Trademark Law Briefs

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…)

Coach, Inc. v. Abner’s Fashion, et al., 2009 U.S. Dist. LEXIS 121761 (C.D. Cal. 2009)

The court granted summary judgment to Coach in a case of counterfeit goods.  The defendants were unable to raise any triable issue of fact that the goods were not infringing.

Ruiz Food Products v. Camino Real Foods, Inc., 2009 US Dist. LEXIS 105941 (E.D. Cal. 2009)

Plaintiff alleged that Defendant’s new packaging for burritos (sold in multi-burrito packages) infringed on its trade dress.  Plaintiff filed for a preliminary injunction.  The court compared the packaging in question and determined that a preliminary injunction was not warranted but invited Plaintiff to refile the motion if it discovered evidence of actual confusion or evidence of a higher the degree of care in purchasing of Mexican food. (more…)

Milne et al. v. Stephen Slesinger, Inc, 2009 U.S. Dist. LEXIS 94925 (C.D. Cal. 2009)

The court granted Disney’s motion for summary judgment and denied Stephen Slesinger, Inc.’s (SSI) motion for summary judgment related to SSI’s claims that Disney had infringed its trademark and copyrights in the Winnie the Pooh works.

At issue was whether SSI had assigned all of its rights in the Pooh works to Disney.  The terms of a contract are a matter of law which the court can interpret in response to a motion for summary judgment.  Therefore, competing interpretations by the parties do not create a dispute of a material fact.  After considering the assignment contract between SSI and Disney, the court determined that SSI had assigned all of its rights to Disney and therefore could not have a trademark infringement claim.  This was further supported by the fact that SSI never filed for trademarks itself nor objected when Disney filed at least 14 trademarks in the Pooh works.  Furthermore, prior state court proceedings in which SSI stated it had assigned all of its rights to Disney and supported Disney’s judicial estoppel claim.

Mortgage Electronic Registration Systems, Inc. v. Brosnan et al., 2009 U.S. Dist. LEXIS 87596 (N.D. Cal. 2009)

Defendants set up corporations in California and elsewhere using a name nearly identical to Mortgage Electronic Registration Systems, Inc. (MERS).  After receiving service intended for MERS, defendants contacted MERS offering to send the legal documents on in exchange for fees.  MERS sought a preliminary injunction based on trademark infringement.

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