Photograph of Asserted Trade Dress Insufficient to Describe the Elements of the Trade Dress

The court granted defendant's motion to dismiss plaintiff's trade dress infringement claim because plaintiff failed to sufficiently identify the elements of its dress. "Plaintiff argues that Defendants have copied virtually every detail of its trade dress in order to create a near replica, which is readily ascertainable by the description and photographs found in the Amended Complaint. . . . McCarthy on Trademarks and Unfair Competition states that images are not sufficient to identify a trade dress and 'if plaintiff fails to properly articulate the elements of its trade dress, the court can dismiss on a Rule 12(b)(6) motion.' . [...]

2018-03-23T11:24:03+00:00 March 23rd, 2018|Docket Report, Trademark|

Counsel’s Abdication of Representation Responsibilities Warrants Rule 60 Relief from Default Judgment

The court granted defendant's motion for relief from the court's default judgment because defendant demonstrated extraordinary circumstances led to default. "While it is true that 'the neglect of an attorney acting within the scope of his or her authority is attributable to the client,' such is not the case here. [Defendant] hired [his counsel] to defend him in this action. Instead, the record shows that [counsel] worked on this case for a mere two months before abdicating his responsibilities toward [defendant] after a half-hearted attempt to settle the matter. It cannot be said that these actions were within the scope [...]

2018-03-22T12:44:02+00:00 March 22nd, 2018|Docket Report, Trademark|

Historically Active Website Does Not Establish Purposeful Direction When Website Currently Passive

The court granted defendants' motion to transfer under § 1406(a) because defendants' website did not constitute purposeful direction toward Missouri. "⁠[Plaintiff] has attached printouts of historical versions of Defendants’ website . . . . These pages offer Defendants’ . . . products for sale. However, [plaintiff] does not provide any information about when this version of the website was active. Defendants’ current form of its website is merely passive and does not allow purchases to be made online. In addition, Defendants declare that they have never sold any of their products to Missouri residents. Based on Defendants’ lack of sales [...]

2018-03-21T11:54:03+00:00 March 21st, 2018|Docket Report, Trademark|

Licensor’s Retention of Ability to Inspect Licensee’s Business and Provide Restrictions on Use of Name Precludes Finding of Naked License

The court granted plaintiff's motion for summary judgment on defendant's naked licensing theory and determined plaintiff maintained sufficient contractual controls over its license. "At the . . . hearing on this matter, counsel for Defendant asserted that its naked licensing theory was focused more on the time period that predated the master license agreement from 2011. The Court finds, however, that the MLA is not the only contract that regulates the use of the [contested] trademarks. For example, the tenant leases that predate the MLA allow for both inspection of the tenant’s businesses and provide broad restrictions on the use [...]

2018-03-20T12:17:03+00:00 March 20th, 2018|Docket Report, Trademark|

Co-Registrant and Co-Owner of Works is Necessary Party for Enforcement of Trademark Rights

The court granted defendant's motion to dismiss plaintiff's Lanham Act suit for failure to join an indispensable party and determined the inheritor of the the intellectual property rights owned by Audrey Hepburn was a necessary party under Rule 19. "⁠[T]he evidence before the Court demonstrates Plaintiff and [the inheritor] are co-registrants and co-owners of the Hepburn IP at issue in this case. . . . Accordingly, evidence that [the inheritor] is a co-registrant and co-owner of the trademarks at issue in this action demonstrates he is a necessary party because he has an interest in the case. . . . [...]

2018-03-19T11:51:02+00:00 March 19th, 2018|Docket Report, Trademark|

Claim that Fulfillment Center Imported and Distributed Counterfeit Goods Supports Commercial Use Allegation

The court denied a fulfillment center defendant's motion to dismiss plaintiffs' Lanham Act claims because plaintiffs sufficiently alleged use in commerce. "Defendant is only alleged to have provided shipping services to the Third-Party Account Holders. Defendant therefore concludes that a trademark infringement claim cannot be maintained against it because it was the Third-Party Account Holders and not Defendant who sold the Counterfeit Goods, and hence Defendant did not 'use' the goods in commerce. However, this conclusion ignores the fact that the statute defines 'use in commerce' as occurring when 'goods are sold or transported in commerce.' . . . Although [...]

2018-03-16T11:46:02+00:00 March 16th, 2018|Docket Report, Trademark|

Concession of No Claim for Damages Justifies Sua Sponte Striking of Jury Demand

The court sua sponte struck plaintiff's jury demand because plaintiff failed to demonstrate entitlement to a remedy at law. "While the court is still reviewing the parties’ [summary judgment] briefing on the merits . . . plaintiff essentially concedes that it does not have a claim for actual damages. ⁠[In its complaint, in addition to requesting injunctive relief,] plaintiff also asserts a right to an award of defendant’s profits. While courts in this circuit have tried demands for profits before juries . . . plaintiff presents no theory nor evidence which would support such an award despite being required to [...]

2018-03-15T11:42:03+00:00 March 15th, 2018|Docket Report, Trademark|

Licensor’s Acknowledgement of Competitor’s Marks Does Not Vitiate Licensee’s Standing to Pursue TTAB Cancellation Proceeding

The court denied plaintiff's motion for summary judgment that defendants lacked standing to pursue cancellation proceedings before the TTAB. "Plaintiff's principal argument is that Defendants have no real interest in the proceeding because the License Agreement [between defendants as exclusive licensee and a non-party licensor who acknowledged plaintiff's rights in the marks] effectively prohibits [defendants] from using the [marks]. Viewed in the light most favorable to Defendants, however, [the licensor's] past refusals have been based in large part on Plaintiff's exclusive trademark registrations for the [marks]. It is plausible--and a jury could infer--that [the licensor] would no longer withhold permission [...]

2018-03-14T11:26:03+00:00 March 14th, 2018|Docket Report, Trademark|

“Kitchen Sink” Approach to Answers/Affirmative Defenses Does Not Warrant Striking Under Rule 12(f)

The court denied plaintiffs' motion to strike portions of defendants' answer because the answer was not impermissibly vague and overinclusive. "Plaintiffs’ arguments blow the deficiencies in Defendants’ Amended Answer out of proportion. Although Defendants’ affirmative defenses may be overbroad, this is a common feature of answering pleadings, which often adopt a 'kitchen sink' approach to affirmative defenses. Further, while Defendants may be gratuitously adding information to provide more context to their admissions or denials, such information is not redundant, immaterial, impertinent, or scandalous. . . . Plaintiffs indicate that some of Defendants’ denials will lead them to expend additional efforts [...]

2018-03-13T11:37:04+00:00 March 13th, 2018|Docket Report, Trademark|

Statements that a Supplement Requires “No Prescription” and Has “No Harmful Synthetic Chemicals” Are Not Mere Puffery

The court denied a health supplement distributor defendant's motion to dismiss plaintiff's false advertising claim because defendant's statements were not mere puffery. "⁠[W]hile 'all natural' and 'no chemicals' might be vague or highly subjective concepts, Plaintiff points out that it also cites specific factual representations made by Defendant: specifically, that the Enhancement Products contain 'no harmful synthetic chemicals' and that 'no prescription is necessary.' As Plaintiff notes, 'the determination of whether "NO PRESCRIPTION necessary" and "NO HARMFUL synthetic chemicals" are true is very much subject to an objective standard, specifically the FDA-approved usage and 21 U.S.C. § 353(b)(1)(A) & (B).' [...]

2018-03-12T11:38:03+00:00 March 12th, 2018|Docket Report, Trademark|