Trademark Law Briefs

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…)

Kim Seng Company v. Great American Insurance Co. of New York, et al., (2009) 179 Cal.App.4th 186

Defendant insurance company refused to pay for defense of a trademark infringement claim against Plaintiff.  Defendant argued that the claim was excluded under the prior publication exclusion in the policy because Plaintiff commenced using the trademark before entering into the policy.  The court agreed, also finding that later uses of the same mark (such as the same word mark but with a new logo) did not count as a new publication within the policy period which would be covered.

This appears to be a problem for any business who changes insurance carriers- trademarks that are in use at the time of the change will not be covered by the new policy unless the business owner is aware of the problem and somehow adds coverage.

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…)

One True Vine, LLC v. The Wine Group LLC, 2009 US Dist. LEXIS 102489

Wine and trademark law- a classic pairing.  Plaintiff obtained the trademark Layer Cake for “Red Wine, White Wine” based on an intent to use application and a later statement of use.  Defendant filed Cupcake for use on “Wine” and Plaintiff opposed.  Turns out Plaintiff never actually marketed a white wine under the label Layer Cake.  Defendant therefore moved to cancel Plaintiff’s mark on the basis of fraud in registration.

Plaintiff asked the court to allow it to amend its mark so that it only applied to Red Wine.  Defendant objected, concerned that it would affect its cancellation claim.  The court agreed to amend the mark but noted that in doing so it would not affect Defendant’s cancellation motion because “a post hoc amendment of the trademark register does not serve to moot or rectify such fraud.  Granting the instant motion does not render the counterclaim moot.  Accordingly, there is no reason not to amend the register to correct what all agree is erroneous information.”

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.