SDNY District Court Rejects Laurel Road’s Trade Dress Suit Against CommonBond
On August 27, 2018, Laurel Road Bank sued competitor CommonBond, Inc. over the latter’s display of an advertisement for its student loan financing services, alleging that CommonBond’s advertisement infringed and diluted the trade dress of Laurel Road’s advertisements of its own student loan refinancing services. Read More
BIC Files ITC Complaint Against Importers of Allegedly Counterfeit Pocket Lighters
On December 6, 2018, BIC Corporation (“BIC”) petitioned the United States International Trade Commission (“ITC”) for an investigation into the illicit importation into the United States, sale for importation, or sale after importation of six respondents’ pocket lighters, alleging that respondents’ lighters infringe BIC’s intellectual property rights in the design of its disposable cigarette lighters, otherwise known as their “trade dress.” In its petition, BIC argues that similarities in the appearance of respondents’ lighters and its lighters will lead consumers to be confused as to the source and/or sponsorship of respondents’ lighters, or to affiliate respondents’ lighters with BIC. BIC’s petition asks the ITC to issue a general exclusion order blocking the importation of infringing lighters from any source, not just the named respondents, and claims that such an order “is necessary and appropriate to prevent circumvention of limited exclusion orders directed to products of Respondents.”
Supreme Court Will Decide Whether USPTO Can Refuse to Register “Scandalous” TMs
On January 4, the U.S. Supreme Court granted certiorari to the USPTO to decide whether the Lanham Act’s prohibition on the federal registration of “immoral” or “scandalous” marks violates the First Amendment. The Supreme Court’s decision to hear the case comes less than two years after it unanimously ruled in Matal v. Tam that a similar part of the trademark law that banned the registration of “disparaging” trademarks violated the First Amendment. In Matal, an Asian-American rock band called The Slants attempted to register its name for trademark protection, but was denied because the USPTO decided that the mark would be likely to offend Asian-Americans. Read More
U.S. Supreme Court to Rule on Rights of Trademark Licensees Upon Rejection of a Trademark License Under Section 365 of the Bankruptcy Code
On October 26, 2018, the U.S. Supreme Court granted a petition for certiorari in the case Mission Product Holdings Inc. v. Tempnology, LLC to decide whether a licensee may retain licensed trademark rights even after its license agreement has been rejected by the licensor pursuant to section 365 of the Bankruptcy Code, 35 U.S.C. 365(a). Read More
Owner of The Wizard of Oz TMs Opposes Pagan Elder’s Application for Wicked Witch TM
Turner Entertainment Co. (subsidiary of Warner Bros.) filed a petition against Wicked Witch Studios’, application for WICKED WITCH MOJO used in connection with its magical line of “candles, aromatic essential oils, incense, and scented room sprays” which are available in in metaphysical shops nationwide. Read More
Dunnington Litigation Team Wins Complete Dismissal in SDNY Against Notorious TM Troll
On September 10, Judge Laura Taylor Swain dismissed trademark infringement claims brought by Michael Gleissner, one of the world’s most infamous trademark trolls, against a Hong Kong-based satellite operator in the U.S. District Court for the Southern District of New York. Read More
Dunnington Featured as Gold Sponsor at the Federal Bar Association’s Annual Meeting in New York City
Dunnington is the Gold Sponsor of the Federal Bar Association’s Annual Meeting, September 13-15, 2018, at the New York Marriott Downtown. Read More
SDNY Denies Plaintiff Romance Author’s Request for Injunctive Relief Against Competing Use of TM “COCKY”
On July 5, Judge Alvin Hellerstein issued an order stating that a plaintiff romance author who owns a trademark in the word “cocky” for “a series of books in the field of romance” failed to show irreparable harm and likelihood of confusion if the defendant authors were to proceed with using the word “cocky” in connection with their romance novels. In their opposition to the motion, the defendants argued that the plaintiff could not monopolize “cocky” in connection with romance novels because the word is widely-used in romance novels and it is artistically relevant to the content of romance novels. The case is currently pending in the SDNY.
