Trademark Law Briefs

The Wine Group LLC v. L and R Wine Company, 2011 U.S. Dist. LEXIS 35405 (E.D. Cal. 2011)

After Plaintiff, TWG, sued defendant, LR, for trademark infringement, LR brought a counterclaim for cancellation of TWG’s registration based on priority of use.  TWG answered with an affirmative defense that LR’s use prior to TWG’s registration was unlawful because they violated sales and labeling rules for alcohol products.  LR then filed a motion to stike.  The court denied the motion to strike stating:

“for purposes of trademark priority, lawful use may require compliance with labeling requirements.  (citation) As a result, TWG’s defense is not clearly invalid as a matter of law.  Further, any legal challenge to the legal sufficiency of the Second Affirmative Defense presents a disputed and substantial question of law that should not be resolved through a motion to strike.”

Bauer Bros. LLC v. Nike, Inc., 2011 U.S.Dist. LEXIS 23025 (S.D. Cal. 2011)

Bauer Bros. sued Nike for infringement based on the phrase “Don’t Tread on Me” on various clothing items.  Nike counter-claimed that Bauer fraudulently obtained its registration by claiming use on a number of items it hadn’t actually sold with the mark and for claiming Bauer had exclusive right to use the mark while knowing the mark had historical significance and had been used by third-parties.  Bauer sought to dismiss the fraud based counter-claims based on failure to specifically plead facts showing fraud.

Because Nike claimed it had done an investigation on the items and named several that it believed were not actually in use, the claim was plead sufficiently.

However, not so the claims about the exclusive right to use the mark.  Nike said, rather generically, “Bauer was fully aware of the historical significance and origin of the phrase,” and “Bauer was fully wawre that third parties had used and were using the phrase… on apparel.”  First, the Nike faile to offer any authority for the proposition that a trademark with historical signficance is not subject to registration (further more, it didn’t allege with particularity what that historical signficance was).  Second, Nike failed to specifically naem any specific person or entity who previously used the prhase on apparel or that the other user had rights superio to Bauer that Bauer knew of.

Collagen Nutraceuticals v. Neocell Corp., 2010 U.S. Dist. LEXIS 80216 (S.D. Cal. 2010)

I have to read between the lines a little to describe the procedural background.  It appears that the owners of the defendant corporation (Neocell), as individual defendants, filed a summary judgment motion, presumably on the grounds that only Neocell could be held liable for trademark infringement.  Collagen then asked the motion be denied to give Collagen further time to conduct discovery regarding the defendants’ positions at Neocell, and defendants’ knowledge of Plaintiff’s cease and desist letter and other infringing activities.  The court granted Collagen’s motion and denied the summary judgment motion (without prejudice) to allow Collagen to do discovery.  The court noted these facts could defeat summary judgment if they showed that the defendants orchestrated Neocell’s infringing activities or if they established alter ego liability.  Collagen showed that the facts likely existed and could be uncovered through discovery.  Finally, Collagen had only had two months to complete discovery at the time of the filing of the motion for summary judgment.

Zobmondo Entertainment, LLC v. Falls Media, LLC, 2010 USApp LEXIS 8559 (9th Cir. 2010)

I highly recommend READING THIS CASE- it is full of analysis on descriptive versus suggestive and the procedure and evidentiary presumptions at summary judgment.

The 9th circuit overturned the district court’s summary judgment in favor of Zobmondo which found as a matter of law “Would you rather…” was descriptive for board games and which cancelled Falls Media’s registered trademark.  The Court of Appeals held that in the light most favorable to Falls Media, there was a genuine issue of fact as to whether “Would you rather” was descriptive or suggestive under the imagination test and was likely suggestive under the “competitors’ needs” test. (more…)

Value Selling Associates, LLC, et al. v. Temple, 2009 U.S. Dist. LEXIS 104174 (S.D. Cal. 2009)

Defendant sold its business to Plaintiff including all intellectual property rights and entered into a consulting agreement with Plaintiff.  The consulting arrangement was later terminated with a settlement agreement.  All agreements contained clauses stating that any dispute arising under or related to the agreement would be submitted to arbitration.  The Court ruled that trademark infringement claims for intellectual property that was part of the sale of the business related to the agreements and were therefore subject to the arbitration clauses. (more…)