This week, the Second Circuit affirmed Judge Crotty’s grant of summary judgment dismissing trademark claims against Oprah Winfrey over use of the phrase “Own Your Power” (see our previous coverage here).  The Second Circuit agreed with Judge Crotty that use of the phrase “Own Your Power” was fair use and did not infringe on the name of the plaintiff’s motivational speaking business, Own Your Power Communications, Inc.  This decision was based on the panel’s finding that the plaintiff’s “mark” was merely a descriptive phrase:
Continue Reading Second Circuit Affirms Summary Judgment in Trademark Case Against Oprah

Today, Judge Castel dismissed RICO claims brought against Alibaba Group Holding by a group of luxury goods makers including Gucci and Yves Saint Laurent.  The complaint accused Alibaba of providing services and a market platform to merchants that Alibaba should have known were selling counterfeit goods.

Judge Castel specifically considered the plaintiffs’ claims that Alibaba’s online marketplace and the merchants that used it constituted a criminal enterprise under RICO.  Judge Castel rejected this argument, holding that lack the coordination necessary to create a RICO enterprise:
Continue Reading Judge Castel Dismisses RICO Claims in Case Over Alibaba Selling Counterfeit Goods

Yesterday, Italian fashion company Aquazurra filed a complaint against Ivanka Trump and her partner Marc Fisher over shoes that allegedly infringe on Aquazurra’s designs.  Trump’s company markets a red “Hettie” shoe that Aquazurra claims infringes on its famous “Wild Thing” shoe (pictured here):

Shoes with Caption

Aquazurra alleges that at least two other Trump shoes infringe on Aquazurra’s

In a trademark opinion yesterday, Judge Koeltl granted judgment following a bench trial in favor of a Dutch company, Schutte, that makes “bag closures”  — the “small plastic closures that are used to close bags of pastries, bread, and fruit.”  Schutte sought to cancel the trademark protection of the dominant U.S. maker of bag closures, Kwik Lok.  Here are the two products side by side (Schutte on the left, Kwik Lok on the right):

12 Civ. 05541 - Bag Closure Image


Continue Reading Judge Koeltl Rejects Trademark Protection for Small Plastic Squares that Close Bread Bags

Today, Salvatore Ferragamo S.p.A. filed a complaint against former NFL quarterback Vincent Ferragamo (who led the LA Rams to Super Bowl XIV as a rookie in 1980) and his Ferragamo Winery near Los Angeles.  While Salvatore Ferragamo does not currently license its name for wines, it had previously done so in the U.S. in the 1980s.  Ferragamo (the Italian fashion brand) claims that Ferragamo (the winery) creates consumer confusion and violates Salvatore Ferragamo’s U.S. trademarks:

Continue Reading Salvatore Ferragamo Brings Trademark Claims Against Former NFL Quarterback’s Ferragamo Winery

Yesterday, Grammy Award-winning artist Beyoncé filed a complaint against Feyonce Inc., a Texas-based company whose products include plays on Beyoncé’s name and song lyrics.  According to the complaint, Feyonce’s products are strikingly similar to those bearing Beyoncé’s name:

Feyonce Complaint Image CropThe complaint alleges that Feyonce products infringe on trademarks and misappropriate Beyoncé’s superstar status without permission.  The

In an opinion this week, Judge Gardephe granted the plaintiffs’ motion to dismiss their own federal trademark claims, but found that the defendants’ declaratory judgment counterclaims were enough to preserve federal jurisdiction.  Defendant Chobani had alleged that the dismissal of the federal law claims was simply a tactic for the plaintiffs to attempt to defeat federal subject matter jurisdiction and effectively move the case to state court.

Continue Reading Judge Gardephe Allows Plaintiff to Dismiss Own Federal Patent Claims Against Chobani But Preserves Federal Jurisdiction

In an opinion today, Judge Rakoff dismissed a case in which a company holding a perpetual license to the “Del Monte” trademarks for fresh fruits a vegetables alleged that the nominal owner had abandoned all foreign trademarks, so as to render them invalid under the Lanham Act.  Although there are various instances in which the Lanham Act can apply outside the U.S., Judge Rakoff ruled that it would be “grossly intrusive” for the Lanham Act to go so far as to render foreign trademarks invalid:
Continue Reading Judge Rakoff: Lanham Act Cannot Be Used to Deem Foreign Trademarks Abandoned