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Licensing Relationship Goes Cold in Ice Cream Trademark Dispute

Ice cream truck franchising company, Mister Softee Inc., recently filed suit against a former franchisee claiming trademark infringement and unfair competition. The company claimed that although Mister Softee ended its franchising and license agreements with the licensee, he continued to operate his New Jersey ice cream businesses using the Mister Softee trademarks, as well as an iconic jingle.

In Benihana Case, Slicing and Dicing of Trademark Rights To Licensee Proves Problematic

A dispute that began with an unauthorized burger placed on a menu by a licensee recently culminated in the dismissal of the latest lawsuit between feuding factions of Benihana, the Japanese teppanyaki restaurant chain. In early March, the US District Court in the Southern District of New York dismissed a lawsuit brought by Benihana of Tokyo LLC (BOT) against its American counterpart, Benihana, Inc. (BI) that raised claims of breach of contract and breach of good faith, and highlighted the risks of splitting trademark rights between geographic territories.

Converse Loses Its Midsole Amidst ITC Trademark Battle

What Made News? Last month, the US International Trade Commission issued a decision invalidating a trademark for Converse’s iconic Chuck Taylor sneaker. Although Converse did win some of its claims, the ITC decision overall represents a potentially significant setback for Converse after the company took aggressive action to try to stop the sale of shoes that Converse claimed infringed its rights in the Chuck Taylor design. 

Name That Circuit Split: Nominative Fair Use in the Second Circuit

In the recent case of International Information Systems Security Certification Consortium v. Security University, LLC, the Second Circuit articulated its test for analyzing nominative fair use claims in trademark infringement cases. While we now know the Second Circuit’s test, the case also highlights a notable circuit split between the Ninth, Second, and Third Circuits regarding nominative fair use. As a result, companies intending to rely on a nominative fair use defense may have varying success depending on the jurisdiction.

House of Cards Producer Sued over Trademark Licensing Dispute

What’s the News? The producer of popular Netflix television series “House of Cards” has been sued in federal court on claims of trademark infringement for its use of the trademark HOUSE OF CARDS. See D2 Holdings LLC v. MRC II Distribution Co., L.P., et al. 1:16CV10453 (D. Mass. March 3, 2016). The plaintiff, D2 Holdings LLC, and its predecessor-in-interest have owned a federal registration for HOUSE OF CARDS since 2007, years before the popular political drama of the same name aired in 2013. While defendant MRC II Distribution Company L.P.

JC Penney Quickly Settles Suit With Burberry Over Alleged Counterfeit Check Pattern

A case filed by Burberry Ltd. earlier this year against JC Penney Corp Inc. in the Southern District of New York for trademark infringement, and related state and federal unfair competition claims over JC Penney’s use of a checkered pattern on coats appears to have quickly been resolved. Burberry Ltd. et al., v. J.C. Penney Corp. Inc., No. 1:16-cv-00982 (S.D.N.Y. 2016). In addition to state and federal trademark infringement, Burberry also asserted the more serious claims of trademark counterfeiting, which carries with it statutory penalties.  

Arent Fox Wins Lawsuit Protecting Diesel From Websites Selling Counterfeit Products

Washington, DC — Earlier this month, Arent Fox LLP secured a victory for Diesel S.p.A. after a federal court granted default judgement in a lawsuit the Italian clothing company filed against nine John Doe defendants operating 83 cybersquatting websites that sold counterfeit products appearing to carry the internationally recognized label.

Testing “First Sale” Waters: Costco Faces Trademark Suit Over Sale of Fashion Swimwear Brand

Costco is defending a trademark infringement lawsuit over its sale of Anne Cole swimwear, an iconic line of women’s swimwear that has been sold in the US for over 30 years. The suit will likely turn on the scope of the “first sale” doctrine—which shields resellers of genuine trademarked products from liability for trademark infringement—and whether the manner in which Costco displays the products is likely to mislead consumers as to their source.  

Empire vs. EMPIRE: Fox Defends Its Hit Television Series Against Lanham Act Claims

What’s the News? Twentieth Century Fox Television recently filed a motion for summary judgment in a dispute with record label Empire Distribution, Inc. over the name of Fox’s popular television series Empire. Empire Distribution has alleged that Fox’s use of “Empire” in the show’s title and on its soundtracks constitutes trademark infringement under the Lanham Act, but Fox claims that it is shielded from any such claims by the broad protection afforded to “expressive works” under the First Amendment.  

District Court Gives Go-Ahead to Marilyn Monroe’s Estate on False Endorsement Claim

What’s the News? A federal judge in the Southern District of New York recently held in A.V.E.L.A., Inc. v. Estate of Marilyn Monroe, LLC that the Lanham Act protects rights in a celebrity’s image long after his or her death. Specifically, the court determined that Marilyn Monroe’s estate could proceed with a Lanham Act false endorsement claim against a vintage collectibles licensor who was creating and marketing various products featuring images of the iconic celebrity.