Brand Name Only Used in Product Guide and Emails Not Used “In Commerce”

The court granted defendant's motion for summary judgment on plaintiff's false designation of origin claim because defendant's use of plaintiff's mark was not commercial. "The only arguably 'printed' version of the [plaintiff's] mark is in [defendant's] Retail Brands Guide. But [defendant's] use of the mark in this guide is more akin to use 'in the sale or advertising' of the product than it is to a sales display. Furthermore, no reasonable juror would find that this guide could confuse a distributor into thinking that the [defendant's] Bottle was a version of the [plaintiff's] Bottle, as it clearly states that the [...]

2018-01-18T13:11:02+00:00 January 18th, 2018|Docket Report, Trademark|

Exercise of License Rights Does Not Support Lanham Act Claim by Co-Licensee

The court granted co-licensee defendants' motion to dismiss an exclusive licensee plaintiff's false designation of origin claim because defendants did not falsely designate the origin of certain marks by complying with the terms of its license. "The question here is whether the exclusive licensee of a mark may sue another valid licensee of the same mark. While the parties do not cite any on-point authority, the answer must be in the negative. Parties that have a valid license to use a mark and that use the mark in accordance with the license are merely exercising rights that have been granted [...]

2018-01-17T12:58:02+00:00 January 17th, 2018|Docket Report, Trademark|

Contempt of Preliminary Injunction Warrants $500 Per Day Sanction Until Compliance Achieved

The court granted plaintiff's motion for sanctions against defendants for defendants' contempt of the preliminary injunction. "The affidavit that Defendants filed nine days after the Court’s deadline showed a clear failure to comply with the Court’s Order. Even after Defendants learned that the names they chose as their new corporate names, simple abbreviations of their previously infringing corporate names, were not available, Defendants made no further effort to remedy this and make another name change. Because Defendants have shown no motivation to follow the Court’s Order, the Court now imposes a daily fine of $500 paid to the Court until [...]

2018-01-16T12:39:03+00:00 January 16th, 2018|Docket Report, Trademark|

Boasting of Product’s Superiority to Unnamed Current and Potential Clients Not Commercial Speech

The court granted defendant's motion to dismiss plaintiff's false advertising claim because plaintiff did not assert defendant made the statements in commerce. "Nowhere does Plaintiff aver that 'the Defendant placed the false or misleading statement in interstate commerce.' Rather, the Complaint asserts that Defendants bragged of its superior performance to some unidentified number of unnamed current and potential 'clients' without any further facts supporting how such disclosures satisfy the commerce element." RoyaltyStat, LLC v. IntangibleSpring, Corp. et al, 8-15-cv-03940 (MDD 2018-01-10, Order) (Paula Xinis)

2018-01-12T12:54:09+00:00 January 12th, 2018|Docket Report, Trademark|

Modification of Generic Term Insufficient for Protectability

The court granted defendant's motion for summary judgment that plaintiff's "The Inn San Francisco" mark was generic. "Like ',' the term 'The Inn San Francisco' is an answer to 'what are you?' rather than 'who are you?' Any lodging services provider in San Francisco could answer 'what are you?' with 'an inn in San Francisco.' Conversely, [a competitor of plaintiff] asked to refer someone to 'an inn in San Francisco' could reasonably offer its own services. That is good evidence of the genericness of the claimed mark, which modifies a clearly generic term by prepending 'the' and deleting 'in.' To [...]

2018-01-11T13:40:10+00:00 January 11th, 2018|Docket Report, Trademark|

Section 1117 Infringer’s Profits Not a Claim for “Actual Damages” Supporting a State Punitive Damages Request

The court granted defendant's motion to strike plaintiff's state law request for punitive damages because plaintiff's request for defendant's profits under § 1117 was not a claim for actual damages. "The Court finds that accounting of profits does not constitute actual damages. This conclusion is further supported by Plaintiff’s Complaint and its 30(b)(6) deposition, both of which make the distinction between accounting of profits and actual damages. First, Plaintiff’s Prayer for Relief seeks an order awarding '⁠[plaintiff] damages and ordering [defendant] to account and pay to [plaintiff] all profits realized by its wrongful acts and also awarding [plaintiff] its actual [...]

2018-01-10T12:51:04+00:00 January 10th, 2018|Docket Report, Trademark|

Dastar Does ​Not Foreclose Claim for False Designation of Origin of Interior Design Services Depicted in Photographs

The court denied defendants' motion to dismiss plaintiff's false designation of origin claim because plaintiff sufficiently alleged the services at issue originated with plaintiff. "⁠[Plaintiff] states that it does not seek to protect a 'good' or the 'intellectual content' depicted in the Photographs. Rather, [plaintiff] maintains it seeks only to pursue a claim for false designation of the origin of services depicted in the Photographs. . . . [T]he Complaint references [one particular design work], 'a [plaintiff] interior design project completed in 2016,' and states '⁠[no defendant] was involved in the . . . design work, or any other projects [...]

2018-01-09T13:12:03+00:00 January 9th, 2018|Docket Report, Trademark|

​Ex Parte Pre-Judgment Asset Restraint Possible Even Where Statutory Damages Are the Likely Remedy

The court granted plaintiffs' ex parte motion for a TRO restraining defendants' assets because plaintiffs sought an equitable accounting of profits. "At this very early point in the litigation (indeed, the defendants do not yet even have notice of the suit), it is not known what will comprise the eventual equitable remedy. In other words, the asset-restraint order must be limited only to the extent that is needed to secure the equitable remedy; the scope of the exception (to the general ban on prejudgment restraint) is limited by the scope of the exception’s rationale. In light of that potential limit [...]

2018-01-08T12:55:03+00:00 January 8th, 2018|Docket Report, Trademark|

TTAB and PTO Cancellation Petitions Do Not Support Exercise of Personal Jurisdiction

The court granted defendant's motion to dismiss plaintiff's complaint because plaintiff failed to sufficiently allege defendant purposefully directed any activity toward the forum. "⁠[Defendant's] filing of trademark applications and petitions to cancel [plaintiff's] trademarks are . . . insufficient [to constitute purposeful direction]. . . . '⁠[T]his Court is not persuaded that the mere registration of a trademark with the PTO, without more, amounts to the type of minimum contacts which would justify haling a foreign defendant into federal court.' In the same vein, 'the filing of a cancellation petition with TTAB prior to any use of the mark in [...]

2018-01-05T13:01:03+00:00 January 5th, 2018|Docket Report, Trademark|

Nearly Identical Restaurant Logo Posted on GrubHub After Initiation of Suit Supports Bad Faith Allegation

The court granted plaintiff's motion for a preliminary injunction forbidding defendants from associating their pizzerias with plaintiff's because plaintiff demonstrated defendants' bad faith. "⁠[I]t is inconceivable that [defendant pizzeria owner] was not aware of plaintiff’s marks, especially in light of his emphasis on the tenure of his employment at plaintiff’s pizzeria. [Further], defendants originally used a different design distinct from plaintiff’s marks, but then, after over a decade in business, changed their signage to align with that used by plaintiff. [N]ot only have defendants imitated, to an exceedingly fine point, plaintiff’s marks, they have also posted collages in their pizzerias [...]

2018-01-04T13:23:03+00:00 January 4th, 2018|Docket Report, Trademark|