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.

Trademark 130

Trademark Non-Fungible Tokens All Rights Reserved False Advertising 130

43(B)log

MARCH 14, 2024

11, 2024) I have a long-running interest in Rule 68 offers of judgment, and this case involves an interaction with false advertising law! We are fiercely protective of the Crocs brand and our iconic DNA. Crocs, Inc., 2024 WL 1051951No. 23-cv-01790-PAB-KAS (D. The parties compete in the shoe market.

False Advertising 59

False Advertising Advertising Advertising Branding 59

43(B)log

JANUARY 27, 2023

26, 2022) [much other stuff skipped] The parties had a false advertising dispute that went to a jury, which found that FIGS wasn’t liable for falsely advertising the antimicrobial properties of its scrubs. FIGS’ alleged copying of SPI’s products was not relevant to false advertising. 2022 WL 18399950, No.

False Advertising 59

False Advertising Advertising Advertising Trademark 59

Technology & Marketing Law Blog

JANUARY 8, 2024

This is a case involving a trademark owner and a competitive keyword advertiser. The trademark owner memorably (and ridiculously) characterized the rival as engaging in “keyword conquesting,” a term I encourage you never to use. The court already sent that trademark claim to the jury ( my blog post on that ruling ).

Trademark 77

Trademark Advertising Advertising False Advertising 77

IP and Legal Filings

MARCH 14, 2022

. (“Chanel”), is an iconic fashion company based in New York known for its luxury fashion products and owns rights to several Chanel and CC monograms trademarks associated with the brand design. The brand was not involved with selling secondly handed or vintage goods. Veronique Idea Corp., 2d 262, 267 (S.D.N.Y.

Branding 52

Branding Brands Branding False Advertising 52

SpicyIP

MARCH 10, 2024

Image from here In the case of Sterling Agro Industries Limited vs ASR Trading Company , the Delhi High Court while dealing with a trademark infringement suit, imputed mala fide intention to ASR Trading’s (the Defendant) act of applying for a trademark registration. His previous posts can be accessed here.

Trademark 59

Trademark Registering Trademarks Registration False Advertising 59

43(B)log

FEBRUARY 16, 2024

Panel #2, TM, moderated by Vice Dean Felix Wu Jack Daniels says that use as a trademark is special: like copyright’s bête noire, confusion caused by trademark use is the central concern of trademark law. I’ve left out the parts specific to registered trademarks and the reference to treaties. Taco Cabana, from 1992.

Trademark 59

Trademark Fair Use Registration False Advertising 59

43(B)log

FEBRUARY 3, 2024

Mary Katherine Amerine, Reasonably Careless Consumers in TM & False Advertising How do courts treat consumers in TM and false advertising cases? False advertising uses v different framework: consider the challenged ad as a whole, including disclaimers and qualifying language. Beer Nuts, Bulls’ Eye v.

False Advertising 49

False Advertising Contracts Branding Brands 49

43(B)log

MAY 19, 2023

WowWee’s Vice President of Brand Development & Creative Strategy, Sydney Wiseman, used her WowWee email address to create a Roblox user account and used her Roblox account to promote My Avastars dolls on social media, including videos on her TikTok account. This was enough survive the motion to dismiss.

Copying 94

Copying False Advertising Social Media Advertising 94

Technology & Marketing Law Blog

AUGUST 11, 2022

Chapter 2: What is an Advertisement? Chapter 3: False Advertising Overview. Chapter 9: False Advertising Practice and Remedies. Chapter 12: Brand Protection and Usage. Chapter 17: The Advertising Industry Ecosystem–Intermediaries and Their Regulation. FTC and the Trademark Modernization Act.

Editing 119

Editing Advertising Advertising Marketing 119

IP and Legal Filings

SEPTEMBER 14, 2023

This has led to consumers opting for brands that pledge their duty to contributing towards environmental protection by means of minimalism and sustainability. In today’s era of eco-branding, wherein trademarks are used to distinguish sustainable brands from the mainstream commercial ones, the latter engage in the practise of “greenwashing”.

Branding 84

Branding Brands Branding Trademark 84

43(B)log

MAY 2, 2022

28, 2022) Chanel sued What Goes Around Comes Around (WGACA), alleging trademark infringement, false advertising, false association/endorsement, and related NY GBL claims for deceptive/unfair trade practices and false advertising. WGACA, LLC, 2022 WL 902931, No. 2253 (LLS) (S.D.N.Y. second-hand.

False Advertising 59

False Advertising Advertising Advertising Social Media 59

43(B)log

DECEMBER 20, 2023

STM sells cases, bags, sleeves, and other accessories for electronic devices under the “STM” and “DUX” trademarks. This allegedly infringes STM’s marks and diminishes their value because consumers associate negative experiences that may result from purchasing them with STM’s brands. (As

False Advertising 64

False Advertising Advertising Advertising Trademark 64

IPilogue

JUNE 21, 2022

sued StockX LLC for trademark infringement, false designation of origin, trademark dilution, and related causes. This case has the potential to define the scope of trademark rights against unauthorized uses in the world of NFTs. On February 3 rd 2022 Nike Inc. These issues are novel in their involving the metaverse.

Non-Fungible Tokens 116

Non-Fungible Tokens Ownership False Advertising Fair Use 116

43(B)log

DECEMBER 28, 2022

17, 2022) Along with the headline-worthy nature of the claim (“ITALY’S #1 BRAND OF PASTA” plausibly falsely communicates Italian origin), the decision contains an extended discussion of judicial notice on a motion to dismiss v. Could “ITALY’S #1 BRAND OF PASTA” mislead reasonable consumers? in small print on the side of the box.”

Branding 59

Branding Brands Branding False Advertising 59

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. In addition to patent infringement, BTL Industries also alleges that JV Medical Supplies has violated its trademark rights.

False Advertising 52

False Advertising Contracts Advertising Advertising 52

43(B)log

JULY 15, 2022

The Sloan Group is the plaintiff, alleging trademark infringement and related claims. Likewise, while a 10% drop in donations was quantifiable in money, it could also serve as evidence of irreparable harm—that “the Spence Group’s confusing statements and advertisements have undermined the distinctiveness of the College’s trademarks.”

Trademark 59

Trademark False Advertising Advertising Advertising 59

43(B)log

JULY 3, 2023

27, 2023) Industria sued Latinfood for trademark and copyright infringement; Latinfood counterclaimed for tortious interference against Industria and another counterdefendant Cordialsa. Industria, based on Colombia, produces and distributes food products under two relevant brand names: Zenú and Ranchera. Latinfood U.S.

False Advertising 59

False Advertising Advertising Advertising Registration 59

Technology & Marketing Law Blog

MARCH 13, 2022

Las Vegas Skydiving Adventures offers tandem skydiving under the “Fyrosity” brand. LVSA sued Groupon for trademark infringement. Melwani sells products under the “Royal Silk” brand. Melwani sued Amazon for trademark infringement, dilution, and more. Purchaser Care. Skydiving is expensive.

Trademark 79

Trademark Advertising Advertising Settlement 79

43(B)log

APRIL 25, 2023

Purlife Brands, Inc., 21, 2023) In two opinions on the same day, the court dealt with various IP/false advertising claims brought by one litter box seller against another. But Whisker is not advancing trademark infringement claims based on those disclaimed marks. Purlife Brands, Inc., Automated Pet Care Prods.,

False Advertising 59

False Advertising Advertising Advertising Social Media 59

43(B)log

JANUARY 27, 2023

Steeplechase has a copyright for the book, “Piano Book for Adult Beginners: Teach Yourself How to Play Famous Piano Songs, Read Music, Theory & Technique” and registered trademark rights in STEEPLECHASE ARTS & PRODUCTIONS for, among other things, music instruction books, including for the Piano Book. Was this literally false?

Derivative Work 75

Derivative Work False Advertising Advertising Advertising 75

43(B)log

FEBRUARY 4, 2022

False advertising: Plaintiffs didn’t allege that Nobelle altered the merchandise in any way; “instead, the false statement arises from implication, from the fact that Nobelle is selling products that are not theirs to sell and, in the case of ‘The Line’ items, products it does not have the authority to sell.”

False Advertising 83

False Advertising Advertising Advertising Designs 83

43(B)log

FEBRUARY 18, 2022

Lolita Darden, Stopping Zombie Company Trademark Abuse and Consumer Deception in Trademark Abandonment Cases Based on clinic work. A: False advertising context: FTC/state AGs. But using yellow for a saccharin packet might be false advertising, b/c it would communicate the presence of sucralose rather than saccharin.

Trademark 59

Trademark False Advertising Fair Use Branding 59

43(B)log

JUNE 19, 2023

14, 2023) Unlimited, an “online non-authorized reseller of consumer products,” sued Red Points for defamation, tortious interference, and false advertising under state and federal law. Lanham Act false advertising: Unlimited sufficiently pled standing.

False Advertising 69

False Advertising Advertising Advertising Reporting 69

IP and Legal Filings

MARCH 14, 2022

. (“Chanel”), is an iconic fashion company based in New York known for its luxury fashion products and owns rights to several Chanel and CC monograms trademarks associated with the brand design. The brand was not involved with selling second handed or vintage goods. Veronique Idea Corp., 2d 262, 267 (S.D.N.Y.

False Advertising 52

False Advertising Branding Brands Branding 52

43(B)log

DECEMBER 23, 2021

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.

False Advertising 59

False Advertising Advertising Advertising Designs 59

Technology & Marketing Law Blog

SEPTEMBER 18, 2023

This case involves Jim Adler, a/k/a the “Texas Hammer,” a Texas lawyer who has spent $100M+ on advertising to build his brand. The defendants bought competitive keyword ads on Adler’s trademarks, which Adler objected to. ” It sounds like this narrowed the case solely to the trademark infringement claim.]

Advertising 81

Advertising Advertising False Advertising Trademark 81

43(B)log

AUGUST 18, 2022

9, 2022) Interesting case about trademark preemption. The Pumas alleged that defendants violated the New Mexico Unfair Practices Act based on their purchase of a Black & Decker-branded coffeemaker. However, Black & Decker did not in fact design, manufacture, distribute, or warrant the coffeemaker. if they are of another.”

Trademark 64

Trademark Licensing Branding Brands 64

43(B)log

AUGUST 27, 2021

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. It contains a different lubricant that we believe you will find works even better.”

False Advertising 45

False Advertising Branding Brands Branding 45

SpicyIP

OCTOBER 27, 2023

These patterns can intersect with the trademark and other intellectual property (IP) in various ways, although it’s important to note that the use of dark patterns is unethical and often violates principles of fair use and consumer protection. This can deceive users and harm the reputation of the original trademark owner.

Intellectual Property 52

Intellectual Property False Advertising Designs Design 52

IP and Legal Filings

MAY 13, 2023

As a result, interim orders in trademark infringement cases have become somewhat standardized. Using the name or image of a celebrity for brand advertisement or promotion in the US does not always attract liability, provided the brand is not falsely misleading the public that the celebrity endorses the product.

Personality Rights 89

Personality Rights Privacy Trademark Law False Advertising 89

43(B)log

JUNE 14, 2022

May 25, 2022) Alcon sued Lens.com for federal and state false advertising and trademark claims. Alcon alleged that Lens.com infringed its trademark rights (including rights inherited from Novartis AG) by doing so. Likewise, ® and TM symbols let “consumers and competitors know you’re claiming [a] trademark as yours.”

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False Advertising Trademark Advertising Advertising 72

43(B)log

NOVEMBER 28, 2022

2, 2022) Before the jury verdict in favor of Monster’s false advertising claim was this opinion resolving evidentiary issues. The Ninth Circuit has stated that surveys in trademark cases are to be admitted as long as they are conducted according to accepted principles” and “relevant.” Monster Energy Co. 2022 WL 17218077, No.

False Advertising 59

False Advertising Advertising Advertising Social Media 59

Technology & Marketing Law Blog

FEBRUARY 16, 2022

Edible Arrangements objected to Google selling its trademark to trigger keyword ads. They filed a trademark lawsuit in 2018 but abandoned the suit when it got sent to arbitration. The court says that trademark law: permits the use of trade names as long as referencing other brand names does not confuse consumers and is not deceptive.

IP 126

IP Advertising Advertising Trademark Law 126

43(B)log

SEPTEMBER 7, 2021

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. and [the] Coach” brand. Chunma USA, Inc., 2021 WL 1534988, No. 20-CV-0271 (JMF) (S.D.N.Y.

False Advertising 59

False Advertising Registration Trademark Registering Trademarks 59

IIPRD

AUGUST 4, 2022

Trademarks. In today’s market, a distinct brand identity is critical in all company sectors. Influencers that make a lot of money from internet marketing must also defend their own brand identification. The easiest method to accomplish this is to register a trademark. Maintain your distinct brand identity. .

Social Media 45

Social Media Intellectual Property Non-Fungible Tokens Music 45

Technology & Marketing Law Blog

JULY 25, 2021

Aliign “is an event, lifestyle, and apparel company” allegedly with a first trademark use in 2011. Aliign sued lululemon for trademark infringement. lululemon’s brand also displays prominently in its keyword ads. Want to Engage in Anti-Competitive Trademark Bullying? lululemon sought summary judgment.

Advertising 105

Advertising Advertising Settlement Trademark 105