Posts Tagged: "trademarks"

The U.S. Court of Appeals for the Eleventh Circuit yesterday backed a Georgia district court’s finding that Diamond J Wholesale LLC and its owner, Raj Solomon, willfully infringed trademarks owned by Top Tobacco, L.P., Republic Technologies (NA), LLC, and Republic Tobacco, L.P. (Top Tobacco). The ruling upholds an $11 million verdict in favor of the tobacco companies. A jury in the U.S. District Court of the District of Georgia awarded Top Tobacco $11 million in damages against the wholesale company and its owner in March of 2022.

On August 18, the owner of the APPLE JAZZ trademark filed an opposition to Apple’s motion to amend its trademark application for the mark APPLE MUSIC with the Trademark Trial and Appeal Board (TTAB). In its motion, the tech giant asked the TTAB to allow the company to remove “live performance services, as well as related services,” from the application. In July, the U.S. Court of Appeals for the Federal Circuit (CAFC) denied Apple’s request to rehear a decision that effectively canceled the tech company’s application to register the APPLE MUSIC mark.

The U.S. District Court for the Eastern District of New York, in a decision published Monday, denied the defendants’ motions to vacate asset freezes in a case brought by Gilead alleging a massive HIV drug counterfeiting ring that involves “hundreds of millions of dollars’ worth” of fake medications. In January 2022, the court unsealed documents in the suit against a slew of defendants who Gilead said sold, marketed, and distributed counterfeits of its HIV medications. Gilead’s complaint sought immediate monetary and injunctive relief, including seizure at certain of the defendants’ premises, as well as relief for trademark and trade dress infringement and trademark dilution, among other alleged violations.

On Friday, July 21, an Illinois district court ruled that a Pakistani employee of a medical device distribution company infringed on Ethicon’s trademark when he bought, marketed and sold counterfeit Ethicon devices. Ethicon is a subsidiary of Johnson & Johnson and won an $18 million default judgment. Ethicon first filed a complaint against the defendant Mudassar Shah in July 2020 and alleged federal and state trademark infringement of five different trademarks. The laundry list of accusations also included trademark dilution, false advertising, common law unjust enrichment, common law tortious interference with contract, and breach of settlement agreement.

In Jack Daniel’s Properties, Inc. v. VIP Products LLC, a unanimous Supreme Court sided with Jack Daniel’s and sent dog toy maker VIP Products scurrying away with its tail between its legs. The decision held that VIP’s commercial use of a dog toy, designed to look like a bottle of Jack Daniel’s whiskey, complete with droll variations on Jack Daniel’s trademarks, is not entitled to First Amendment protections for artistic expression under the “Rogers test.” Rogers v. Grimaldi, 875 F. 2d 994, 999 (2d Cir. 1989). Instead, it is subject to the Lanham Act’s likelihood-of-confusion test to determine if consumers would be likely to confuse VIP’s dog toy with Jack Daniel’s, no matter how parodic. While the justices felt that artistic expression versus trademark use was cut and dried in this instance, that is not always the case in litigation focused on NFTs and the Metaverse.

The Taco John’s restaurant chain announced Tuesday that it will share its Taco Tuesday trademark, but also posed a challenge to Taco Bell and LeBron James “to Support Workers, Not Lawyers.” Taco Bell filed a Petition for Cancellation of the trademark for TACO TUESDAY on May 16, 2023. The mark was registered by Spicy Seasonings, LLC, which operates the Taco John’s restaurant franchise, in 1989 for “restaurant services.” Soon after, NBA star LeBron James joined Taco Bell’s fight by starring in a commercial where he was bleeped each time he uttered the phrase “Taco Tuesday.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied Apple’s June request that the court rehear a decision that effectively canceled the tech company’s application to register the trademark APPLE MUSIC. Apple had asked the court to rehear the case in order to direct the Trademark Trial and Appeal Board (TTAB) to narrow the services listed in the trademark application so that it could proceed to registration. The owner of the trademark for APPLE JAZZ, Charles Bertini, in April won his appeal to the CAFC from the TTAB, which had dismissed his opposition to Apple, Inc.’s application to register the mark APPLE MUSIC. The CAFC said the TTAB legally erred in allowing Apple to claim absolute priority for all of the services listed in its application based on a showing of priority for just one service.

On June 8, the United States Supreme Court handed down a surprisingly decisive ruling on trademark law and its relationship with First Amendment rights. The Court found that free speech rights did not protect a manufacturer of dog toys, which mimicked a bottle of Jack Daniels, against an action for trademark infringement. The case has provoked widespread discussion among IP lawyers across the world regarding similar cases in other jurisdictions.

On Monday, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion that vacated a Trademark Trial and Appeal Board (TTAB) ruling that a trademark registration from GPS vehicle tracking company Spireon was likely to be confused with three trademarks from supply chain management company, Flex LTD. The appeals court found that the TTAB made several significant errors and thus vacated and remanded the case. Flex LTD opposed Spireon’s FL FLEX trademark due to likely confusion with three of its marks, FLEX, FLEX (stylized), and FLEX PULSE. The TTAB determined whether there was a likelihood of confusion using the Dupont factors. The Board found that Flex’s marks were inherently distinctive under the first factor, and using the second, third, and thirteenth Dupont factors concluded that there was overlap between the two companies’ marks and ruled that Spireon registered its mark in bad faith.

Upcycling, a recent fashion trend, poses issues and concerns for brand owners that are similar to counterfeiting but with some added complexity. As a result, upcycled products have prompted brand owners to take legal action to protect their brands and consequently their customers. Below, we (1) explain what upcycling is, (2) discuss potential legal issues arising from upcycled products, (3) summarize recent cases involving upcycled products, and (4) propose successful brand protection measures.

Today, the International Trademark Association (INTA) published an amicus brief filed with the Court of Justice of the European Union (CJEU) in a case that should have major implications for the effects of Brexit on EU trademark law. INTA’s brief asks the CJEU to reverse a lower court’s decision and rule that the EU Intellectual Property Office (EUIPO) was correct in determining that UK trademark law can no longer provide a legal interest to sustain an opposition to an EU trademark application filed before Brexit.

Taco Bell is on the short list as one of my guilty (or not-so-guilty) pleasures. So, when the popular restaurant chain filed a cancellation action against the TACO TUESDAY trademark, I knew I had to write a piece about it. On May 16, 2023, Taco Bell filed a Petition for Cancellation of the trademark for TACO TUESDAY, which was registered by Spicy Seasonings, LLC in 1989 for “restaurant services. Spicy Seasonings operates the Taco John’s restaurant franchise. As you can see on their website, they claim to have coined the phrase.

The U.S. Supreme Court held today in Jack Daniel’s Properties v. VIP Products that the Rogers test, used to “protect First Amendment interests in the trademark context,” is not relevant “when an alleged infringer uses a trademark as a designation of source for the infringer’s own goods.” The Court therefore vacated the U.S. Court of Appeals for the Ninth Circuit’s ruling that said VIP’s dog toy mimicking a Jack Daniel’s whiskey bottle was an expressive work entitled to First Amendment protection. Justice Kagan authored the unanimous opinion for the Court, while Justice Sotomayor, joined by Justice Alito, and Justice Gorsuch, joined by Justices Thomas and Barrett, each filed concurring opinions.

Last week, Apple filed a petition for the U.S. Court of Appeals for the Federal Circuit (CAFC) to rehear a decision that effectively canceled the tech giant’s application to register the trademark APPLE MUSIC. The petition asks the court to rehear the case in order to direct the Trademark Trial and Appeal Board (TTAB) to narrow the services listed in the trademark application so that it can proceed to registration.

The U.S. Supreme Court today granted a petition brought by U.S. Patent and Trademark Office (USPTO) Director Katherine Vidal that asks, “whether the refusal to register a mark under Section 1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.” The case was decided by the U.S. Court of Appeals for the Federal Circuit (CAFC) in February of last year, and the full court denied a request for panel rehearing or rehearing en banc in August. The February CAFC decision held the Office’s application of Section 2(c) of the Lanham Act to reject the mark TRUMP TOO SMALL was unconstitutional. Specifically, the CAFC panel held that “applying section 2(c) to bar registration of [Steve] Elster’s mark unconstitutionally restricts free speech in violation of the First Amendment.”