Category: Trademark

Case Highlight: California District Court Refuses to Stay Civil Case Pending Resolution of Potential Criminal Prosecution 0

Case Highlight: California District Court Refuses to Stay Civil Case Pending Resolution of Potential Criminal Prosecution

In Sanrio, Inc. v. Ronnie Home Textile Inc., the U.S. District Court for the Central District of California recently refused to stay a civil case pending completion of a parallel criminal counterfeiting investigation. In Sanrio, the plaintiffs sued a corporation and two alleged principals for trademark infringement and other claims. The case was filed after law enforcement seized allegedly counterfeit goods offered for sale by the defendants and related evidence. The defendants argued that the civil case should be stayed because the seizure left them without means to substantively defend themselves. They further argued that allowing the civil case to go forward would implicate the individual defendants’ Fifth Amendment rights, though criminal charges had not been brought against them.

TTAB Rulings May Have Preclusive Effects in District Court Cases 0

TTAB Rulings May Have Preclusive Effects in District Court Cases

In a 7-2 split decision issued on March 24, 2015, the U.S. Supreme Court held that Trademark Trial and Appeal Board (“TTAB”) rulings may have preclusive effects in subsequent federal district court litigation. The Court ruled that so long as the elements of issue preclusion are met, it is irrelevant that the TTAB is not an Article III court.

Recent Damages Award for Wrongful Seizure Under the Lanham Act 0

Recent Damages Award for Wrongful Seizure Under the Lanham Act

Judge Preska of the United States District Court for the Southern District of New York recently awarded attorneys’ fees, damages, and prejudgment interest on damages, but not fees to defendants, in a trademark counterfeiting case. In Prince of Peace Enterprises, Inc. v. Top Quality Food Market, LLC, Judge Preska adopted in part a report and recommendation of Magistrate Judge Maas, ending an eight-year litigation surrounding ex parte seizures of herbal supplements which took place in 2007.

In Trademark Infringement Matters, Think Twice Before Waiting.  Laches May Run from the Date of the Product Announcement, Before the Initial Sales 0

In Trademark Infringement Matters, Think Twice Before Waiting. Laches May Run from the Date of the Product Announcement, Before the Initial Sales

Fitbit and Fitbug are makers of activity trackers, which are wearable tracking devices that connect to the internet and provide users with feedback about their fitness, quality of sleep, and other personal metrics. Fitbug’s U.S. trademark rights to FITBUG date back to 2004, when the British device maker filed an intent to use application with the United States Patent and Trademark Office, which registered in 2009. Fitbug began selling its products in United States commerce since at least as early as 2005. Fitbit, on the other hand, filed a trademark application for FITBIT in August 2008 and announced its product launch the following month. However, Fitbit did not begin shipping its products using the trademark FITBIT until September 2009.

Hana Financial, Inc. v. Hana Bank: Tacking Priority of Earlier Trademarks 0

Hana Financial, Inc. v. Hana Bank: Tacking Priority of Earlier Trademarks

The U.S. Supreme Court does not get to tackle trademark law issues very often. The decision in Hana Financial, Inc. v. Hana Bank, (No. 13-1211; January 21, 2015) is the first pronouncement of the highest Court on trademark matters in more than a decade, and it deals with the issue known as tacking. Trademarks often experience changes in appearance and overall look in the course of many years. These changes can take various forms, such as a modification in lettering style, a rearrangement in the order of words, the dropping of a background design, or the addition of new stylized elements. The tacking doctrine allows a party to claim the earlier priority date of an old mark for a new trademark, if the later involves slight changes over the prior version. The U.S. Supreme Court’s decision in Hana Financial addresses narrowly the question as to whether tacking is a matter of law reserved to a judge, or a matter of fact decided by a jury.

Keep Your Eyes Open: Protecting Trademarks Through Active Litigation 0

Keep Your Eyes Open: Protecting Trademarks Through Active Litigation

Industry-specific trade shows offer manufacturers the opportunity to market their products and keep tabs on trends in their industry. However, these shows also provide an opportunity for manufacturers to identify counterfeit models of its products offered on the market. Bond Manufacturing (“Bond”), which produces outdoor heating units, arrived at the 2013 National Hardware Show in Las Vegas and discovered counterfeit versions of its products being exhibited at a nearby booth. Bond’s president was assisting with setting up the company’s booth when he noticed goods bearing Bond’s trademark at an exhibition booth operated by Bond’s previous business partner, Xiamen Hwaart Composite Material. The counterfeit goods included various products, including patio heaters, fire pits, and fireplaces. Combating counterfeiters is part of the daily routine for manufacturers like Bond, but identifying the sources of counterfeit products is typically challenging in the age of Internet commerce as counterfeiters are rarely bold enough to market their ersatz products out in the open in the light of day, particularly when the counterfeiter is your former business partner.

Blurred Lines: Third Circuit’s Lanham Act Attorneys’ Fees Analysis Follows Recent Supreme Court Ruling in Patent Case 0

Blurred Lines: Third Circuit’s Lanham Act Attorneys’ Fees Analysis Follows Recent Supreme Court Ruling in Patent Case

The Court of Appeals for the Third Circuit recently decided that the U.S. Supreme Court’s April decision on attorneys’ fees in a patent case, Octane Fitness, LLC v. Icon Health & Fitness, Inc., should also be applied in trademark cases under the Lanham Act. See Fair Wind Sailing, Inc. v. Dempster, Nos. 13-3305 & 14-1572 (3d Cir. Sept. 4, 2014). Defendant Dempster had successfully moved to dismiss the action under Rule 12(b)(6) of the Federal Rules of Civil Procedure and was awarded its attorneys’ fees under § 35(a) of the Lanham Act and the Virgin Islands Code. Plaintiff Fair Wind Sailing appealed the fee award. The Third Circuit ultimately vacated the District Court’s fee award and remanded, instructing the court below to utilize an inquiry consistent with the Supreme Court’s decision in Octane Fitness.

Washington Redskins Seek Reversal of TTAB Decision Canceling its Trademark Registrations 0

Washington Redskins Seek Reversal of TTAB Decision Canceling its Trademark Registrations

On August 14, 2014, Pro-Football, Inc. (“Pro-Football”) appealed the Trademark Trial and Appeal Board’s (“TTAB”) June 18, 2014 decision to cancel its registrations for six REDSKIN-formative trademarks. As we previously reported, the TTAB’s 2-1 decision found that those trademarks were not entitled to be registered on the basis that a “substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with [the football team’s] services” during the time period when registration was sought.

New Guidance on How to Calculate Statutory Damages Awards in Counterfeiting Cases

New Guidance on How to Calculate Statutory Damages Awards in Counterfeiting Cases

Judge Koeltl of the United States District Court for the Southern District of New York recently adopted a recommended statutory damages award of $6.6 million dollars in a case involving trademark counterfeiting. Richemont Int’l S.A. et. al. v. Montesol Ou, et. al., 2014 WL 3732919, at *1 (S.D.N.Y. July 28, 2014). The plaintiff sellers of luxury goods had initially sought $78 million or $2 million per counterfeit mark per type of good counterfeited in connection with 88 domain names operated by the defendants. Richemont Int’l S.A. et. al. v. Montesol Ou, et. al., 2014 WL 3732887, at *4 (S.D.N.Y. May 13, 2014). But Magistrate Judge Pitman recommended instead an award of $6.6 million, including $6.3 million under the Trademark Act and $300,000 under the Anticybersquatting Consumer Protection Act.

McDonald’s Triumphs over BioMcDiesel 0

McDonald’s Triumphs over BioMcDiesel

On July 14, 2014, the United States Trademark Trial and Appeal Board (TTAB) found the trademark “BioMcDiesel” for biodiesel fuel likely to cause confusion with McDonald’s Corporation’s (“McDonald’s”) famous family of MC-formative trademarks. McDonald’s Corporation v. Joel D. Joseph, Opposition No. 91194117 (July 14, 2014) [not precedential]. The applicant, Joel Joseph, appeared pro se to defend his application, which was based on intent to use. McDonald’s challenged the application on three bases under the Lanham Act, namely, likelihood of confusion under Section 2(d), dilution under Sections 13 and 43(c), and on the basis that Mr. Joseph filed the application in bad faith, in that he lacked a bona fide intent to use the mark and solely filed the application for the purpose of selling or licensing the mark to McDonald’s. The TTAB’s decision addressed only the likelihood of confusion claim, and found the “BioMcDiesel” mark was not entitled to registration.