SDNY: Daniel Wellington Brings Counterfeiting Suit Against Overstock.com

Daniel Wellington, which is the watch of the decade (para 11), sues Overstock for sale of counterfeit watches.  Screenshot above depicts top search results for “DANIEL WELLINGTON” on Overstock.com just now.


The History of the World As Told Through Canned Food Brands

The ability to preserve food in cans had a profound effect on our diet and our economy.  For one thing, it gave birth to the can-opener industry.  Also, it provided variety to our diet, and, in the belief of the founder of Borden’s, helped mitigate cannibalism.

Nicholas Appert, a French national, developed a process for vacuum-packed hermetically sealed jars for food, by 1809 (an Appert Canning jar above).  This is a logo mark registered by the Underwood company to commemorate him.

Alpert’s method was kept a secret, however by 1830, William Underwood had duplicated the technique, and switched from glass jars to tin cans.  He obtained what some claim is the first U.S. registered trademark for deviled ham.

and looks like this today:


This is one registered version of the early design:


Gail Borden was another early entrepreneur in canned food.  Reportedly shocked by the cannibalism in the Donner Party disaster of 1846, he set about developing methods of condensing food.  And so he developed condensed milk, which was patented in 1856.  Here is an early logo:

which you can still buy:


The Civil War provided a market for canned food.  Joining these pioneers were Van Camp, which, before it sold Gatorade, sold pork and beans.


It also branched into canned tuna:


And providing the ready-made sauce for these canned foods was Lea & Perrins:

And for the do-it-yourself crowd, the Mason Jar was invented in 1859 by John Landis Mason.  However the best known trademark in Mason Jars today is Ball:


This blog post is a work in progress, and was inspired by The Rise and Fall of American Growth by Robert J. Gordon



2nd Cir: Marcel v Lucky Brand Dungarees re GET LUCKY – Plaintiff Asserts Defense Preclusion

Marcel and Lucky litigated use of the GET LUCKY and LUCKY marks three times.  The first lawsuit, in 2001, resulted in a release.  The second lawsuit, in 2005, revealed in early motion practice that the parties disagreed as to the scope of the release.  However, Lucky did not assert its interpretation of the release as a defense at trial. Now, in the third lawsuit, Lucky asserts its interpretation of the release.

The issue for the Second Circuit is whether claim preclusion encompasses defense preclusion, and if so, is Lucky precluded here from asserting a defense relating to the release, which defense it could have asserted in the 2005 lawsuit, but did not.

As to whether claim preclusion can prohibit defenses:

We are aware of no authority unequivocally prohibiting defenses from being
subject to the principle of claim preclusion.    Lucky Brand, in essence
acknowledging this dearth of authority, depends almost entirely on language from
a leading treatise, Br. of Appellees at 38, which indicates that “[i]t is generally
assumed that the defendant may raise defenses in the second action that were not
raised in the first, even though they were equally available and relevant in both
actions.”    Wright & Miller, 18 Fed. Prac. & Proc. Juris. § 4414 (3d ed. 2018)
[hereinafter, “Wright & Miller”].  But, Wright & Miller speaks only of a “general
rule” that departs from the standard we identified in Clarke.  Id.  Moreover, Wright
& Miller acknowledges that, in certain circumstances, “[d]efendant preclusion
should be seriously considered,” and that perhaps the “best rule” would at times
allow for the preclusion of defenses that could have been previously asserted.  Id

Noting that issue preclusion can be deployed both offensively and defensively, the Court observed that the same arguments in favor of offensive and defensive use of issue preclusion (namely, judicial economy arguments), apply to claim preclusion as well.  Thus, claim preclusion will act to bar asserting defenses that could have been asserted by a defendant against this plaintiff, previously.


Timeline: Trademark Suit Sparks Pinduoduo IPO Fracas

Pinduoduo is an online shopping platform from China, that combines several e-commerce techniques, including coupons, and discounts for ‘aggregated sales’ (similar to the model of  Massdrop).  Pinduoduo is backed by Tencent.

It filed a Form F-1 in connection with a U.S. IPO on July 16.

On July 19, a Chinese diaper company, Beijing’s Daddy Choice, sued Pinduoduo, in the Southern District of NY, alleging that infringing goods were sold on the platform, with hte knowledge of Pinduopduo (complaint and blog post here).

On July 25, Pinduoduo raised $1.6 billion in its IPO, which values the company at $29.6 billion.  Shares traded as high as $27.54 on July 26.

On July 31, the Chinese State Administration for Market Regulation announced that it was investigating Pinduopduo over the reports of infringing goods being sold on the platform.

Yesterday, August 1, the price fell as low as $19.28.

By the end of yesterday,  securities lawyers were soliciting  Pinduoduo investors in connection with ‘possible violations of federal securities laws.’




2nd Cir: Excelled Sheepskin v Oregon Brewery re ROGUE for Clothing

Justia Summary:

OBC appealed the district court’s grant of summary judgment for Excelled in a trademark dispute over use of the brand-name ROGUE on t-shirts. The Second Circuit held that Excelled failed to show entitlement to summary judgment dismissing OBC’s trademark infringement counterclaims. In this case, Excelled failed to meet its burden of proving that OBC’s delay in bringing suit was unreasonable and caused prejudice to Excelled. Therefore, the court vacated the district court’s grant of summary judgment to Excelled, dismissing OBC’s counterclaims, alleging trademark infringement, false designation, and unfair competition. The court reversed the district court’s grant of summary judgment to Excelled on its infringement claims and the district court’s denial of OBC’s motion for summary judgment dismissing these claims. The court also reversed the award of injunctive relief and damages and fees against OBC. Finally, the court vacated the district court’s grant of summary judgment to Excelled on OBC’s trademark cancellation counterclaim because the district court erroneously relied on determinations of disputed facts about the continuity of Excelled’s sales that usurped the province of the jury.


Beijing Diaper Company Sues Chinese eCommerce App PINDUODUO In SDNY On Eve of IPO

Pinduoduo is a fast-growing Chinese eCommerce app.  It filed a Form F-1 to start the IPO process in the U.S. on July 16.  Chinese diaper company Beijing Daddy’s Choice  sued Pinduoduo Friday in the Southern District of New York,, alleging trademark infringement arising from PinDuoDUo’s allegedly allowing the sale of infringing PADDY’S CHOICE Diapers on the app, with the knowledge that such infringing diapers are sold into the U.S.

NY Times coverage here.



Chronicled Brand Protection


Brown: Advertising and the Public Interest

Brown, Advertising and the Public Interest: Legal Protection of Trade Symbols, 57 Yale L.J. 1165 (1948)

Abstract from eYLS scholarship repository

The law of trade symbols is of modern development, largely judge-made and only partly codified. Its impetus comes from the demands of modem advertising, a black art whose practitioners are part of the larger army which employs threats, cajolery, emotions, personality, persistence and facts in what is termed aggressive selling. Much aggressive selling involves direct personal relationships; advertising depends on the remote manipulation of symbols, most importantly of symbols directed at a mass audience through mass media, or imprinted on mass-produced goods. The essence of these symbols is distilled in the devices variously called trade-marks, trade names, brand names, or trade symbols. To the courts come frequent claims for protection, made by those who say they have fashioned a valuable symbol, and that no one else should use it. Very recently, for example, the vendors of Sun-Kist oranges lost a court battle to prevent an Illinois baker from selling Sun-Kist bread. The highest court, in its most recent encounter with a like case, upheld the power of a manufacturer of rubber footwear to prevent the use of a red circle mark by a seller of rubber heels, which the plaintiff did not manufacture.



Text of ASTM v Public Resource – DC Circ Decision re Fair Use of Standards Incorporated Into Laws

From the decision: Across a diverse array of commercial and industrial endeavors, from paving roads to building the Internet of Things, private organizations have developed written standards to resolve technical problems, ensure compatibility across products, and promote public safety. These technical works, which authoring organizations copyright upon publication, are typically distributed as voluntary guidelines for self-regulation. Federal, state, and local governments, however, have incorporated by reference thousands of these standards into law. The question in this case is whether private organizations whose standards have been incorporated by reference can invoke copyright and trademark law to prevent the unauthorized copying and distribution of their works. Answering yes, the district court granted partial summary judgment in favor of the private organizations that brought this suit and issued injunctions prohibiting all unauthorized reproduction of their works. In doing so, the court held that, notwithstanding serious constitutional concerns, copyright persists in incorporated standards and that the Copyright Act’s “fair use” defense does not permit wholesale copying in such situations. The court also concluded that the use of the private organizations’ trademarks ran afoul of the Lanham Act and did not satisfy the judicial “nominative fair use” exception. Because the district court erred in its application of both fair use doctrines, we reverse and remand, leaving for another day the far thornier question of whether standards retain their copyright after they are incorporated by reference into law.



Lemley: The Modern Lanham Act and the Death of Common Sense

The Modern Lanham Act and the Death of Common Sense

Abstract: Trademark law has expanded dramatically in the last fifty years, with a number of trends combining to give trademark owners something they have never had before–protection of marks akin to the protection given real property. Professor Lemley evaluates these changes, and suggests that they are not supported by the economic learning on the functions of trademarks and advertising. He argues that many of these legal developments are unwarranted, particularly the cases which give trademark owners power to prevent political and social commentary, or to own the trademark as a thing in itself.