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Preview: LexisNexis® Mealey's™ Trademarks Legal News

LexisNexis® Mealey's™ Trademarks Legal News

Headline Trademarks Legal News from LexisNexis®


In Issue Of First Impression, 11th Circuit Applies Octane In Lanham Act Case
ATLANTA - A Florida federal judge did not err in awarding attorney fees to a defendant accused of false advertising, because the case qualifies as "exceptional" under the U.S. Supreme Court's holding in Octane Fitness, LLC v. ICON Health & Fitness, Inc., the 11th Circuit U.S. Court of Appeals ruled March 8 in what it deemed an issue of first impression (Edward Tobinick MD v. Dr. Steven Novella, No. 16-16210, 11th Cir., 2018 U.S. App. LEXIS 5845).

New York Federal Judge Won't Reconsider Jurisdiction Ruling In Counterfeiting Case
NEW YORK - A Texas-based website accused of infringing the copyrights and trademarks of textbook maker McGraw-Hill Global Education Holdings LLC and others was denied reconsideration on March 5 of an earlier ruling that rejected the website's assertion of lacking personal jurisdiction (McGraw-Hill Global Education Holdings LLC, et al., v. Mehul Mathrani, et al., No. 16-8530, S.D. N.Y., 2018 U.S. Dist. LEXIS 35541).

California Federal Judge Sides With Ratt Founder In Trademark Dispute
LOS ANGELES - A purported assignment of the "Ratt" trademarks in 1997 was declared invalid March 6 by a California federal judge, in what marks a win for the original founding member of the famed 1980s heavy metal band (WBS Inc. v. Stephen Pearcy, No. 16-3495, C.D. Calif., 2018 U.S. Dist. LEXIS 36640).

Trade Secret, Trademark And Copyright Claims Survive Dismissal Motions
DETROIT - Ford Motor Co. has shown that its competitor and its U.S. distributor in the automobile diagnostics industry stole certain of its trade secret and copyrighted source code and used the information to reverse-engineer its competing diagnostic tools in violation of state and federal law and illegally used Ford's trademarked logos in the process, a federal judge in Michigan ruled Feb. 26 in denying the defendants' motions to dismiss (Ford Motor Co. v. Launch Tech Co. Ltd., No. 17-12906, E.D. Mich., 2018 U.S. Dist. LEXIS 29923).

Illinois Federal Judge Denies Summary Judgment In Mark Cancellation Dispute
CHICAGO - A plaintiff seeking review of a cancellation by the Trademark Trial and Appeal Board (TTAB) of three trademarks relating to cigarette rolling papers was denied summary judgment by an Illinois federal judge on March 12 (DRL Enterprises Inc. v. North Atlantic Operating Company Inc., et al., No. 16-8384, N.D. Ill., 2018 U.S. Dist. LEXIS 40191).

Hacky Sack Champ's Lanham Act Claim Properly Dismissed, 7th Circuit Says
CHICAGO - In a March 9 summary order, the Seventh Circuit U.S. Court of Appeals turned away a challenge of an Illinois federal judge's rejection of Lanham Act, 15 U.S.C. 1125(a)(1)(A), false endorsement claims stemming from the use by Wendy's International Inc. of his identity in a 2013 promotion (Johannes Martin v. Wendy's International Inc., et al., No. 17-2043, 7th Cir., 2018 U.S. App. LEXIS 5988).

Formalwear Association Granted Default Judgment Over Counterfeiting Websites
TRENTON, N.J. - A New Jersey federal judge on March 9 deemed 15 websites that were selling counterfeit bridal and prom apparel to be in default for failing to respond to trademark infringement claims against them, leading her to grant default judgment, injunctive relief and damages to a plaintiff formalwear association (American Bridal & Prom Industry Association Inc., et al. v., et al., No. 3:17-cv-02454, D. N.J., 2018 U.S. Dist. LEXIS 38898).

Jewelry Brand Asserts Infringement, UCL Claims In California Federal Court
LOS ANGELES - A California jewelry brand on March 9 sued numerous companies, asserting claims for trademark infringement and violation of California's unfair competition law (UCL), alleging that they are making and selling imitations of its jewelry pieces (Zenga Inc. v. K3 Jewelry, et al., No. 2:18cv1983, C.D. Calif.).

California Federal Judge Deems 'Major University' Claim False, Material
SAN DIEGO - A supplement maker's claim that clinical study results on Lipozene were derived from a "major university study" were false, according to a Feb. 21 ruling by a California federal judge, because the study was not affiliated with a university (Obesity Research Institute LLC v. Fiber Research International LLC, No. 15-595, S.D. Calif., 2018 U.S. Dist. LEXIS 28025).

10th Circuit Says False Advertising Claim Properly Rejected By Kansas Judge
DENVER - A Kansas federal judge did not err in granting a defendant summary judgment on allegations that it committed false advertising when it warned customers that a competitor's in-car mobile surveillance system was potentially infringing of a patent, the 10th Circuit U.S. Court of Appeals ruled Feb. 16 (Digital Ally Inc. v. Utility Associates Inc., No. 17-3092, 10th Cir., 2018 U.S. App. LEXIS 3674).

Judge Refuses To Dismiss Support Wear Maker's UCL, Infringement Claims
SAN FRANCISCO - A California federal judge on Feb. 15 denied a maternity wear company's motion for judgment on the pleadings, finding that it would be premature to dismiss another company's claims for trademark infringement and that its claim for violation of California's unfair competition law (UCL) was not preempted (Blanqi LLC v. Bao Bei Maternity, et al., No. 3:17-cv-05759, N.D. Calif., 2018 U.S. Dist. LEXIS 26069).

Restaurant 'Adequately Alleges' Infringement Threat In Franchise Case, Judge Says
SAN JOSE, Calif. - A federal judge in California on Feb. 20 denied a motion to dismiss a franchise dispute involving two restaurants because the plaintiffs' amended complaint "adequately alleges" a threat of imminent use of a trademark that would constitute infringement (Jgx Inc. v. Jon Handlery, et al., No. 17-cv-00287-BLF, N.D. Calif.; 2018 U.S. Dist. LEXIS 27079).

Judge Permanently Enjoins Hot Sauce Makers From Infringing On Trademarks
LOS ANGELES - A California federal judge on Feb. 27 granted a hot sauce maker's request for default ruling and permanent injunction against two individuals in relation to its claims for trademark infringement and violation of California's unfair competition law (UCL), finding that without an injunction, the individuals will likely continue to infringe on the marks (Tapatio Foods LLC v. Ingrid Veronica Ponce, et al., No. 17-7530, C.D. Calif., 2018 U.S. Dist. LEXIS 31864).

Judge Refuses To Grant Preliminary Injunction In Dispute Over Infringement Claims
SYRACUSE, N.Y. - A New York federal judge on Feb. 21 denied a manufacturer insured's motion for a preliminary injunction seeking to require an insurer to pay its defense in an underlying copyright, trademark and patent infringement lawsuit brought by GoPro Inc. (360Heros, Inc. v. Mainstreet America Assurance Company, No. 17-549, N.D. N.Y., 2018 U.S. Dist. LEXIS 27443).

Ex-Band Member Denies 'Boston' Mark Infringement, Contract Breach
BOSTON - A former guitarist for the multiplatinum-selling band Boston tells the First Circuit U.S. Court of Appeals in a Feb. 20 cross-appellant brief that he did not use the band's trademark beyond the guidelines of a 1983 settlement agreement and, therefore, he did not engage in breach of contract (David Thomas Scholz v. Barry Goudreau, No. 17-1264, 1st Cir.).

Cyprus Website Operator Claims Improper Service In Trademark Suit
SAN FRANCISCO - Disputing that it infringed the trademark of an American "sugar daddy" website operator, a Cyprus-based firm argues in a March 9 reply in the Ninth Circuit U.S. Court of Appeals that a trial court's entry of default judgment against it should be vacated for improper service (Reflex Media Inc. v. Apiriliaco Ltd., et al., No. 17-55505, 9th Cir.).

Citing Walden, 7th Circuit Says Jurisdiction Lacking In Trademark Case
CHICAGO - In a Jan. 31 holding, the Seventh Circuit U.S. Court of Appeals reversed, on jurisdictional grounds, an Illinois federal judge's determination that a Florida corporation is liable for trademark infringement (Ariel Investments LLC v. Ariel Capital Advisors LLC, No. 17-1516, 7th Cir., 2018 U.S. App. LEXIS 2412).

Trade Dress Defendant Loses Bid For New Trial In Washington Federal Court
SEATTLE - In a Feb. 14 ruling, a Washington federal magistrate judge largely rejected efforts by a defendant to undo a December jury verdict of trade dress infringement, denying a request for a new trial but conditioning that denial upon a plaintiff's acceptance of a remittitur that would reduce damages in the case from $193,598 to $167,239 (National Products Inc. v. Arkon Resources Inc., No. 15-1553, W.D. Wash., 2018 U.S. Dist. LEXIS 24436).

Federal Judge Enjoins Franchisee From Using IHOP Marks At 3 Restaurants
MOBILE, Ala. - An Alabama federal judge on Feb. 7 granted a motion by IHOP Restaurants LLC and IHOP Franchisor LLC for a preliminary injunction enjoining a franchisee from using its mark or any trademark that is confusingly similar to the IHOP mark at restaurants (IHOP Restaurants LLC, et al. v. Moeini Corp., No. 17-00570, S.D. Ala., 2018 U.S. Dist. LEXIS 19707).

Federal Judge Enjoins Hot Sauce Maker From Infringing On Trademarks
LOS ANGELES - A California federal judge on Feb. 12 entered a default judgment on claims for violation of California's unfair competition law (UCL) and trademark infringement asserted by a maker of hot sauce and granted a permanent injunction in its favor, enjoining another hot sauce maker from making or selling certain products containing similar marks (Tapatio Foods LLC v. Isaac Granados, No. 17-7532, C.D. Calif., 2018 U.S. Dist. LEXIS 23618).

Men's Salon Franchisor Sues Franchisee For Trademark Infringement
SANTA ANA, Calif. - A men's salon franchisor filed a complaint on Jan. 18 in a California federal court accusing one of its franchisees of improperly terminating its franchise agreement and continuing to use its trademarked items and confidential information while operating a salon under a different name (Ultimate Franchises, Inc., et al. v. Amyn Sachedina, et al., No. 18-97, C.D. Calif.).

NCAA Alleges Dealerships Violated UCL, Infringed On March Madness Mark
LOS ANGELES - The National Collegiate Athletic Association (NCAA) on Jan. 26 sued the operators of vehicle dealerships in relation to the alleged use of its trademark, asserting causes of action for infringement and violation of California's unfair competition law (UCL) (National Collegiate Athletic Association v. Ken Grody Management Inc., et al., No. 8:18-cv-00153, C.D. Calif.).

Counterclaim Of Copyright Invalidity Stricken As Redundant By Federal Judge
CHICAGO - A counterclaim seeking a declaration of copyright invalidity is "unnecessary" in light of affirmative defenses of fair use, first sale, acquiescence and license raised in response to allegations of copyright infringement, an Illinois federal judge ruled Jan. 23 (Maui Jim Inc. v. SmartBuyGlasses Optical Limited, No. 16-9788, N.D. Ill., 2018 U.S. Dist. LEXIS 10093).

4th Circuit Vacates, Remands Dispute Over Redskins Trademarks
RICHMOND, Va. - Citing the U.S. Supreme Court's June 2017 decision in Matal v. Tam, 137 S. Ct. 1744, 1751 (2017), the Fourth Circuit U.S. Court of Appeals on Jan. 18 vacated and remanded to the Eastern District of Virginia a dispute over the registrability of six trademarks and logos belonging to the Washington Redskins professional football team (Pro-Football Inc. v. Amanda Blackhorse, et al., No. 15-1874, 4th Cir., 2018 U.S. App. LEXIS 1186).

Suit Over Sweeteners' Packaging In Franchise Network Survives Dismissal
INDIANAPOLIS - An Indiana federal judge on Jan. 18 denied a motion to dismiss a lawsuit accusing the owner of Applebee's and IHOP restaurants of using artificial sweetener in its franchise network that's packaged in a yellow packet made to look like trademarked Splenda sweetener (Heartland Consumer Products LLC, et al. v. DineEquity, Inc., et al., No. 17-1035, S.D. Ind., 2018 U.S. Dist. LEXIS 7983).

Jack Daniel's Wins Injunction, Judgment In Arizona Trademark Case
PHOENIX - Following a four-day bench trial in October 2017, an Arizona federal magistrate judge on Jan. 29 sided squarely with declaratory judgment defendant Jack Daniel's Properties Inc. in a trademark and trade dress dispute over a "Bad Spaniels" dog chew toy (VIP Products LLC v. Jack Daniel's Properties Inc., No. 14-2057, D. Ariz., 2018 U.S. Dist. LEXIS 14432).

Missouri Federal Judge Dismisses Service Mark Claims By Karaoke Company
ST. LOUIS - Allegations of service mark infringement against four defendants were dismissed by a Missouri federal judge on Jan. 23, based upon findings that a karaoke licensing company is unlikely to succeed on the merits of its claims (Phoenix Entertainment Partners LLC v. Sports Legends LLC, et al., No. 17-1209, E.D. Mo., 2018 U.S. Dist. LEXIS 10381).

Insurer Has No Duty To Pay For Independent Counsel In Copyright Suit, Panel Says
CHICAGO - An Illinois appeals panel on Jan. 22 affirmed a lower court's ruling that a commercial general liability insurer has no obligation to reimburse its insured for more than $16,000 in independent counsel fees incurred in an underlying copyright infringement dispute, rejecting the insured's contention that a conflict of interest entitled it to independent counsel (Bean Products, Inc. v. Scottsdale Insurance Co., No. 1-17-0421, Ill. App., 1st Dist., Div. 1, 2018 Ill. App. Unpub. LEXIS 89).

Asian Food Firm Defends Fees Denial In Trademark Suit To 9th Circuit
SAN FRANCISCO - In a Jan. 22 appellee brief, an Asian foods maker tells the Ninth Circuit U.S. Court of Appeals that a trial court has twice properly denied a defendant's motions for attorney fees in a trademark dispute, arguing that the correct "totality of the circumstances" standard was thoroughly considered (Anhing Corp. v. Viet Phu Inc., et al., No. 17-55851, 9th Cir.).

Hip Joint Maker Tells 10th Circuit Pink Trade Dress Is Protectable
DENVER - A trial court incorrectly found the pink trade dress of its hip joint components to be functional, a trademark holder argues in a Feb. 9 brief to the 10th Circuit U.S. Court of Appeals, seeking reversal of a judgment deeming its color pink trademark registrations unprotectable and not infringed (C5 Medical Werks LLC, et al. v. CeramTec GmbH, No. 17-1173, 10th Cir.).

'Sealtight' Trademark Holder Tells 8th Circuit It Deserves Disgorgement Of Profits
ST. LOUIS - A fastener manufacturer argues in a Jan. 30 brief in the Eighth Circuit U.S. Court of Appeals that an infringement verdict in its favor related to its "Sealtight" trademark should have resulted in an award of disgorgement of the infringer's profits, saying that the trial court improperly balanced the parties' equities in denying the award (B&B Hardware Inc. v. Hargis Industries Inc., No. 17-1570 and 17-1755, 8th Cir.).

Federal Circuit: Bar On Registration Of Immoral Marks Is Unconstitutional
WASHINGTON, D.C. - Although the Trademark Trial and Appeal Board (TTAB) correctly found that a proposed "fuct" trademark comprises immoral or scandalous material under the Lanham Act, 15 U.S.C. 1052(a), (Section 2(a)), the immoral and scandalous marks provision constitutes an unconstitutional restriction of free speech, the Federal Circuit U.S. Court of Appeals ruled Dec. 15 (In Re: Erik Brunetti, No. 15-1109, Fed. Cir., 2017 U.S. App. LEXIS 25336).

2nd Circuit Cites Matal In Dispute Over Denied Food Truck Application
NEW YORK - In a Jan. 3 ruling, the Second Circuit U.S. Court of Appeals deemed repeated denials by the New York State Office of General Services (OGS) of an application by Wandering Dago (WD) Inc. to participate in the state's Summer Outdoor Lunch Program unconstitutional (Wandering Dago Inc. v. New York State Office of General Services, et al., No. 16-622, 2nd Cir., 2018 U.S. App. LEXIS 87).

Nebraska Federal Judge Won't Retransfer Trademark Claims To Texas
OMAHA, Neb. - A request by a trademark owner to retransfer infringement allegations to the U.S. District Court for the Southern District of Texas was denied Jan. 16 by a Nebraska federal judge, who found that the plaintiff failed to show that a previously severed defendant is indispensable to the Texas action (Buc-ee's Ltd. v. Buck's Inc., et al., No. 17-287, D. Neb., 2018 U.S. Dist. LEXIS 6619).

Judge Transfers Noninfringement, UCL Action Against Harley To Wisconsin
MILWAUKEE - A California federal judge on Jan. 11 transferred an aftermarket motorcycle part company's action in which it seeks a declaration of noninfringement and asserts a claim for violation of California's unfair competition law (UCL) against a motorcycle maker to the U.S. District Court for the Eastern District of Wisconsin, noting that an underlying cease-and-desist letter originated in Wisconsin (Cobra Engineering Inc. v. H-D USA Llc, et al., No. 2:18cv71, E.D. Wis.).

9th Circuit Affirms: No Case Or Controversy In Trademark Dispute
SAN FRANCISCO - A California federal judge did not err in dismissing a declaratory judgment action over the "Merit" trademark, the Ninth Circuit U.S. Court of Appeals ruled Jan. 4, because the plaintiff in the case failed to establish the existence of an actual controversy as required by the Declaratory Judgment Act, 28 U.S.C. 2201 (Merit Healthcare International Inc. v. Merit Medical Systems Inc., No. 16-55290, 9th Cir., 2018 U.S. App. LEXIS 246).

11th Circuit Affirms: Former Member Has No Right To 'Commodores' Mark
ATLANTA - The 11th Circuit U.S. Court of Appeals on Jan. 9 found that when Thomas McClary departed the Grammy Award-winning band The Commodores in 1984, he forfeited his common-law rights to use and profit from "The Commodores" trademark (Commodores Entertainment Corporation v. Thomas McClary, et al., No. 16-15794, 11th Cir., 2018 U.S. App. LEXIS 518).

6th Circuit Reinstates Dispute Over Riflescope Trade Dress Protection
CINCINNATI - A rejection on summary judgment of allegations that a riflescope maker committed trade dress infringement through the design of its knurling was erroneous, the Sixth Circuit U.S. Court of Appeals ruled Jan. 10 (Leapers Inc. v. SMTS LLC, et al., No. 17-1007, 6th Cir., 2018 U.S. App. LEXIS 599).

Divided 1st Circuit Limits Trademark Licensee To Prepetition Damages
BOSTON - In what it deemed a case of first impression, a divided First Circuit U.S. Court of Appeals on Jan. 12 found that a trademark licensee retains only the right to seek prepetition damages following a Chapter 11 debtor-in-possession's rejection of the underlying license agreement (Mission Product Holdings Inc. v. Tempnology LLC, No. 16-9016, 1st Cir., 2018 U.S. App. LEXIS 870).

Judge Denies GoDaddy's Request For Restraining Order In Infringement, UCL Case
OAKLAND, Calif. - A California federal judge on Dec. 20 denied a request by GoDaddy Operating Co. LLC, which asserts causes of action for trademark infringement and violation of California's unfair competition law (UCL) against a graphics company and others, for a temporary restraining order, finding that the issue would be better decided on fully-briefed motions for an injunction rather than a temporary restraining order (GoDaddy Operating Company, LLC v. Usman Ghaznavi, et al., No. 17-cv-6545, N.D. Calif., 2017 U.S. Dist. LEXIS 209386).

Health Care Product Maker Files Trademark Infringement, UCL Federal Lawsuit
LOS ANGELES - A California laboratory on Jan. 2 sued several other entities in a California federal court, asserting that they infringed on its trademarks and violated California's unfair competition law (UCL) when they knowingly used the laboratory's federally registered trademarks (Trigg Laboratories Inc. v. WSM Investment LLC, et al., No. 2:18-cv-00024, C.D. Calif.).

Heightened Standard Applied To Fraud-Based Lanham Act Claims
CHICAGO - Allegations of copyright infringement and common-law trademark infringement survived a motion to dismiss Dec. 21, but an Illinois federal judge deemed dismissal of the remainder of the complaint - including causes of action for unfair competition and false advertising - warranted (VitalGo Inc., et al. v. Kreg Therapeutics Inc., et al., No. 16-5577, N.D. Ill., 2017 U.S. Dist. LEXIS 210362).

Boston Band Founder Argues Contract Breach From Ex-Member's Trademark Use
BOSTON - In a Dec. 29 brief to the First Circuit U.S. Court of Appeals, Tom Scholz, who founded the multiplatinum-selling rock band Boston, argues that a former band member's use of the "Boston" trademark to promote his post-Boston musical endeavors breached a previous settlement agreement between them (David Thomas Scholz v. Barry Goudreau, No. 17-1264, 1st Cir.).

Generic Vietnamese Soup Marks Were Properly Canceled, Firm Tells 9th Circuit
SAN FRANCISCO - Because evidence and testimony established that the Vietnamese word "cot" is generic in the context of soup, a Vietnamese food distributor argues in a Dec. 19 brief to the Ninth Circuit U.S. Court of Appeals that a trial court correctly canceled a rival firm's trademarks incorporating the word and issued judgment accordingly on the rival's infringement claims (Quoc Viet Foods Inc. v. VV Foods LLC, et al., No. 17-55331 and 17-55742, 9th Cir.).

11th Circuit Briefed On Trademark Rights For Karaoke Tracks
ATLANTA - In briefs filed with the 11th Circuit U.S. Court of Appeals, a karaoke track producer and a karaoke service operator recently debated whether a likelihood of confusion can arise from the operator's use of purportedly pirated karaoke tracks that display the producer's trademarks (Phoenix Entertainment Partners LLC v. Kevin Burke, No. 17-13043, 11th Cir.).

Former Jack In The Box Franchisee Appeals Contract Trademark Judgment
SAN FRANCISCO - Arguing that disputed facts exist on a purported cure agreement and the amounts owed to franchisor Jack in the Box Inc. (JIB), a terminated franchisee tells the Ninth Circuit U.S. Court of Appeals in a Dec. 19 reply brief that a trial court wrongly issued judgment against it on trademark infringement and contract claims (Jack in the Box Inc. v. Deepak Mehta, et al., No. 17-15336, 9th Cir.).

Festival Host To 9th Circuit: 'Life Is Beautiful' Marks Were Fraudulently Obtained
SAN FRANCISCO - The organizer of the annual "Life is Beautiful" festival tells the Ninth Circuit U.S. Court of Appeals in a Jan. 5 brief that an artist's trademark claims related to that phrase were properly dismissed due to unclean hands and a failure to use the asserted marks in commerce (Amusement Art LLC v. Life is Beautiful LLC, et al., No. 17-55045, 9th Cir.).