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.”

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…)

Salu, Inc. v. The Original Skin Store, 2010 U.S. Dist. LEXIS 35638 (E.D. Cal, 2010)

Plaintiff owned the mark “Skin Store” on the supplemental register.  Plaintiff later filed for and received the mark “SkinStore” on the principal register based on a statement of substantially exclusive use for five years.  Plaintiff sued Defendant for the use of “the Original Skin Store.”  Defendant sought cancellation of Plaintiff’s mark on the grounds that Plaintiff falsely alleged substantially exclusive use when Plaintiff was aware of other users.  The court denied the motion for summary judgment on the cancellation proceeding. (more…)