Erik K Pelton

DECEMBER 20, 2022

The year saw many trademark stories in the news as backlogs continued at the USPTO even while application filing numbers dropped from their all time highs during the two previous years. Here are the biggest trademark stories of 2022 that we have been following at EMP&A. Celebrity trademark messes. Queen of Christmas.

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Trademark Non-Fungible Tokens All Rights Reserved False Advertising 130

43(B)log

SEPTEMBER 9, 2021

2021) You probably know that the court of appeals sent this case back for retrial on an initial interest confusion theory. I won’t say much about that, though I do have a big question, but there are also false advertising aspects of the case. Select Comfort Corp. Baxter; 996 F.3d 3d 925 (8 th Cir.

False Advertising 59

False Advertising Advertising Advertising Trademark 59

43(B)log

SEPTEMBER 22, 2021

2021 WL 765293, No. 26, 2021) The parties compete to sell protein powder to consumers. SI03 originally sued for false advertising and related claims, and Musclegen counterclaimed similarly. SI03, Inc. Musclegen Research, Inc., 1:16-CV-274 RLW (E.D.

False Advertising 45

False Advertising Advertising Advertising Marketing 45

43(B)log

SEPTEMBER 16, 2021

PureThink, LLC, 2021 WL 2483778, No. May 18, 2021) Neo4j specializes in graph database management systems. It has trademark registrations for the word mark “NEO4J.” Neo4j, Inc. 5:18-cv-07182-EJD (N.D. I still don’t know what that means, but ok.] Neo4j ultimately considered PureThink’s Neo4j Government Edition to be a problem.

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False Advertising Advertising Advertising Licensing 64

43(B)log

AUGUST 12, 2021

2021 WL 1215869, No. 31, 2021) Plaintiffs alleged that Safelite misrepresented the nature and characteristics of plaintiffs’ products to consumers in violation of the Lanham Act. Campfield v. Safelite Gp., 2:15-cv-2733 (S.D. Safelite counterclaimed for various business torts/CFAA violations. can be safe and is viable.”

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False Advertising Advertising Advertising Marketing 59

43(B)log

APRIL 15, 2024

GMP owns two federally registered trademarks: the “GOOD MEAT” standard character mark and the “GOOD MEAT BREAKDOWN” design mark. The court denies a preliminary injunction on the trademark claims based on lack of likely success on the merits, but declines to dismiss either infringement or false advertising claims.

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Delaware Intellectual Property Litigation Blog

MAY 15, 2021

May 7, 2021), the Court granted Natera’s motion to exclude at trial the opinions of CareDx’s damages expert relating to “corrective advertising damages.” CareDx’s Lanham Act claims were based on allegations that Natera falsely represented that Natera’s Prospera kidney transplant test is superior to CareDx’s Allosure Kidney test.

False Advertising 45

False Advertising Advertising Advertising Copying 45

Fish & Richardson Trademark & Copyright Thoughts

OCTOBER 8, 2021

Managing Intellectual Property (MIP) magazine recently recognized Fish & Richardson Associate Vivian Cheng as one of its 2021 “Rising Stars.” Cheng is based in Fish’s New York office, where she focuses her practice on trademark, trade dress, unfair competition, and copyright litigation.

Intellectual Property 40

Intellectual Property False Advertising Litigation Advertising 40

43(B)log

SEPTEMBER 24, 2021

2021 WL 1893074, No. May 11, 2021) Facebook’s application of “Russia state-controlled media” label to a news page on Facebook was not commercial advertising or promotion. Mentioned here mostly to highlight the differences in pleading standards applied to trademark and false advertising claims. Maffick LLC v.

Advertising 59

Advertising Advertising False Advertising Business 59

43(B)log

MARCH 6, 2024

1, 2024) NYU Langone sued Northwell for trade dress infringement, unfair competition and false designation of origin, and false advertising under the Lanham Act, as well as related claims under the New York GBL and New York common law. The court dismissed the complaint—the false advertising claims with prejudice.

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False Advertising Advertising Advertising Reporting 59

43(B)log

AUGUST 16, 2021

City of Pasadena, 2021 WL 3553499, No. 12, 2021) For over a century, PTRA has hosted the Rose Parade and Rose Bowl Game as part of its annual New Year’s Day Celebration. It does so at the Rose Bowl Stadium under three contracts with Pasadena, including a Master License Agreement, Trademark Agreement, and Trademark Consent Agreement.

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Fair Use False Advertising Intellectual Property Ownership 94

Technology & Marketing Law Blog

JUNE 12, 2022

Doe, 2021 WL 3631269 (D. Sells, 2021 WL 4429067 (S.D. 9, 2021): “Initial interest confusion, however, goes to the seventh likelihood of confusion factor – the existence and extent of actual confusion; it is not a stand-alone basis for a claim of infringement.” Citrusbyte, LLC, 2021 WL 5750238 (C.D.

Trademark 90

Trademark Advertising Advertising False Advertising 90

43(B)log

SEPTEMBER 6, 2021

Clean & Sober Media, LLC, 2021 WL 3702243, No. Is that true for false advertising plaintiffs? A jury found defendants liable for false advertising through a purportedly unbiased, independent site. 19-56008, No. 19-56072, Fed.Appx. - (9 th Cir. Here, the parties compete in the market for addiction treatment.

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False Advertising Advertising Advertising Trademark 69

43(B)log

FEBRUARY 16, 2023

22, 2022) This is a super messy case with a lot going on; I’m going to blog about it mainly to highlight a new thing you can apparently do with a trademark application , which is use it on non-Amazon platforms to gain advantages. But (see below) Jones didn’t plead trademark infringement [would fraud on the PTO have worked?

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False Advertising Trademark Registration Advertising 87

43(B)log

SEPTEMBER 27, 2021

2021 WL 4149782, No. 13, 2021) Not having a materiality or harm requirement really makes a difference in trademark cases compared to false advertising cases—look at the reasons this false advertising claim fails. AFC sued MedHelp for Lanham Act false advertising. Medhelp, P.C.,

False Advertising 59

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The TTABlog

AUGUST 12, 2021

Bayer Consumer Care AG, Bayer Healthcare LLC , 2021 USPQ2d 126 (4th Cir. 2021), reh’g denied , Mar. Welch 2021. TTABlogged here ]. Read comments and post your comment here. Text Copyright John L.

False Advertising 89

False Advertising Advertising Advertising Trademark 89

43(B)log

OCTOBER 29, 2021

11, 2021) A rare bankruptcy/false advertising interaction. Of relevance here, Everlog argued that the false advertising damages were nondischargeable in bankruptcy. BTL argued that summary judgment was inappropriate because the district court didn’t consider whether the false advertising was “malicious.”

False Advertising 72

False Advertising Advertising Advertising Litigation 72

43(B)log

SEPTEMBER 20, 2021

2021 WL 2270511, No. 3, 2021) The parties compete in the market for custom landscape design services. “[I]n Each webpage that contained one of McCleese’s photos also contained Natorp’s own trademark and copyright symbols at the top and bottom. Along with copyright claims, McCleese asserted Lanham Act false advertising claims.

Copying 64

Copying False Advertising Social Media Advertising 64

Indiana Intellectual Property Law

MARCH 7, 2023

for trademark infringement, false advertising and patent infringement. The company holds several patents and trademarks related to its products, including its flagship product, the EMSCULPT device. The Indiana Secretary of State indicates that the corporation was created in 2021. 5,572,801 and 6,069,279.

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False Advertising Contracts Advertising Advertising 52

43(B)log

AUGUST 24, 2021

2021 WL 3170600, No. 27, 2021) A rare choice of law opinion involving competitors. This is a trademark infringement claim but Lontex asserted claims under various state unfair trade practices law. Thus, Lontex was left with only common-law and federal trademark claims. Lontex Corp. 18-5623 (E.D. But that was no matter. “In

Business 69

Business Law False Advertising Advertising 69

43(B)log

AUGUST 27, 2021

3:20-CV-251-DCLC-DCP, 2021 WL 3277260 (E.D. 14, 2021) (R&R) In this timeshare v. This matches pretty well with the trademark standard that unclean hands requires that the plaintiff must have secured the right upon which it sues by inequitable conduct. Collection Development, LLC v. Wesley Financial Group, LLC, No.

False Advertising 40

False Advertising Advertising Advertising Trademark 40

43(B)log

DECEMBER 23, 2021

2021 WL 6049964, No. 12, 2021) After Lexmark , can a competitor bring a false association claim when the false association is with an unrelated third party? This court answers yes, though limits the effect of that by applying what looks like ordinary false advertising analysis. FireBlok IP Holdings, LLC v.

False Advertising 59

False Advertising Advertising Advertising Designs 59

BYU Copyright Blog

APRIL 25, 2022

Our last report on this case detailed the Second Amended Complaint that Columbia University ("Columbia") filed against the Encyclopaedia Iranica Foundation ("EIF") in early 2021. March 2, 2022, EIF filed an Answer to the Second Amended Complaint. March 2, 2022, EIF filed an Answer to the Second Amended Complaint.

False Advertising 52

False Advertising Copyright Infringement Confidentiality Advertising 52

43(B)log

SEPTEMBER 7, 2021

Marchese, 2021 WL 3783259, No. 26, 2021) Always something new in trademark! Perhaps overreacting, Wakefern sued for trademark infringement and false advertising in violation of the Lanham Act and violation of state unfair competition law, which is coextensive and thus disappears from our story.

False Advertising 45

False Advertising Advertising Advertising Marketing 45

Technology & Marketing Law Blog

SEPTEMBER 18, 2023

The defendants bought competitive keyword ads on Adler’s trademarks, which Adler objected to. The district court initially dismissed Adler’s trademark claims , but the Fifth Circuit unfortunately revived the claims citing initial interest confusion (UGH). LoanStreet v. Second Circuit Says: Great, Have a Nice Day!–1-800

Advertising 82

Advertising Advertising False Advertising Trademark 82

LexBlog IP

DECEMBER 10, 2021

Disgorgement in a noncomparative false advertising case: doctrinal drift? — Rebecca Tushnet (@rtushnet) December 10, 2021.

False Advertising 40

False Advertising Advertising Advertising Intellectual Property 40

43(B)log

OCTOBER 24, 2023

Defendants admitted that they performed as Jade at a “90’s Kickback Concert” held in three different locations in 2021; they did not account to Reed for any profits. This is why co-ownership is disfavored in trademark—but co-ownership is not prohibited. Reed alleged that Holloway was violating §32 of the Lanham Act.

False Advertising 59

False Advertising Ownership Service Mark Advertising 59

43(B)log

SEPTEMBER 7, 2021

Yu, 2021 WL 1518993, No. 16, 2021) Big Ligas is owned by three members equally: Daniel Echavarria, also known as Ovy; Christian Andres Salazar; and Paulo Londra. She allegedly falsely represented that she was authorized to deliver Londra’s “recording artist and songwriting services. False advertising: “That Ms.

False Advertising 59

False Advertising Fair Use Advertising Advertising 59

Technology & Marketing Law Blog

DECEMBER 19, 2021

Earlier this year, I blogged a ruling holding that Seeking Arrangements’ trademark infringement claim against Luxy could proceed because Luxy included Seeking Arrangements’ purported trademarks in its keyword metatags. Yes, this was a 2021 decision. 2021 WL 5936974 (C.D. More Posts About Keyword Advertising.

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Advertising Advertising Settlement Trademark 107

43(B)log

AUGUST 27, 2021

5:20-CV-142-FL, 2021 WL 3284799 (E.D.N.C. 30, 2021) Dynatemp and another company sued defendants for false advertising and related claims; defendant RMS counterclaimed similarly. Notable holdings: RMS didn’t plausibly allege that plaintiffs falsely designated their goods. Dynatemp Int’l, Inc. R421A, LLC, No.

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False Advertising Branding Brands Branding 45

IP Tech Blog

JANUARY 10, 2022

In January 2021, I noted that the U.S. A similar pattern emerged at the end of 2021, culminating with eight Section 337 complaints filed between December 15 – 31, 2021. and other unfair acts such as misappropriation of trade secrets, false advertising, breach of contract, and antitrust violations.

False Advertising 57

False Advertising IP Patent Infringement Intellectual Property 57

43(B)log

SEPTEMBER 7, 2021

2021 WL 1534988, No. The claim for cancellation of the ‘675 Mark was based on fraud in obtaining the trademark registration and misrepresentation of source, whereas their claim for cancellation of the ’549 and ’077 Marks was based on misrepresentation of source alone. Tapestry, Inc. Chunma USA, Inc., 20-CV-0271 (JMF) (S.D.N.Y.

False Advertising 59

False Advertising Registration Trademark Registering Trademarks 59

Technology & Marketing Law Blog

AUGUST 17, 2021

Jim Adler runs a personal injury law firm that claims trademarks in JIM ADLER, THE HAMMER, TEXAS HAMMER, and EL MARTILLO TEJANO. It bids on the Adler trademarks for “click-to-call” keyword ads. ” Adler sued for trademark and related claims. ” Adler sued for trademark and related claims.

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Advertising Advertising Trademark Settlement 105

43(B)log

SEPTEMBER 28, 2021

2021 WL 4134839, No. 13, 2021) Eric Goldman has highlighted the toxic assumptions about sex workers and their clients that the court tosses off in its likely confusion analysis. Perhaps unsurprisingly, the court doesn’t even discuss the differences between false advertising and trademark, grouping it all into §1125(a).

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False Advertising Privacy Advertising Advertising 72

43(B)log

SEPTEMBER 22, 2021

17, 2021) Depressingly doubling down on its bizarre interpretation of the Lanham Act first created by misinterpreting California’s UCL, the Fourth Circuit nonetheless mitigates some of the consequences of that game of telephone in this opinion. (I De Simone v. Alfasigma USA, Inc., 19-1731, 847 Fed.Appx. 174 (4 th Cir.

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False Advertising Advertising Advertising Trademark 45

Delaware Intellectual Property Litigation Blog

NOVEMBER 7, 2021

November 5, 2021), the Court granted the motion for partial summary judgment of Plaintiff Emerson Radio Corp. as to the affirmative defenses of laches, acquiescence, and statute of limitations of Defendants as to Defendants’ allegedly infringing use of the EMERSON QUIET KOOL trademark. Civil Action No. 20-1652-LPS (D.Del.

Trademark 66

Trademark Copying Law False Advertising 66

43(B)log

OCTOBER 4, 2021

2021 WL 4310576, No. 22, 2021) The parties compete in the market for “chemical bonding products—like epoxies, adhesives, threadlockers, gasket makers, and silicone sealants—that someone might buy at a hardware store to fix their car or for other mechanical projects.” There was no evidence of intentional trademark infringement.

False Advertising 69

False Advertising Advertising Advertising Trademark 69