trademark infringement complaint to add an allegation that defendant companies that make similar products also infringed on the plaintiff company’s copyright, along with other allegations, a federal magistrate judge in North Carolina held Oct. 11, saying that granting the motion would be prejudicial to the defendant companies.
October 14, 2024
Judge Tosses Much Of Trademark Row Between Queens Ambulance Companies

NEW YORK — A federal judge in New York allowed trademark infringement claims to survive a motion to dismiss in a dispute between a defendant ambulance company serving neighborhoods in the borough of Queens and a plaintiff company that formerly provided similar services, but dismissed false advertising and a series of other claims brought by the plaintiff ambulance company, holding that the company failed to adequately substantiate the claims.
October 14, 2024
U.S. Government Wants To Participate In High Court Argument In Trademark Case

WASHINGTON, D.C. — The U.S. government on Oct. 11 asked the U.S. Supreme Court to allow it to participate as an amicus curiae in oral arguments when the high court considers whether courts under the Lanham Act “can include an order for the defendant to disgorge the distinct profits of legally separate non-party corporate affiliates” and whether the Fourth Circuit U.S. Court of Appeals improperly upheld a $43 million disgorgement award against the defendant.
October 11, 2024
7th Circuit: New Issues On Appeal Doom Claims For Intellectual Property Royalties

CHICAGO — The Seventh Circuit U.S. Court of Appeals affirmed an Indiana federal judge’s dismissal of a breach of contract suit brought by a plaintiff manufacturer who claimed that a defendant manufacturer allegedly failed to pay royalties for a lung-expansion therapy device required by a licensing agreement; the panel noted that the plaintiff company predicated its arguments on appeal on a new theory not raised before the district court.
October 09, 2024
2nd Circuit: Keyword Search Ads Based On Trademarks Not Infringing

NEW YORK — Affirming a New York federal judge’s entry of judgment on the pleadings in a trademark dispute between competing eyewear brands, the Second Circuit U.S. Circuit Court of Appeals on Oct. 8 said that “the mere act of purchasing a search engine keyword that is a competitor’s trademark does not alone, in the context of keyword search advertising, constitute trademark infringement.”
October 09, 2024
Parties Stipulate To Dismissal Of Trademark Suit Involving ‘FLORIDA MAN’ Mark

WEST PALM BEACH, Fla. — In a paperless order, a Florida federal judge granted a plaintiff online media company and a defendant event company’s stipulation to dismiss their dispute stemming from the allegedly infringing use of the word mark FLORIDA MAN, after the judge in June held that the mark is not sufficiently famous for the media company’s complaint to survive in full.
October 09, 2024
7th Circuit: No Fees In Trademark Dispute Over Pipes For Smoking

CHICAGO — A federal judge in Illinois was right to deny a smoking pipe manufacturer’s motion for attorney fees after a plaintiff trademark owner voluntarily dismissed with prejudice his infringement claim against the company, a panel of the Seventh Circuit U.S. Court of Appeals held, finding that the defendant company failed to show how the case is “exceptional” as required for attorney fees under the Lanham Act.
October 08, 2024
High Court Rejects Law Firm’s Challenge To USPTO Domicile Address Rule

WASHINGTON, D.C. — The U.S. Supreme Court on Oct. 7 denied a law firm’s petition for a writ of certiorari, leaving in place a finding from the Federal Circuit U.S. Court of Appeals that a rule that bars reliance on a P.O. Box address in the broader U.S. Patent and Trademark Office (USPTO) requirement that trademark applicants list domestic counsel was not arbitrarily enforced against the firm.
October 07, 2024
Judge: Invisible Fence Established Jurisdiction In Trademark Row With Competitor

KNOXVILLE, Tenn. — A federal judge in Tennessee denied a motion from a pet-tracking technology company and certain of its executives to dismiss a trademark infringement suit brought against it by a plaintiff company specializing in invisible pet boundaries for backyard use, holding that the defendant company was wrong to argue that the District Court lacked personal jurisdiction.
October 04, 2024
Federal Circuit Reverses Summary Judgment On Counterclaim In Crocs’ Patent Suit

WASHINGTON, D.C. — A federal judge in Colorado was wrong to grant summary judgment in favor of Crocs Inc. on a counterclaim of false advertising brought by a defendant shoe company in a sprawling patent infringement case originally filed nearly two decades ago, a panel of the Federal Circuit U.S. Court of Appeals held Oct. 3.
October 04, 2024
Judge Denies Code Publisher’s Injunction Bid, Citing Likely Fair Use

PHILADELPHIA — A federal judge in Pennsylvania denied a motion for a preliminary injunction brought by a publisher of technical standards for a number of industries, holding that the publisher is unlikely to prevail on claims of both copyright and trademark infringement it brought against a company it said posted copies of its codes to its website without permission; the judge agreed with the defendant company and certain of its executives that a fair use defense likely applies.
October 02, 2024
Judge: Confusion Not Likely Between Competing Irish Butter Trade Dresses

NEW YORK — A federal judge largely granted a defendant food company’s motion for summary judgment in a trademark dispute involving the packaging of Irish butter, holding that the company’s butter is unlikely to be confused with the Irish butter sold by a plaintiff company due to dissimilarities in the packaging.
October 02, 2024
Judge OKs Preliminary Injunction In Patent Fight Over Wall Socket Cover

MIAMI — A federal judge in Florida granted a plaintiff electrical appliance company’s motion for a preliminary injunction on the company’s claims that a defendant company violated its patent with an allegedly infringing wall socket organizer product, affirming a federal magistrate judge’s holding that the plaintiff company adequately displayed its likelihood of success on the merits.
October 01, 2024
11th Circuit Affirms Judge’s Entry Of Trademark Suit Settlement Terms

ATLANTA — The 11th Circuit U.S. Court of Appeals on Sept. 30 rejected arguments from the former president of a servicemembers’ families organization in a trademark dispute with the organization after her ouster, holding that an Alabama federal judge did not introduce new settlement terms into an order memorializing the settlement between the parties that were not agreed upon.
September 30, 2024
Advertisers Appeal Order Requiring Wind-Down Of Use Of Marks To 9th Circuit

LOS ANGELES — Defendant advertising firms that were ordered by a California federal judge to begin winding down their use of marks a plaintiff firm says infringe on its word mark “MARS” on Sept. 27 appealed the judge’s entry of a preliminary injunction in the plaintiff firm’s favor.
September 27, 2024
2nd Circuit Affirms $33M In Damages In Diabetic Test Strip Trademark Fight

NEW YORK — A panel of judges in the Second Circuit U.S. Court of Appeals on Sept. 26 upheld a New York federal judge’s entry of default judgment and damages against a wholesaler and its principals accused by a manufacturer of diabetic test strips of trademark infringement for selling the strips without permission, holding that the wholesaler’s intentional withholding of discovery information justified the finding.
September 27, 2024
Judge: Rogers Test Precludes Trademark Suit Over F1 Team Leader’s Book

LOS ANGELES — A federal judge in California dismissed with prejudice a trademark infringement suit brought by a motor vehicle parts company against a member of the Formula 1 team it owns and his publisher, holding that the team member’s use of the company’s logos in photos in his book about his time in F1 are not infringing.
September 25, 2024
Judge: Man Owes Millions For Using American Airlines Marks In Hiring Grift

MIAMI — A man accused by American Airlines Inc. of trademark and copyright infringement for using the company’s intellectual property while allegedly running a scheme to trick job applicants into paying for fake background checks owes the company more than $3 million in damages and attorney fees, a federal judge in Florida held after granting summary judgment to the airline on most of its claims.
September 23, 2024
Judge Largely Denies Summary Judgment Bids In Penn State Cybersquatting Suit

HARRISBURG, Pa. — In a pair of lengthy orders, a federal judge in Pennsylvania granted summary judgment in favor of the Pennsylvania State University (Penn State) on a counterclaim of reverse domain name hijacking brought by a defendant recreational vehicle (RV) company the university said infringed on certain of its trademarks, holding that the RV company failed to show that the university caused the relevant domain name to be suspended.
September 20, 2024
1st Circuit: Puerto Rican Food Company Abandoned Chicken Mark

BOSTON — A federal judge in Puerto Rico correctly held that a defendant food company abandoned its POLLO PICÚ mark when granting summary judgment in favor of a plaintiff company that sought to use the mark, a panel of judges in the First Circuit U.S. Court of Appeals held Sept. 19, saying the defendant company failed to show that it intended to resume its use of the mark.
September 20, 2024
Most Claims In Pesticide Trademark, Copyright Row Survive Motion To Dismiss

COLUMBUS, Ohio — A federal judge in Ohio largely denied a defendant pesticide manufacturer’s motion to dismiss some trademark and copyright infringement claims brought against it by competitor plaintiff companies who allege that the defendant copied package design, holding that the plaintiff companies plausibly alleged infringement.