Trademark Blog » Litigation

Lanham Act Claim Dismissed for Lack of Standing

Marty Schwimmer — Mon, 13 Oct 2008 17:50:12 +0000

Seattle Trademark Lawyer: Eastern District (Washington) Dismisses Lanham Act Claim for Lack of Standing:

Plaintiff Melvin Ott sued Ingenix, Inc., in the Eastern District for listing him as a consultant in a proposal it made to the State of Montana. The State of Montana awarded Ingenix the bid — to develop fee schedules for the state — but Ingenix did not use Dr. Ott as a consultant. This, Dr. Ott argued, amounted to false association and unfair competition in violation of the Lanham Act.
Ingenix moved for summary judgment based on Dr. Ott’s alleged lack of standing to assert such a claim.
On Sept. 30, Eastern District Judge Fred Van Sickle granted the motion because the State of Montana, as the allegedly deceived entity, was not a party to the suit.

Terminated Donut Franchise

Marty Schwimmer — Fri, 08 Feb 2008 18:37:48 +0000

Dunkin Donuts is a franchisor. If a franchisee allegedly breaches its agreement such that Dunkin terminates the license, and the licensee continues to use the trademarks, then in addition to any contractual claims, there may be trademark claims as well:
Dunkin Donuts v. Bakery Maestro, 1:08-cv-00659-RBK-JS (D NJ Feb 6 2008) (excerpted complaint).

Ouch

Marty Schwimmer — Wed, 01 Nov 2006 23:47:31 +0000

Someone asked on the INTA discussion list: how much does a survey for use in litigation cost and someone replied:
“Just did a likelihood of confusion survey conducted over telephone with
137 professional respondents and the cost was $48,000. Does not include
any depositions or trial testimony.”
The deposition or trial testimony referred to is where the other side calls your survey expert names.
Note to people who haven’t had the pleasure of commissioning litigation surveys – phone surveys tend to cost less than the face to face surveys that involve printed materials.

Award of Both Patent And TM Damages Impermissible Double Recovery

Marty Schwimmer — Fri, 06 Oct 2006 05:09:54 +0000

Patently-O: “Jury Award of Both Patent and Trademark Damages Was Impermissible Dobule Recovery” ($6.8 million award against Wal-Mart knocked down to $5.9m).

"Injunction Junction: Law Note On Equitable Relief In Trademark Law"

Marty Schwimmer — Tue, 16 May 2006 18:34:24 +0000

Duke Law & Technology Review iBrief: “Injunction Junction: Remembering The Proper Function and Form Of Equitable Relief In Trademark Law.”
Abstract: Injunctions are supposed to be among the most extraordinary remedies in the American judicial system, yet they have become anything but rare in trademark litigation. Although the unique nature of trademark protection may explain the frequency of injunctive relief, the process by which this relief is issued is rapidly devolving into rubber-stamping by the courts. This iBrief argues that courts should (1) recommit themselves to the principles of equity before granting injunctions and (2) seriously apply the specificity requirements of Rule 65(d) of the Federal Rules of Civil Procedure to avoid overly broad orders.