Posted onJuly 5, 2021byHenry Sneath|Comments Off on The Rise of Counterfeiting Litigation in Federal Courts
U.S. Supreme Court Issues Important Opinion in Coinbase v. Bielski: Reverses 9th Circuit on Stay Issue –
PIT IP Tech Cast
Court Makes Mandatory a Stay of District Court Actions on Interlocutory Appeal from Denial of Motion to Compel Arbitration
The United States Supreme Court, in a somewhat controversial ruling today, has resolved a circuit split by ruling that interlocutory appeals from a federal district court’s denial of a motion to compel arbitration must automatically stay the underlying District Court case. On June 23, 2023, the Supremes in Coinbase, Inc. v. Bielski, No. 22 – 105 (599 U.S. ____ 2023), held that the district court must stay its proceedings while an interlocutory appeal on the question of arbitrability is ongoing.
Not surprisingly, with the massive sale and transport of goods through Amazon and Alibaba, we are seeing and handling in the courtroom litigation world a lot of actions involving alleged counterfeiting and resultant sales of products on these website marketplaces. These claims involve the freezing of the Amazon Sellers’ financial accounts with Amazon through Federal Court Temporary Restraining Orders (TRO’s) and preliminary injunctions and are being brought primarily pursuant to Federal Statutory Law, potentially allowing for recovery of attorneys fees and punitive damages. These cases are being filed as though they were class actions or mass tort cases, and involve sometimes hundreds of defendants. Most defendants suffer judgment against them by default for failure to answer the complaint, even though the courts are waiving normal service of process rules and are allowing service of the complaint on these defendants by email. Many are foreign entities with fictitious names and in many cases they choose simply to forfeit the amount of money that they have in their Amazon account. Their entire Amazon account is frozen even if the allegedly infringing sales are very small and make up only a small portion of their Amazon funds. These suits fall generally into two camps:
While these two variations sound similar, they each require a solid understanding of either or both, the Lanham Act/Trademark Law or an understanding of patent law on infringement and USPTO proceedings. There are actions filed in the US District Court for the Western District of Pennsylvania and in many other federal jurisdictions. Our Houston Harbaugh law firm intellectual property group which I chair is prepared to prosecute or defend these matters and I can be reached at sneathhm@hh-law.com or 412-288-4013.
Posted onApril 13, 2020byHenry Sneath|Comments Off on #3M® Sues NJ Based #PerformanceSupply, LLC for #N-95 Mask #Trademark Infringement and #Covid Related #PriceGouging
Plaintiff #3M® Company filed suit in the USDC SDNY on Friday against New Jersey based Performance Supply, LLC alleging Trademark Infringement, Unfair Competition, False Endorsement, False Designation of Origin, False Advertising, Trademark Dilution, NY State Law Deceptive Acts and Practices, and seeking Injunctive Relief and Exemplary Damages. 3M indicates in the suit that any recovery of damages will be donated to Covid-19 related charities. See the Complaint as filed here:
3M claims that Performance Supply falsely tried to obtain a purchase order and sell through a quote to the City of New York, millions of #N-95 Respirator Masks to be used in the battle against #Covid-19. Performance allegedly used the 3M marks (including the TM phrase “3M Science. Applied To Life”®) and 3M references liberally in its proposal and sought to confuse and deceive NY City into believing that Performance Supply and 3M were aligned and working together on the offer to sell masks. Further, the lawsuit alleges that Performance engaged in price gouging in seeking to charge NY prices that were 500-600% above 3M’s list price.
3M alleges that its marks are incontestable, arbitrary and strong and have long been associated with safety masks and equipment. They stress that during this Corona virus crisis, 3M HAS NOT INCREASED ITS PRICES and that this marks a strong comparison to Performance which is accused of price gouging and other business torts under both Federal and NY State Laws. Performance, sought a purchase order from NY through a quote sent to NY’s procurement director. In its formal quote, Performance states that “acceptance of the purchase order is at the full discretion of 3M…” This is alleged by 3M to show a false designation of origin and false endorsement by 3M of the quote. 3M is represented by Mayer Brown LLP.
Posted by Henry M. Sneath, Esquire Co-Chair Litigation Practice Group and Chair of the IP Practice Group: Houston Harbaugh, P.C. 401 Liberty Avenue, Pittsburgh, Pa. 15222. Sneath is also an Adjunct Professor of Law teaching two courses; Trade Secret Law and the Law of Trademarks and Unfair Competition at Duquesne University School of Law. Please contact Mr. Sneath at 412-288-4013 or sneathhm@hh-law.com.
We are pleased to announce that the Pit IP Tech Blog has been named one of the Top 100 IP blogs on the net by Feedspot. The Pittsburgh law firm of Houston Harbaugh looks forward to continuing our coverage of IP and technology news and hope that you will continue to read our blog. Thanks for making us a Top 100 blog!
Posted By: Henry M. Sneath Esq., Chair Intellectual Property Practice Group at Houston Harbaugh, P.C., Pittsburgh, Pa. Contact at sneathhm@hh-law.com or 412-288-4013
In Juice Generation, Inc. v. GS Enterprises, LLC (Case No. 2014-1853), the Federal Circuit reversed a decision by the Trademark Trial and Appeal Board (No. 91206450) that sustained an opposition brought by GS Enterprises against Juice Generation’s attempt to register the mark “PEACE LOVE AND JUICE.” The Federal Circuit remanded for further consideration, finding that the TTAB “did not adequately address the weakness of GS’s marks and did not properly consider the three-word combination of Juice Generation’s mark as a whole in comparing it to the two-word combination in GS’s marks.”
Background
Juice Generation operates a chain of juice bars in New York City. It attempted to register the mark “PEACE LOVE AND JUICE” with the USPTO in connection with juice bar services (disclaiming “juice”).
GS Enterprises has four registered trademarks in the restaurant services class that incorporate the words Peace and Love–“P & L PEACE & LOVE,” “ALL YOU NEED IS PEACE & LOVE,” “PEACE & LOVE,” and “P & L PEACE & LOVE NEW YORK.” Examples of two of its marks are shown below:
GS Enterprises filed an opposition to Juice Generation’s application, arguing that the “PEACE LOVE AND JUICE” mark created a likelihood of confusion.
The TTAB considered the 13 DuPont factors in analyzing the likelihood of confusion. It first found that Juice Generation had been using its mark for years without evidence of actual confusion, but it discounted this factor because it did not think that there had been “meaningful opportunities” for actual confusion to occur given the parties’ use of their marks.
The Board next looked to the dominant feature of Juice Generation’s mark (PEACE LOVE) and found it was virtually identical to GS Enterprise’s “PEACE & LOVE” mark.
The Board also looked to at least 26 examples of 3rd parties using similar combinations of Peace and Love in their marks–e.g., “PEACE LOVE AND PIZZA,” “PEACE LOVE YOGURT,” and “PEACE, LOVE & BEER,” but did not find that there was sufficient evidence to show that consumers recognized that other entities were using similar terms in their marks.
On balancing this evidence, the TTAB concluded the there was a likelihood of confusion with consumers and sustained GS Enterprises’ opposition.
The Federal Circuit Vacates and REmands
The Federal Circuit was clearly troubled by the conclusions the TTAB reached. It first noted that likelihood of confusion is a legal conclusion that it reviews de novo, and that it is to be analyzed using the 13 DuPont factors.
The Federal Circuit was concerned by the TTAB’s failure to place much weight in the numerous examples of other marks that used the words “PEACE” and “LOVE” together with other terms. The Court found these examples to be “powerful” evidence that GS Enterprises’ marks were not strong on their face. With so many similar marks, there was substantial prima facie evidence that GS Enterprises marks were not strong. As a result, the Federal Circuit remanded the case to the TTAB to conduct a more thorough analysis of the strength of GS Enterprises’ mark in light of these numerous similar marks.
The Federal Circuit finally noted that the TTAB improperly considered just a portion of Juice Generation’s mark–the PEACE LOVE part–without considering whether the mark as a whole might convey a meaning distinct from GS Enterprises’ marks. As a result, the Federal Circuit also remanded for the TTAB to provide a more thorough analysis of the mark as a whole.
The Supreme Court handed down a decision today in B&B Hardware, Inc. v. Hargis Industries, Inc. (No. 13-352), in which it reversed an Eighth Circuit ruling regarding whether a decision by the Trademark Trial and Appeal Board (TTAB) during an opposition proceeding that there was a likelihood of confusion between two marks could have a preclusive effect in a subsequent trademark infringement lawsuit in a district court. In a 7-2 decision, authored by Justice Alito, the Supreme Court held that in certain circumstances, final decisions by the TTAB can preclude re-litigation of those issues in later forums. Justices Thomas and Scalia dissented, stating that they did not think that TTAB decisions should have preclusive effects.
Background
B&B Hardware registered its trademark “SEALTIGHT” with the USPTO in 1993, which was used with threaded and unthreaded metal fasteners and other related hardware. In 1996, Hargis sought to register its own mark, “SEALTITE” for self-piercing and self-drilling metal screws. B&B Hardware opposed the registration, contending that the marks were confusingly similar.
Although not described in detail, the Court noted that the parties had been involved in disputes before the USPTO and courts in the Eighth Circuit for the last twenty years, including three trips to the Eighth Circuit and two jury verdicts in infringement actions.
Relevant to this case, the parties were before the TTAB on an opposition proceeding brought by B&B Hardware. B&B Hardware successfully argued to the TTAB that the USPTO should not register the SEALTITE mark because it was confusingly similar to its SEALTIGHT mark. While the Lanham Act provides that a decision of the TTAB can be appealed to either a district court or the Federal Circuit, Hargis declined to seek any judicial review, and the decision of the TTAB to not allow registration of the SEALTITE mark became final.
While the opposition proceeding was occurring, B&B Hardware brought a trademark infringement action against Hargis in district court. Once the TTAB decision became final, B&B Hardware argued before the district court that Hargis could no longer contest the issue of likelihood of confusion based on the doctrine of issue preclusion. The district court disagreed, and a jury ultimately concluded that there was no likelihood of confusion. The Eighth Circuit affirmed.
The Supreme Court ultimately reversed both the Eighth Circuit and the district court.
The Supreme Court’s Decision
Issue preclusion is a doctrine that prohibits the redetermination of issues in a later action that have been finally decided in a prior action. In general, it applies “[w]hen an issue of law or fact is actually litigated and determined by a valid and final judgment, and the determination is essential to the judgment, the determination is conclusive in a subsequent action between the parties, whether on the same or a different claim.”
In deciding whether issue preclusion could apply to a TTAB decision, the Court first concluded that issue preclusion is not limited to proceedings involving two courts. It is possible that agency decisions (such as a TTAB decision) can be given preclusive effects unless Congress clearly indicates otherwise. In this case, the Court found that Congress did not indicate in the Lanham Act that TTAB decisions should not be given preclusive effect, so it concluded that issue preclusion is potentially available.
Next, the Court considered whether the TTAB and the district court were, in fact, deciding the same issue in order for issue preclusion to be available. It reviewed the standards applied by both tribunals and concluded that the same likelihood-of-confusion standard applies to both the registration of marks and the question of infringement.
Hargis argued that issue preclusion should not apply because the TTAB considers whether the marks “resemble” each other, while the district court considers how the marks are used in commerce, and that these are different tests. The Court rejected that argument, stating that while the two tribunals may not consider the same usage of the marks, that did not mean that they applied different standards to the usage. It is at this point that the Court noted some important limitations on whether a TTAB decision could be given preclusive effect:
If a mark owner uses its mark in ways that are materially the same as the usages included in its registration application, then the TTAB is deciding the same likelihood-of-confusion issue as a district court in infringement litigation. By contrast, if a mark owner uses its mark in ways that are materially unlike the usages in its application, then the TTAB is not deciding the same issue. Thus, if the TTAB does not consider the marketplace usage of the parties’ marks, the TTAB’s decision should “have no later preclusive effect in a suit where actual usage in the marketplace is the paramount issue.” 6 McCarthy §32:101, at 32–246.
In addition, the Court reiterated that if the TTAB considers a different mark than is at issue in the litigation or has decided a different issue than is before the district court, there can be no issue preclusion.
Because Hargis decided not to appeal the TTAB decision, it was a final judgment. And, because the likelihood of confusion issue was the same in both tribunals, the Court concluded that issue preclusion applied. Thus, the Court reversed the Eighth Circuit and remanded the case.
Issues not decided by the Supreme court
There were a couple of issues that the Court touched on, but did not rule because either the parties had not preserved the issues or they had not been adequately presented. In both instances, the majority noted that the constitutional issues were not before it, but it seems unlikely from what was said that they would have been successful even if they had been.
For instance, the Court noted that it has never had the occasion to determine whether issue preclusion from an agency decision violates the separation of powers in Article II and III of Constitution. In addition, the Court indicated that Hargis failed to preserve a Seventh Amendment challenge that giving preclusive effect to an non-jury, agency decision denied it a right to a jury.
It will be interesting to see if those challenges are raised with more care in future cases before the Court.
Conclusion
As seems to be typical in intellectual property cases before the Supreme Court, the Court did not set down a bright-line rule. The Court held that in some appropriate circumstances, decisions by the TTAB can be given preclusive effect in subsequent litigation in Article III courts. The Court caveated its determination, though, so litigants in the TTAB will need to carefully consider what the risks might be if they do not seek judicial review of a TTAB decision in either a district court or before the Federal Circuit. This uncertainty will likely give rise to more challenges to TTAB decisions, especially where there is a risk that those decisions have aspects that are similar to issues being raised in court (such as likelihood of confusion).
For further discussion of this case, the Likelihood of Confusion blog has some good coverage.
When applying to register a trademark or service mark, one of the key requirements is that the applicant has used or intends to use the mark in commerce. The Federal Circuit recently considered what is sufficient “use in commerce” for purposes of obtaining a service mark in Couture v. Playdom, Inc.,No. 2014-1480 (March 2, 2015).
Background
Playdom filed an application to register the service mark PLAYDOM on May 30, 2008 and submitted a specimen that purported to demonstrate that the mark had actually been used in commerce. Specifically, Playdom submitted a screen shot of the only page on its website (www.playdominc.com), which stated “[w]elcome to PlaydomInc.com. We are proud to offer writing and production services for motion picture film, television, and new media. Please feel free to contact us if you are interested.” The webpage also indicated that it was still under construction. The USPTO registered the mark on January 13, 2009. However, Playdom did not actually provide any services under the mark until 2010.
On February 9, 2009, Couture filed his own application to register the identical mark—PLAYDOM. Not surprisingly, the examining attorney rejected Couture’s mark based on Playdom’s mark. In response, Couture filed a petition to cancel Playdom’s mark, arguing that Playdom had not actually used the mark in commerce when it said it did.
The Board granted the petition, finding that Playdom had not provided services as of the filing date of the application because it had only indicated that it was willing to provide services then, not that it actually had provided services.
The Federal Circuit affirmed the cancellation on the same grounds.
Analysis
Under the Lanham Act, a service mark is used in commerce when it (1) is used or displayed in the sale or advertising of services and (2) the services are rendered in commerce. 15 U.S.C. § 1051(a)(1). And, when claiming that the mark has been used in commerce, it must have actually been used in commerce as of the application’s filing date.
In analyzing this provision, the Federal Circuit noted that “used in commerce” means actual use, and not preparations. If an applicant submits advertising relating to the services as proof of use, the advertising must relate to existing services that have already been offered to the public, and not services that the applicant intends to perform in the future.
Because there was no evidence in the record that Playdom actually rendered any services before 2010, the Board correctly cancelled Playdom’s 2008 registration.
Conclusion
Small things can make a difference when applying to register trademarks and service marks. Counsel and applicants need to be aware of these requirements and accurately complete the applications. In circumstances like these, applicants can indicate on the application that they have a bona fide intent to use the mark in the future, which allows for the application to proceed.
You might wonder what could cause people to take to social media to rail against a trademark suit. It turns out one thing is beer: IPAs to be more exact.
Law360 and CNBC reported this week about the social media backlash that occurred when Lagunitas Brewing Co. brought a trademark suit against Sierra Nevada Brewing Co. over the use of “IPA” on labels for India Pale Ale. The backlash was so great that Lagunitas moved to dismiss its lawsuit just two days after it filed the suit.
For those of you who practice in the area of trademark law, you might quickly jump to the conclusion that the suit was a weak one given that the term IPA sounds very “descriptive” or “generic” at first glance. However, the suit wasn’t that simple. Lagunitas didn’t just oppose the use of “IPA” on the label, and in fact there are a lot of beers out there with “IPA” on the label (yes, I’ll admit I’m pretty well aware of these other beers having tried a few myself). Lagunitas’ objection was the way in which Sierra Nevada designed its logo, which allegedly looked very similar to Lagunitas’.
Whether Lagunitas would have ultimately prevailed in a court of law is up for debate. However, Lagunitas appeared to be losing in the court of public opinion and that was enough to push it to withdraw the suit. This is an interesting issue for IP practitioners to keep in mind in those cases where a client’s business is dependent upon favorable public opinion.
Posted onSeptember 17, 2013by|Comments Off on Western District Analyzes Trademark Issues: Use in Commerce; Abandonment; and Doctrine of Foreign Equivalents
On September 13, 2013, Judge Cercone of the Western District of Pennsylvania issued an opinion in Taza Systems, LLC v. Taza 21 Co., LLC, et al., No. 2:11-cv-073, 2013 U.S. Dist. LEXIS 130974 (W.D. Pa. September 13, 2013), covering various fundamental trademark topics.
Relevant Facts
Taza Systems is the owner of three service mark registrations on the Principal Register of the USPTO: (1) the word mark TAZA; (2) the word mark TAZA A LEBANESE GRILL; and (3) the design mark TAZA A LEBANESE GRILL. These marks cover restaurant and bar services in International Class 43. Taza Systems operates two restaurants in Woodmere, Ohio and Cleveland, Ohio. In July 2008, Taza 21 opened a restaurant in Pittsburgh, Pennsylvania, under the names TAZA21, TAZA21 FRESH, and TAZA21 FRESH SHAWARMA CAFE.
Use in Commerce
Taza 21 asserted that Taza Systems’ registered marks were invalid and subject to cancellation because Taza Systems did not provide services in interstate commerce as required to justify registration under the Lanham Act.
According to the Lanham Act, 15 U.S.C. § 1051 et seq., a mark is used “in commerce” on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce. Commerce is defined to mean “all commerce which may lawfully be regulated by Congress.” Because Congress’ authority under the Commerce Clause extends even to purely intrastate activity if that activity substantially affects interstate commerce, the Lanham Act’s authority includes the same. The court discussed the term “in commerce” as it applies to restaurants located in a single state. Some factors that have been deemed to satisfy the interstate commerce requirement include location near interstate highways, servicing customers from other states, advertisements in out-of-state publications and purchasing ingredients from out-of-state vendors.
The court determined that Taza 21 would have the burden of proving at trial that Taza Systems did not use the registered service marks “in commerce”, and in doing so, Taza 21 would have to produce evidence to contradict and overcome the rebuttable presumption of validity and ownership of the marks afforded to Taza Systems because it holds registration certificates for all three service marks. The court concluded that Taza 21 failed to adduce sufficient evidence that could establish at trial that the service marks are not used in commerce.
Abandonment
Taza 21 asserted that Taza Systems’ marks were invalid and subject to cancellation because Taza Systems failed to police third-party uses of confusingly similar marks.
Under 15 U.S.C. § 1127, if a trademark or service mark becomes generic, or otherwise loses its significance as an indicator of source due to the conduct of the owner, it can be deemed legally abandoned. A mark can also be deemed legally abandoned if the owner discontinues use, with an intent not to resume it. However, a party arguing for abandonment has a high burden of proof because abandonment, being in the nature of a forfeiture, must be strictly proved. A “failure to police” a mark is one type of owner conduct that is commonly assumed to result in abandonment. However, in order to prove this type of abandonment, the challenger must establish that the presence of third-party users in the marketplace resulted in what is described as a “loss of trade significance,” which is another way of saying that a mark is no longer distinctive because it fails to identify and distinguish the services of one person from the services of others and to indicate the source of the services. As a reminder, the distinctiveness of a mark is evaluated by four categories: (1) arbitrary or fanciful; (2) suggestive; (3) descriptive; and (4) generic. The first two categories are inherently distinctive and are afforded protection under the Lanham Act automatically; the third type of mark must acquire distinctiveness as an identifier of the source of goods or services before it can be eligible for protection; the fourth category of marks is never protected as a mark.
The court analyzed Taza 21’s evidence, which consisted of only a list compiled by counsel of 51 businesses that included TAZA in their name and an excerpt from a Thomson CompuMark Trademark Research Report issued to Taza Systems’ attorney seven years prior, and determined that such evidence did nothing to establish that Taza Systems’ marks lost their significance as an indicator of the source of its restaurant and bar services. According to the court, the evidence did nothing more than establish that, at one point in time, various businesses across the United States may have used the word TAZA in their names and that those businesses ranged from coffee shops and restaurants to blown glass manufacturers and residential building contractors. Moreover, the court applied the Dawn Donut Rule (see Dawn Donut Comp. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959)) and concluded that, because these third parties use their marks in geographically “separate trading areas” and there was no evidence that Taza Systems had imminent plans to expand into the third-party user’s territory, no public confusion was likely. The court ruled that Taza 21 failed to submit evidence sufficient to establish that the moniker TAZA had become generically descriptive of restaurant services as a result of Taza Systems’ failure to police the market.
Descriptiveness – Doctrine of Foreign Equivalents
Taza 21 asserted that Taza Systems’ marks were invalid and subject to cancellation because the marks were merely descriptive upon application of the doctrine of foreign equivalents.
Registration of a mark on the Principal Register constitutes prima facie evidence of the validity of a trademark and of the owner’s exclusive right to use it in commerce. However, if a challenger comes forward with evidence to establish that the mark was erroneously registered, the registration can be cancelled or otherwise invalidated. Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine whether they are generic or descriptive. However, this doctrine applies only if the ordinary American purchaser would stop and translate the mark into English. When it it unlikely that an American buyer would translate the foreign mark, either because of unfamiliarity with the foreign word or association of the word with its foreign language through decor, the doctrine does not apply.
During prosecution of its marks, Taza Systems disclosed that the word “taza” translates from the Lebanese dialect of Arabic to English as “fresh,” and each of the registration certificates explicitly reflects this translation. Taza 21 submitted as evidence printouts from various on-line dictionaries reflecting that “taza” translated from Hindi to English as “fresh” and “green,” that “taze” translated from Turkish to English as “fresh” and “youthful,” and “taza” translated from Persian to English as “fresh, young, new.”
The court analyzed this limited evidence and determined that Taza 21 failed to adduce any evidence that would allow a reasonable juror to overcome the presumption of validity afforded to Taza Systems by its federal registrations and to conclude that the ordinary American purchaser would deem the mark TAZA to be descriptive of “restaurant and bar services.” The court opined that, because the mark TAZA appeared in the context of a restaurant that serves Lebanese food, plays Lebanese music and is decorated with Lebanese decor, a reasonable juror could find that the ordinary American purchaser would not be prompted to translate the mark TAZA, thereby making the doctrine of foreign equivalents inapplicable. Moreover, even assuming that the doctrine of foreign equivalents might apply, the court determined that Taza 21 failed to produce evidence that the doctrine would invalidate the marks. In making this decision, the court considered certain statistics, which demonstrated that only a very low percentage of the U.S. population speaks Arabic, and concluded that the ordinary American purchaser would not stop and translate the term TAZA into English. The court also considered the pages from the various dictionaries submitted by Taza 21 and determined that such evidence would not invoke the doctrine because there are multiple translations and varying foreign spellings and pronunciations. Finally, assuming arguendo that Taza 21 could establish that the ordinary American purchase would stop and translate “taza,” the court held that no reasonable juror could conclude that “fresh” is a word used to describe restaurant and bar services. Although “fresh” could be suggestive of the type of products or ingredients used at a particular restaurant, as opposed to another, suggestive marks are inherently distinctive and entitled to trademark protection. The court held that the Taza Systems’ registrations for “fresh” do not remove an inevitably descriptive or generic word for restaurant or bar services in a foreign language from public use in the United States.
On June 21, 2013, Wendy’s filed a lawsuit against United Dairy Farmers, Inc. alleging infringement of Wendy’s well-known Frosty trademark along with infringement of its red and yellow trade dress used on its Frosty cups. Wendy’s asserts that the Frosty trademark is famous and that sales of products identified by the Frosty trademark have exceeded tens of millions of dollars. Also, Wendy’s asserts that its yellow and red trade dress is famous and that there is widespread consumer recognition of the trade dress as designating the source of its desserts. Wendy’s alleges that United Dairy Farmers’ marketing of its products as “Frosties” and “Frosty Malts” is a complete knock-off of Wendy’s signature Frosty dessert. According to a Wendy’s spokesman, Wendy’s filed this suit to protect its iconic brand and to avoid consumer confusion.
The lawsuit has been filed in the United States District Court for the Southern District of Ohio Eastern Division, No. 2:13-cv-596. Wendy’s is seeking compensatory and punitive damages and is seeking an injunction barring United Dairy Farmers from selling its products and requiring it to destroy its packaging.
Under Armour has filed suit against Nike alleging that Nike has infringed certain Under Armour trademarks as a result of Nike’s use of the phrase “I Will” in advertisements. Under Armour alleges that Nike’s use of “I Will” infringes its trademark rights, dilutes a famous mark, e.g. the slogan “I will protect this house,” and constitutes unfair competition. Under Armour alleges that Nike launched an advertising campaign on its Facebook page and YouTube video page that repeatedly use the “I Will” trademark/tagline, and as a result, consumers have already associated Nike’s use of “I Will” with Under Armour.
Under Armour filed the lawsuit on February 21, 2013, in the United States District Court for the District of Maryland, Baltimore Division (1:13-cv-00571). Nike has not yet filed a response to the complaint. We will continue to monitor this action.
Contact our Pittsburgh Intellectual Property, Cyber and Data Security, Trade Secret, DTSA and Technology Attorneys at Houston Harbaugh, P.C. through IP and Litigation Sections Chair Henry M. Sneath at 412-288-4013 or sneathhm@hh-law.com. While focusing first on health care and prevention issues for family, friends and employees, we are also beginning to examine the overall Covid Law related issues in business litigation, contract force majeure, trusts and estates litigation and insurance coverage issues that will naturally follow the economic disruption of the Covid-19 pandemic.
Some posts herein are from the HH-Law resources of PSMN® and PSMNLaw®. Business Litigation. Pittsburgh Strong® and DTSALaw®, PSMN® and PSMNLaw® are federally registered trademarks of HH-Law. See Firm Website at: https://www.hh-law.com/Professionals/Henry-Sneath.shtml
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