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.

Beijin Tong Ren Tang v. TRT United States Corp., 2010 U.S. Dist. LEXIS 261 (N.D. Cal. 2010)

Only a portion of this decision deals with trademark issues- defendant counter-claimed claiming unfair competition, false designation or origin and false advertising based on defendant’s trademark rights.  However, the complaint did not sufficiently allege priority of use because the only facts given were that defendant used the name as a corporate name and registered a domain name.  Because this does not constitute use without a connection to specific goods, it is not a sufficient allegation of use for a Lanham Act claim.  The court granted leave to amend.