Trademark Law Briefs

Stanislaus Custodial Deputy Sheriffs’ Association v. Deputy Sheriff’s Association of Stanislaus, 2010 U.S. Dist. LEXIS 21729 (E.D. Cal. 2010).

Plaintiff, a nonprofit collective bargaining association, sued Defendant, an educational nonprofit, for infringement of its trade name.  Although most claims arose under state law, Plaintiff included a claim for misappropriation of trade name under the Lanham act and brought suit in Federal court.  Defendant filed a motion to dismiss based on lack of federal subject matter jurisdiction.  The court granted the motion with leave to amend. (more…)

Gallup, Inc. v. Business Research Bureau (PVT.) Ltd., 2010 U.S. Dist. LEXIS 12154 (N.D. Cal., 2010)

Defendant runs a polling business in Pakistan under the name Gallup Pakistan, and is a an affiliate of Gallup International Association.  Plaintiff does polling in the United States, and is a former member of Gallup International Association.  Defendant alleged that Plaintiff is currently involved in trademark disputes with mayn GIA affiliates (noted as an aside in the case).  Defendant posts his polls online in English.  As a result, some polls have been picked up by American publications.  The court held that these extraterritorial actions do not give rise to jurisdiction under a Timberlane analysis. 

“Indeed, plaintiff essentially asks the Court to hold that mere participation in an international teleconference or news program broadcast to the United States (or available for viewing in the United States via the Internet) is sufficient to subject the holder of a presumably valid foreign trademark to infringement liability under the Lanham Act. The principles of comity and fairness weigh strongly against this argument.” (2010 U.S. Dist. LEXIS 12154 at p. 27.)

Aqua Logic, Inc. v. Aquatic Logic, Inc., 2009 US Dist. LEXIS 100738 (SD Cal. 2009)

Plaintiff, a California corporation, sued Defendant, an Illinois corporation for trademark infringement in a California district court.  Defendant moved for dismissal based on lack of personal jurisdiction. 

After applying the 3 prong “Purposeful Direction” test for tort claims, the court found personal jurisdiction existed based on Defendant’s advertisements in California based trade publiclations, at least one sale to a California company, and websites allowing purchases that are available to California residents.

At the same hearing but under separate opinion (2009 US Dist. LEXIS 100763) the court granted Plaintiff’s request for preliminary injunction.

Collegesource, Inc. v. AcademyOne, Inc. 2009 U.S.Dist. LEXIS 75513 (S.D.Cal 2009)

Plaintiff (a California corporation) alleged a number of causes of action against defendant- including trademark infringement based on defendant’s alleged use of plaintiff’s trademarks as adwords.  Defendant, a Pennsylvania corporation, moved to dismiss based on lack of personal jurisdiction.  The district court agreed. (more…)