Cease-and-Desist Letter as Sole Showing of Enforcement Activities Within Forum Do Not Support Jurisdiction for Declaratory Judgment Suit

The court granted defendant's motion to dismiss plaintiff's Lanham Act declaratory judgment suit and determined that defendant's alleged "other activities" connecting it with the forum were not sufficiently connected with the suit. "Examples of other activities that, when combined with cease-and-desist letters, could be sufficient for a court to exercise personal jurisdiction over a defendant in this kind of action can include initiating judicial or extra-judicial enforcement proceedings within the forum or entering into an exclusive license agreement . . . . In contrast, a declaratory action for non-infringement 'neither directly arises out of nor relates to the making, using, [...]

2018-06-22T12:05:02+00:00 June 22nd, 2018|Docket Report, Trademark|

Lanham Act Suit Attacking Advertisement of Defendant’s Drug as Equivalent to Plaintiff’s Not Precluded by FDCA

The court denied defendant's motion to dismiss plaintiff's false advertising claim regarding defendant's assertion its drug was equivalent to plaintiff's and rejected the argument that plaintiff's claim was precluded by the FDCA. "The Court finds [plaintiff's] claim that [defendant's] advertising that [defendant's product] Hemmorex is equivalent to [plaintiff's product] Anucort does not require FDA action and is within this Court’s purview. The issue here is not whether the FDA should deem [defendant's] product to be a 'generic' version of [plaintiff's] product; instead, the issue is whether, by advertising and marketing Hemmorex as 'equivalent to or substitutable' for Anucort when the [...]

2018-06-21T11:52:03+00:00 June 21st, 2018|Docket Report, Trademark|

Advice-of-Counsel Defense to Willfulness Waives Privilege as to All Communications on Subject Matter of Advice

The court denied defendant's motion for a protective order and declined to set narrow boundaries on defendant's attorney-client privilege waiver considering defendant's intended use of an advice-of-counsel defense. "⁠[If defendant] intends, in defending against [plaintiff's] charge of willfulness, to rely on its request for and lack of advice from [its then-counsel, defendant] must produce all documents, regardless of the date of creation, that embody or discuss a communication between it and any attorney (regardless of law firm) regarding the subject matter of [defendant's] request for advice: whether there were any issues with [defendant's] proposed use of the [particular] brand and [...]

2018-06-20T11:52:02+00:00 June 20th, 2018|Docket Report, Trademark|

No Prevailing Party Status When Related Case Asserting Same Theories Dismissed on Merits

Following plaintiff's voluntary dismissal under Rule 41(a), the court denied defendants' motion for attorney fees and rejected defendants' contention they were prevailing parties. "Defendants argue in their motion that [plaintiff's] 'cut-and-run, coupled with the Court’s Order in [a similar, related case, after the dismissal of which plaintiff voluntarily dismissed the instant case,] demonstrate that the Movants are prevailing parties.' They assert that 'the Court’s decision in [the related case] suggests there has been a judicially sanctioned change in the relationships of these parties, even if it occurred in another case.' . . . Here, I have not rejected [plaintiff's] claims [...]

2018-06-19T12:05:02+00:00 June 19th, 2018|Docket Report, Trademark|

Knowledge of Plaintiff’s Mark and Failure to Cease Use After Initiation of Suit Do Not Support Finding of Bad Faith Use

The court granted defendant's motion for summary judgment of fair use and determined no fact issue existed on defendant's good faith use. "As an initial matter, evidence that [defendant] had knowledge of [plaintiff's] mark is insufficient to permit a reasonable inference of bad faith; to survive summary judgment, [plaintiff] 'must point to something more that suggests subjective bad faith.' And the fact that [defendant] did not stop using the slogan after [plaintiff] filed this lawsuit alleging infringement is not probative of bad faith; [defendant] maintains that its use of the slogan does not constitute infringement, and neither a jury nor [...]

2018-06-18T11:42:02+00:00 June 18th, 2018|Docket Report, Trademark|

Nominative Fair Use Defeated by Use of Plaintiff’s Band Name Preceding Defendant’s on Promotional Materials

The court granted plaintiff's motion for a determination that defendant's use of the band name "The Commodores" in defendant's musical promotions was not nominative fair use. "⁠[E]ven if the Court assumes that Plaintiff’s Marks have no descriptive substitute and that Defendants have used only so much of the Marks as is necessary to identify Plaintiff’s band, the [defendant's uses, all preceding defendants' name with slight variations of 'The Commodore's Experience with/starring . . .'], improperly suggest Plaintiff’s endorsement of [defendant's] band. Thus, Defendants have failed to satisfy the NFU test. By placing Plaintiff’s Marks—'Commodores'—ahead of [defendant's] name and the other [...]

2018-06-15T12:31:03+00:00 June 15th, 2018|Docket Report, Trademark|

Mark for Goods Sharing Salient Feature with Incontestable Marks Deemed Functionally Incontestable

The court granted plaintiff's motion for summary judgment on its validity assertions and determined plaintiff's '089 mark's registration's goods classes were functionally incontestable. "The most salient feature of the ’967, ’417, and ’089 registrations is the 'All in One' phrase. A review of the certificates for the All in One ’967 and ’417 registrations shows that these incontestable registrations cover the same goods set forth in the goods classes of the ’089 registration. . . . [Accordingly, the] Court grants partial summary judgment to [plaintiff] on Count 1 of the FAC as it pertains to the validity and protectability of [...]

2018-06-14T11:27:02+00:00 June 14th, 2018|Docket Report, Trademark|

No New Trial When Evidence Allegedly Causing Prejudice Disclosed During Discovery

Following a jury verdict against plaintiff on its trade dress infringement claim over a water bottle, the court denied plaintiff's motion for a new trial and determined the introduction of several third-party water bottles was not impermissible under Rule 403. "At trial, the Court admitted 113 bottles that shared a basic configuration with the [plaintiff's] Bottle but were made by neither [plaintiff nor defendant]. . . . A large number of similarly-shaped bottles sold by a large number of other brands supports an inference that the relevant members of the public do not associate that shape with any single source. [...]

2018-06-13T11:27:02+00:00 June 13th, 2018|Docket Report, Trademark|

Royalty Calculation Based on Defendants’ Date of Notification of Infringement Incorrect as a Matter of Law

The court granted plaintiff's Daubert motion to exclude the testimony of defendants' expert because the methodology on which the expert based his report was unsound. "⁠[The expert] calculates royalties from the date the defendants were notified about the infringement. Royalties may be recovered for the entire period of the infringement. [The expert] also incorrectly asserts that [plaintiff] is not entitled to recover both royalty payments (as a damage sustained by the plaintiff) and the defendants’ profits because that would constitute double recovery. Yet that is allowed by the Lanham Act. Thus, [the expert's] report is incorrect as a matter of [...]

2018-06-12T11:44:03+00:00 June 12th, 2018|Docket Report, Trademark|

Allegation that Elements “Blend Seamlessly and Elegantly” at “Bottom” of Clothing Garment Too Vague to Support Trade Dress Infringement Claim

The court partially granted defendants' motion to dismiss plaintiff's trade dress infringement claim and ordered an amended pleading because plaintiff did not sufficiently plead the elements of its trade dress. "Instead of seeking protection for an 'overall look,' the Complaint identifies specific elements that comprise the trade dress—namely, 'two front panels and two rear panels attached to the waist in a manner that allows them to blend seamlessly and elegantly into the bottom of the dress,' regardless of the way in which the dress is worn. The Complaint is sufficiently specific about the trade dress having four panels and the [...]

2018-06-11T11:54:04+00:00 June 11th, 2018|Docket Report, Trademark|