More Tequila For Everybody!

“After a bench trial,” Judge Rosenthal wrote in this trademark case, “the court finds and concludes that both companies can continue to market their tequila products.” Many tequila brands —over fifty— have the words “Casa” or “Azul” in their name, and neither party ranked anywhere near the top of the market. “Importantly,” the Court observed, “the record shows no evidence that Clase Azul’s sales declined as a result of Casa Azul entering the tequila market.” As a result, the court found and concluded that “because of the dissimilarities between the two brands at issue, as well as other record evidence, the plaintiff fails to establish a likelihood of confusion, and fails to establish trademark infringement, unfair competition, or trademark dilution” and therefore the application for an injunction was denied.

Bad Hair Day: JMOL & MNT in Trademark Case

My wife took out a restraining order preventing me from running a picture of her hair in the ’80s for use in this post about the I&I Hair v. Beauty Plus case. My sister, however, wasn’t as quick, so it’s this 1989 shot of us and our hair that introduces this order by Judge Lynn granting part of the defendant’s renewed motion for judgment as a matter of law and cutting the jury award from $2.57 million to $0.07 million.

Motions to Dismiss Various Parts of Trademark Case Granted

Following the Federal Circuit’s reversal of her grant of a preliminary injunction, on remand Judge Rosenthal set aside the entry of default and granted in part a motion to dismiss as to a defendant, copyright, trademark dilution, and trade secret claims in a case involving medical treatment. The claims for trademark infringement, patent infringement, and breach of contract remain in the case.

Another Motion to Dismiss In A Trademark Case

But the procedural context is twisted in this case involving a whiskey distillery. The court previously remanded the state law causes of action, so the question presented was what to do with the dec action? After analyzing the Trejo factors which assist a judge in the discretionary call of whether to keep a case that has a parallel state court action, Judge Pitman concluded that all of the “federalism, fairness, and efficiency” factors weighed in favor of dismissal.

Motion to Dismiss Granted in Part

Plaintiff sought dismissal of the defendant’s claims that the plaintiff – a false eyelash manufacturer – engaged in false patent marking and false advertising in this case dealing with false eyelashes. (You can sort of see the theme, can’t you?) Judge Gilliland concluded that the false patent marking claim was not time-barred, that there was marking of an unpatented article, sufficient facts were pled to allege the requisite intent to deceive, and there was a sufficient showing of a competitive injury to require denial of the motion to dismiss. But the court did recommend granting the motion to dismiss the false advertising claim, noting that statements of inventorship – here “innovator” – are not actionable as false advertising, and recommended dismissal of the defendant’s claims against an individual as lacking personal jurisdiction.