Category Archives: procedure

Court applies Lexmark to TM case, in the alternative

Ahmed v., 2014 WL 2925292, Nos. 13–13117, 14–10026 (D. Mass. June 27, 2014) This isn’t a difficult case, but it represents the first move towards applying Lexmark to §43(a) in its entirety.  Only time will tell whether this will … Continue reading


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No nominative fair use or dilution dismissals if plaintiff pleads the elements?

Valley Forge Military Academy Found. v. Valley Forge Old Guard, Inc., No. 09–2373, 2014 WL 2476115 (E.D. Pa. Jun. 2, 2014) Nominative fair use doesn’t have to work this badly, guys! Valley Forge Military Academy Foundation operates the Valley Forge … Continue reading

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Tough sledding: statements to industry-focused publication can be commercial speech

Skedco, Inc. v. ARC Products, LLC, 2014 WL 2465577, No. 3:13–CV–00696 (D. Or. Jun. 2, 2014) The parties compete in the market for emergency medical rescue equipment, and are suing over false advertising. Plaintiff’s Sked is “an evacuation sled system … Continue reading

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claim proceeds against allegedly scammy publishing company now owned by Penguin

James v. Penguin Group (USA) Inc., 2014 WL 1407697, No. 13 Civ. 2801 (S.D.N.Y. Apr. 11, 2014) Plaintiffs sued Penguin and Author Solutions, a Penguin company, for breach of contract, unjust enrichment, and violation of California, NY, and Colorado consumer … Continue reading

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using metatags/buying AdWords isn’t trademark use

Radiancy, Inc. v. Viatek Consumer Products Group, Inc., 2014 WL 1318374, No. 13–cv–3767 (S.D.N.Y. Apr. 1, 2014) And now for a different result on the pleading standards for affirmative defenses!  Among the many arguments in this case, Viatek raised unclean … Continue reading

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Twiqbal doesn’t apply to unclean hands defense

Newborn Bros. Co. v. Albion Engineering Co., No. 12–2999, 2014 WL 1272109 (D.N.J. Mar. 27, 2014) Newborn sued its competitor Albion for allegedly falsely advertising its dispensing guns (used to apply sealants and adhesives) as made in the US when … Continue reading

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Must false advertising claims always be pled with particularity?

LT Int’l Ltd. v. Shuffle Master, Inc., 2014 WL 1248270, No. 2:12–cv–1216 (D. Nev. March 26, 2014) Here, the court disapproved a five-page complaint, finding that the false advertising and related claims sounded in fraud but didn’t satisfy Rule 9(b), … Continue reading

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Lanham Act 43(a) and Rule 9(b)

SKEDKO, Inc. v. ARC Products, LLC, 2014 WL 585379, No. 3:13–cv–00696 (D. Ore. Feb. 13, 2014) Short opinion finding that Rule 9(b) applies to Lanham Act false advertising claims (here, counterclaims), because they sound in fraud.  Fraud might not be … Continue reading

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Oracle suit against third party claiming to provide lawful software updates proceeds

Oracle America, Inc. v. TERiX Computer Company, Inc., No. 13-cv-03385, 2014 WL 31344 (N.D. Cal. Jan. 3, 2014) Oracle sells hardware, software, and support and consulting services to maintain those.  But people also use third-party vendors for support, and here … Continue reading

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TM infringement no matter how dissimilar the marks?

Surface Supplied, Inc. v. Kirby Morgan Dive Systems, Inc., No. C 13–0575, 2013 WL 6354244 (N.D. Cal. Dec. 5, 2013) Sometimes I think Iqbal/Twomblyis for people who don’t own trademarks.  Here, Kirby Morgan sought to amend its counterclaims for trademark … Continue reading

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