Subscribe: LexisNexis® Mealey's™ Trademarks Legal News
Added By: Feedage Forager Feedage Grade B rated
Language: English
appeals  circuit court  circuit  court appeals  court  dist lexis  federal judge  federal  infringement  judge  lexis  trademark 
Rate this Feed
Rate this feedRate this feedRate this feedRate this feedRate this feed
Rate this feed 1 starRate this feed 2 starRate this feed 3 starRate this feed 4 starRate this feed 5 star

Comments (0)

Feed Details and Statistics Feed Statistics
Preview: LexisNexis® Mealey's™ Trademarks Legal News

LexisNexis® Mealey's™ Trademarks Legal News

Headline Trademarks Legal News from LexisNexis®


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.).

Federal Circuit Affirms Denial Of Registrations For 'Magnesita' Trademarks
WASHINGTON, D.C. - A decision by the Trademark Trial and Appeal Board to deny two trademark registration applications for "Magnesita" on grounds that the marks are generic for refractory products was not erroneous, the Federal Circuit U.S. Court of Appeals concluded Nov. 27 (In re: Magnesita Refractories Company, No. 16-2345, Fed. Cir., 2017 U.S. App. LEXIS 23845).

9th Circuit Affirms: Use Of 'Empire' Mark Protected By 1st Amendment
SAN FRANCISCO - Two broadcasters were properly granted a summary judgment that their use of the name "Empire" is protected under the First Amendment to the U.S. Constitution, the Ninth Circuit U.S. Court of Appeals ruled Nov. 16 (Twentieth Century Fox Television, et al. v. Empire Distribution Inc., No. 16-55577, 9th Cir.).

Abandonment Of Mark Not Proven, Washington Federal Judge Rules
SEATTLE - Although denying a trademark infringement plaintiff summary judgment, a Washington federal judge on Nov. 29 rejected assertions by defendants in the case that they "strictly proved" trademark abandonment (Kische USA LLC v. Ali Simsek, et al., No. 16-168, W.D. Wash., 2017 U.S. Dist. LEXIS 196191).

Copyright Plaintiff Partly Prevails In Dispute Over Streaming TV Content
MIAMI - A Florida federal judge on Dec. 11 entered summary judgment on behalf of a producer of Colombian television and its distributor, amid allegations that a defendant created a website to stream the plaintiffs' copyrighted content in the United States without permission (Caracol Television S.A., et al. v. TVmiaInternational Corp., et al., No. 16-23486, S.D. Fla., 2017 U.S. Dist. LEXIS 204575).

California Magistrate Judge Dismisses Trademark Claim, Trade Libel Claim Survives
SAN FRANCISCO - A dispute between two beauty product suppliers will proceed in California federal court but without a claim for trademark infringement against an individual defendant, a federal magistrate judge ruled Nov. 27 (BioZone Laboratories Inc. v. Next Step Laboratories Corporation and Richard Rigg, No. 17-2768, N.D. Calif., 2017 U.S. Dist. LEXIS 194454).

Copyright, Trademark Claims Survive Dismissal Request In Illinois Court
CHICAGO - Efforts by two defendants to obtain dismissal of allegations they committed copyright and trademark infringement by copying and exhibiting photographs by the late Vivian Maier were unsuccessful on Nov. 20, when an Illinois federal judge deemed claims by a public administrator appointed to Maier's estate upon her death in 2009 adequately pleaded (The Estate of Vivian Maier v. Jeffrey Goldstein, et al., No. 17-2951, N.D. Ill., 2017 U.S. Dist. LEXIS 191294).

Trademark Dispute Over Literacy Program Survives Dismissal Request In Texas
DALLAS - Efforts by a defendant to obtain dismissal of trademark infringement allegations stemming from the use of - among other things - a million-dollar bill bookmark in connection with a literacy program were unsuccessful on Dec. 5, when a Texas federal judge denied the request (Springboards to Education v. Demco Inc., et al., No. 16-2398, N.D. Texas).

9th Circuit Affirms: Subaru Did Not Infringe Copyright, Trademarks
SAN FRANCISCO - In a Dec. 12 ruling decided without oral argument, the Ninth Circuit U.S. Court of Appeals upheld a California federal judge's dismissal of copyright and trademark infringement allegations stemming from Subaru of America Inc.'s use of "Share the Love" as a slogan in television advertisements (Marilyn Mintz v. Subaru of America Inc., No. 16-3384, 9th Cir.).

Computer Fraud Ruling Against Ex-Employee Partly Reversed By Louisiana Judge
NEW ORLEANS - A former employee's newly submitted evidence created material issues of fact on parts of his ex-employer's computer fraud and unfair trade practices claims against him, a Louisiana federal judge ruled Dec. 7, partly granting the defendant's reconsideration motion, while declining to reconsider judgment on accompanying trade secrets and conversion claims (Eddie Sussman Sr., et al. v. Financial Guards LLC, et al., No. 2:15-cv-02373, E.D. La., 2017 U.S. Dist. LEXIS 201566).

Judge Awards Fees To Hoverboard Maker In Trademark Infringement Action
LOS ANGELES - A California federal judge on Dec. 4 awarded a hoverboard maker fees and costs incurred when two defendants accused of infringing on trademarks held by it in violation of California's unfair competition law (UCL) and false advertising law violated a preliminary injunction (UL LLC v. The Space Chariot Inc., et al., No. 2:16-cv-08172, C.D. Calif., 2017 U.S. Dist. LEXIS 202573).

9th Circuit Upholds Fee Award In Favor Of Copyright Defendants
SAN FRANCISCO - Two sons of the late concert promoter Bill Graham were properly ordered by a California federal judge to reimburse the attorney fees incurred by four copyright infringement defendants, the Ninth Circuit U.S. Court of Appeals ruled Dec. 13 (Alexander Graham-Sult, et al., v. Nicholas Clainos, et al., Nos. 15-17204, 16-16768, - 17083, 9th Cir., 2017 U.S. App. LEXIS 25187).

Indiana Magistrate Judge Denies Wal-Mart Request To Transfer Trademark Case
SOUTH BEND, Ind. - Efforts by USA LLC and a co-defendant to move allegations of trademark infringement to the U.S. District Court for the Northern District of California were unsuccessful Dec. 6, when an Indiana federal magistrate judge found that "the only factor that narrowly favors transfer is convenience of the third-party Chinese witnesses" (Dwyer Instruments Inc. v. USA LLC, et al., No. 17-636, N.D. Ind., 2017 U.S. Dist. LEXIS 200566).

Florida Federal Judge: Trademark Not Promoted In Unsolicited Facsimiles
WEST PALM BEACH, Fla. - Citing a lack of personal jurisdiction over two defendants accused of violating the Telephone Consumer Protection Act (TCPA), a Florida federal judge on Dec. 1 reversed course, vacating his earlier finding that unsolicited facsimile (fax) advertisements bearing the "Ulesfia" trademark were sent on behalf of the mark owner (S.A.S.B. Corporation, et al., v. Concordia Pharmaceuticals Inc., et al., No. 16-14108, S.D. Fla., 2017 U.S. Dist. LEXIS 199021).

Furniture Maker Seeks High Court Review Of Tea Rose- Rectanus Doctrine Ruling
WASHINGTON, D.C. - A Ninth Circuit U.S. Court of Appeals ruling deepened a circuit split on the interpretation of good faith adoption of a regional, common-law trademark under the Tea Rose-Rectanus doctrine, a furniture manufacturer argues in a Nov. 13 petition for certiorari, asking the U.S. Supreme Court to provide guidance on the matter (Omnia Italian Design Inc. v. Stone Creek Inc., No. 17-731, U.S. Sup.).

Fastener Maker Tells 8th Circuit Fraud, Mark Lapse Defeat Infringement Claims
ST. LOUIS - In a Nov. 20 appellee brief, the defendant in a long-running dispute over the "Sealtight" and "Sealtite" trademarks asks the Eighth Circuit U.S. Court of Appeals to affirm a trial court's judgment in its favor, citing its opponent's fraud on the U.S. Patent and Trademark Office (PTO), as well as a lapse in the plaintiff's registration for its purportedly incontestable trademark (B&B Hardware Inc. v. Hargis Industries Inc., No. 17-1570 and 17-1755, 8th Cir.).

Cosmetics Firm Asserts Its Right To Injunction In 'Lush' Trademark Dispute
SAN FRANCISCO - A trial court erred in denying its motion for injunctive relief despite a jury's finding that its "Lush" trademark was infringed, a cosmetics firm tells the Ninth Circuit U.S. Court of Appeals in a Dec. 8 reply brief, arguing that it presented evidence of harm and unclean hands (Pinkette Clothing Inc. v. Cosmetic Warriors Limited, No. 17-55325, 9th Cir.).

Restaurant Software Firm Appeals Cancellation Of 'Reserve' Marks To 9th Circuit
SAN FRANCISCO - Arguing that its trademarks incorporating the word "Reserve" have achieved secondary meaning and are entitled to a presumption of validity, a provider of restaurant management software tells the Ninth Circuit U.S. Court of Appeals in an Oct. 19 brief that a trial court erred in ordering cancellation of two of its marks and in granting judgment to an infringing competitor (Reserve Media Inc. v. Efficient Frontiers Inc., No. 17-55687, 9th Cir.).