Mealey's Trademarks
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March 20, 2025
Federal Circuit: TTAB Rightly Canceled Pawn Shop Marks Due To Earlier Use
WASHINGTON, D.C. — A Federal Circuit U.S. Court of Appeals panel on March 19 held that a financial group could not use the zone of natural expansion doctrine in support of its claims of priority of use of the mark “Money Mart” in connection with pawn shops and pawn brokerage, affirming a partial grant of another company’s petition for trademark cancellation.
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March 19, 2025
4th Circuit: Judge Wrong To Focus On Location In Retirement Home Trademark Row
RICHMOND, Va. — A Fourth Circuit U.S. Court of Appeals panel on March 18 vacated a Virginia federal judge’s finding that there was no risk of confusion between the trademarks associated with retirement communities based on opposite coasts of the United States; the panel said the judge was wrong to rely purely on the geographical distance between the respective companies when analyzing the risk of confusion.
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March 13, 2025
Federal Judge Tosses Trademark Claims Between Activists, Rejects Recusal
DALLAS — A federal judge in Texas dismissed with prejudice trademark claims and counterclaims in a dispute between two similarly named entities focused on the advancement of African Americans in the technology profession and denied a former litigant’s request for sanctions against one of the parties’ attorneys and recusal of the judge; the former litigant filed an immediate notice of appeal to the Fifth Circuit U.S. Court of Appeals.
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March 13, 2025
Federal Circuit: No Error In TTAB’s Fireball Mark Genericness Analysis
WASHINGTON, D.C. — In a dispute over the trademarks related to fiery brands of whiskey, a Federal Circuit U.S. Court of Appeals panel on March 12 affirmed findings from the U.S. Trademark Trial and Appeal Board (TTAB) that Sazerac Brands LLC’s “Fireball” trademarks are not generic and that there was no likelihood of confusion between the mark and those for which another liquor maker applied.
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March 11, 2025
10th Circuit Agrees: No Immunity For School Head Who Threatened Trademark Suits
DENVER — A superintendent of a New Mexico school district “violated clearly established law” when attempting to use a trademark associated with the name of the district as a basis for cease-and-desist letters sent to the people behind a parent-run Facebook page, a 10th Circuit U.S. Court of Appeals panel held March 10, affirming a New Mexico federal judge’s denial of the superintendent’s motion for summary judgment.
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March 11, 2025
Judge Allows Case Alleging Violations Of Diet Drugs’ Trademarks To Move Forward
SEATTLE — A Washington federal judge agreed that state law claims filed against medical centers and two physicians who prescribe patients compounded versions of tirzepatide, an FDA-approved drug for diabetes and weight loss, are preempted by federal law but otherwise denied a motion to dismiss.
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March 03, 2025
Supreme Court Won’t Hear Trademark Settlement ‘Fraud’ Arguments
WASHINGTON, D.C. — The U.S. Supreme Court on March 3 denied a petition for a writ of certiorari filed by four companies that argued the Second Circuit U.S. Court of Appeals wrongly allowed to stand a New York federal judge’s denial of a request to vacate a 2011 settlement in a trademark case due to an allegedly fraudulent document submitted as evidence.
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February 26, 2025
High Court: Lanham Act Doesn’t Support $43M Disgorgement From Nonparties
WASHINGTON, D.C. — A unanimous U.S. Supreme Court on Feb. 26 held that the Fourth Circuit U.S. Court of Appeals was wrong to affirm a $43 million disgorgement award entered in a real estate company’s favor in a trademark infringement dispute with an entity it said infringed its marks; the court held that the Fourth Circuit and a Virginia federal judge should not have included profits from entities affiliated with the alleged infringer in damages calculations.
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February 26, 2025
5th Circuit Affirms Denial Of Injunction In Real Estate Trademark Fight
NEW ORLEANS — A Fifth Circuit U.S. Court of Appeals panel affirmed a Louisiana federal judge’s decision to deny a preliminary injunction in a trademark infringement dispute between two real estate companies with the word “Rampart” in their name, agreeing with the judge that the plaintiff company had failed to show a substantial likelihood of confusion between the companies’ respective names.
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February 21, 2025
Tech Company’s Mark Proposal Rightfully Rejected, Federal Circuit Says
WASHINGTON, D.C. — A panel in the Federal Circuit U.S. Court of Appeals on Feb. 20 affirmed a decision by the Trademark Trial and Appeal Board (TTAB) to uphold the rejection of one of a technology company’s applications for trademarks associated with a website for medical information, agreeing with the board that the mark was merely descriptive.
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February 20, 2025
No Rehearing In Sprawling Shoe Patent, Trademark Suit, Federal Circuit Says
WASHINGTON, D.C. — A long-running intellectual property dispute between Crocs Inc. and a company it accuses of copying its shoe design will not be reconsidered by the Federal Circuit U.S. Court of Appeals, which rejected Crocs’ bid to rethink its reversal of a Colorado federal judge’s grant of summary judgment on a false advertising counterclaim in the suit first launched in 2006.
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February 20, 2025
Company Liable For Counterfeiting To High Court: Attorney Fees Unreasonable
WASHINGTON, D.C. — A distribution company and the man who controls it argue to the U.S. Supreme Court in a petition for a writ of certiorari that the Ninth Circuit U.S. Court of Appeals was wrong to uphold the entry of attorney fees against them in a trademark infringement suit; the petitioners were found liable for selling counterfeited beauty products.
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February 18, 2025
9th Circuit: Skydiving Company Can’t Monopolize ‘Skydive Hawaii’ Mark
SAN FRANCISCO — A Ninth Circuit U.S. Court of Appeals panel on Feb. 14 upheld a Hawaii federal judge’s finding in a trademark dispute between competing skydiving companies in the state over phrases similar to the appellant’s mark “Skydive Hawaii,” with the panel saying that “the classic fair use defense is apparent on the face” of the complaint.
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February 14, 2025
4th Circuit Rejects Rehearing Bid On MOKE Mark Genericness Finding
RICHMOND, Va. — The Fourth Circuit U.S. Court of Appeals on Feb. 11 said it would not reconsider a January opinion from a split panel that reversed a Virginia federal judge’s holding that MOKE is a generic term describing a type of vehicle that is unable to be trademarked due to a lack of evidence on the record regarding genericness.
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February 07, 2025
2nd Circuit: Judge Got Articulation Of Trade Dress Requirement Wrong
NEW YORK — A New York federal judge wrongly held that a motorcycle equipment company failed to adequately describe its helmet trade dress in an infringement suit brought against a competitor, a Second Circuit U.S. Court of Appeals panel said Feb. 6; the error led the judge to improperly dismiss the case, the panel held.
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February 07, 2025
2nd Circuit: Judge Got Articulation Of Trade Dress Requirement Wrong
NEW YORK — A New York federal judge wrongly held that a motorcycle equipment company failed to adequately describe its helmet trade dress in an infringement suit brought against a competitor, a Second Circuit U.S. Court of Appeals panel said Feb. 6; the error led the judge to improperly dismiss the case, the panel held.
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February 07, 2025
Federal Judge: Clothing Trademark Dispute Should’ve Been Brought In California
BUFFALO, N.Y. — A New York federal judge ordered a trademark dispute between clothing companies over the word mark ALMOST GAMEDAY transferred to a California federal court, agreeing with the defendant companies that the complaint was filed in an improper venue.
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February 06, 2025
Federal Judge Tosses Tennessee Team’s Trademark Fight With Arkansas School
SALT LAKE CITY — A federal judge in Utah dismissed a trademark complaint brought by the management company that owns a Tennessee professional soccer team against Arkansas State University (ASU), holding that the company failed to show that the university maintained sufficient contacts with Utah to establish personal jurisdiction.
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February 05, 2025
6th Circuit: Kentucky Colonel Trademark Contempt Appeal Can Continue
CINCINNATI — A Sixth Circuit U.S. Court of Appeals panel on Feb. 4 denied a motion from the organization that holds trademarks related to the honorary title of “Kentucky Colonel” to dismiss an appeal brought by a pro se appellant held in contempt by a Kentucky federal judge for failing to comply with a permanent injunction barring him from using the mark, but the panel told the appellant that he would be afforded no more extensions of time to file his opening brief.
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February 05, 2025
9th Circuit: Former Church Member Lost License To Share Teachings In 2021
SEATTLE — The Ninth Circuit U.S. Court of Appeals agreed with a Washington federal judge that a former member of a Seattle-based religious community did not breach a licensing agreement by uploading copyrighted church materials after the 1999 death of the organization’s founder but reversed the judge’s finding that the license was terminated in 2021.
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February 05, 2025
Judge Again Enters Injunction In Jack Daniel’s Dog Toy Trademark Fight
PHOENIX — A federal judge in Arizona found that a dog toy maker did not infringe on marks held by Jack Daniel’s Properties Inc. but that the spirits company was still entitled to a permanent injunction because the toy that parodies the Jack Daniel’s bottle can still tarnish the alcohol marks.
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January 30, 2025
Federal Circuit Affirms Cancellation Of Japanese Candy Related Word Mark
WASHINGTON, D.C. — The U.S. Trademark Trial and Appeal Board (TTAB) was right to cancel a company’s registration for the word mark TONOSAMA, a panel in the Federal Circuit U.S. Court of Appeals held, agreeing with the board that the mark is confusingly similar to another company’s registered trademark for the same word.
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January 29, 2025
Petitioners To High Court: Trademark Settlement ‘Fraud’ Must Be Fixed
WASHINGTON, D.C. — The U.S. Supreme Court must grant a writ of certiorari in a trademark infringement case because the Second Circuit U.S. Court of Appeals wrongly allowed to stand a New York federal judge’s denial of a request to vacate a 2011 settlement in the face of an allegedly fraudulent document submitted as evidence in the case, four companies tell the high court in a recently docketed petition.
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January 28, 2025
Judge Tosses Designer’s Copyright Claims For Use Of Character On Album Art
LOS ANGELES — A designer who accused a hip-hop producer of copyright infringement for using a character he designed on multiple album covers since 1999 failed to show that the implied license granted to the producer had any kind of expiration date, a federal judge in California held, granting a motion from the producer and related entities for judgment on the pleadings.
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January 24, 2025
Judge Says First Sale Doctrine Doesn’t Apply To Software Keys
SEATTLE — The first sale doctrine does not apply to software product keys, a federal judge in Washington held Jan. 23, because those keys are not themselves copyrightable works, granting partial summary judgment as to a single affirmative defense in favor of the Microsoft Corp. against a Canadian entity and several individuals Microsoft called “prolific distributors of black market access devices to Microsoft software that they unlawfully advertise to consumers as genuine software.”