Tag Archives: trademark

Rogers v. Grimaldi and the TMA

Posted on January 15, 2021 by rtushnet

The legislative history of the TMA, just enacted into law, includes several paragraphs blessing Rogers v. Grimaldi and saying it’s what Congress understands the Lanham Act to mean. I’d be interested to know how that got in there, and I wonder … Continue reading →

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Nominative fair use in the Seventh Circuit: a practical tool

Posted on December 31, 2020 by rtushnet

Data Mgmt. Ass’n Int’l v. Enterprise Warehousing Solutions, Inc., 2020 WL 7698368, No. 20 C 04711 (N.D. Ill Dec. 28, 2020) Without resolving burden of proof issues, the court uses nominative fair use to quickly resolve a case where fair … Continue reading →

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product changes as false advertising: TM may serve as express warranty of formulation & quality

Posted on December 30, 2020 by rtushnet

Starr v. VSL Pharmaceuticals, Inc., No. TDC-19-2173, 2020 WL 7694480 (D. Md. Dec. 28, 2020) This putative class action is related to the longstanding trademark/false advertising litigation between the VSL parties and Claudio De Simone parties, and probably qualifies as … Continue reading →

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no Lanham Act claims, including false advertising, allowed over cannabis

Posted on December 30, 2020 by rtushnet

Shulman v. Kaplan, 2020 WL 7094063, No. 2:19-CV-05413-AB (FFMx) (C.D. Cal. Oct. 29, 2020) The parties compete in the cannabis market, and some defendants formerly worked with Shulman, but that relationship broke down. Shulman sued, alleging four federal claims and … Continue reading →

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What Dastar took, does 1202 give back?

Posted on December 14, 2020 by rtushnet

Another older case found in my year-end roundup. Pilla v. Gilat, 2020 WL 1309086, No. 19-CV-2255 (KMK) (S.D.N.Y. Mar. 19, 2020) Pilla provides “professional architectural services to various construction projects.” Defendants own a “luxury construction project” at 324–326 West 108th … Continue reading →

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Penn. dilution is broader than federal dilution; former licensee might not own marks despite its registrations

Posted on December 11, 2020 by rtushnet

I.M. Wilson, Inc. v. Otvetstvennostyou “Grichko,” No. 18-5194, 2020 WL 6731109 (E.D. Pa. Nov. 13, 2020) The OG parties are Russian and Czech entities that manufacture and sell ballet and pointe shoes under the name GRISHKO. In the early 1990s, … Continue reading →

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MGM ekes out motion to dismiss TM claim against movie content

Posted on December 9, 2020 by rtushnet

Deus ex Machina Motorcycles Pty. Ltd. v. Metro-Goldwyn-Mayer Inc., No. CV 20-4822-PLA, 2020 WL 6875178 (C.D. Cal. Oct. 23, 2020) The Honey Badger case continues to screw up 9th Circuit law, here making a movie’s protection against allegations of trademark … Continue reading →

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When is “verified by [platform]” an actionable misrepresentation about authenticity?

Posted on December 8, 2020 by rtushnet

Choon’s Design, LLC v. Contextlogic Inc., 2020 WL 6891824, No. 19-cv-05300-HSG (N.D. Cal. Nov. 24, 2020) Defendant Contextlogic runs Wish, which is allegedly a “bargain hunting retail website and smartphone shopping application,” with 94 percent of its merchants based in … Continue reading →

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allegedly false warranty letter not material, but could still be TM infringement

Posted on December 7, 2020 by rtushnet

Window World Int’l, LLC v. O’Toole, 2020 WL 7041814, No. 4:19-cv-2363-SEP (E.D. Mo. Nov. 30, 2020) Plaintiff WW sells exterior home remodeling products, and licenses independently owned/operated franchises to distribute them. Defendants are franchisees/related people. They sued WW in North … Continue reading →

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Amicus brief in Stouffer v. Nat’l Geographic (a title v title infringement case)

Posted on November 10, 2020 by rtushnet

With Mark Lemley, Mark McKenna, and a number of other IP professors, I submitted this amicus brief arguing that the 10th Circuit should adopt Rogers v. Grimaldi (without any exclusion for title v title claims) for assessing trademark claims against … Continue reading →

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