Intellectual Property and Tech Law Reports

Marshak v. Treadwell

The case now before us focuses on the breadth of the injunction and efficacy of the remedies that were issued along with Judge Politan’s ruling. Judge Po litan enjoined Marshak and his company from marketing The Drifters anywhere – not On Broadway, not Up On the Roof, and not Under the Boardwalk – and ordered a full accounting of profits. In the years that followed, however, various family members and associates of Marshak picked up where Marshak left off, and began again promoting The Drifte rs, just as Marshak had. Treadwell, thinking that these actions were not Some Kind of Wonderful, thus brought the instant motion for contempt, arguing that the Politan injunc tion applied to Marshak’s associates as well as to Marshak. After a lengthy hearing, the District Court found that Marshak and his associates were in contempt of the Politan injunction, but limited Treadwell’s remedies to an award of attorneys’ fees. Bo th s ides then appealed: Marshak and his associates appealed the merits of the dec ision, while Treadwell challenged the paucity of the remedies.

For the reasons that follow, we affirm in part and reverse and remand in part.

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Marilyn Nutraceuticals, Inc. v. Mucos Pharma GBMH & Co.

This appeal presents the question, among others, as to the appropriate criteria that a district court should apply in considering a motion to enter a preliminary injunction requiring a product recall in a trademark infringement case. We join the Third Circuit in requiring that a district court must find a substantial risk of danger to the public or other special circumstances in order to enter an interlocutory order recalling a product in a trademark infringement case.

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In re Shinnecock Smoke Shop

In June 2006, Jonathan K. Smith (Applicant), a U.S. citizen and member of the Shinnecock Indian Nation and sole proprietor of Shinnecock Smoke Shop, filed two trademark applications with the United States Patent and Trademark Office (USPTO), seeking to register the marks SHINNECOCK BRAND FULL FLAVOR and SHINNECOCK BRAND LIGHTS (Serial Nos. 78/918,061 and 78/918,500 respectively) for cigarettes. Both marks also included the wording "MADE UNDER SOVEREIGN AUTHORITY."

The Trademark Examining Attorney (Examining Attorney) refused to register the proposed marks, citing Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), which generally protects against registering marks that falsely suggest a connection to a non- sponsoring entity. Applicant appealed to the Trademark Trial and Appeal Board (Board) which affirmed because it agreed that the marks falsely suggested a connection with the non-sponsoring Shinnecock Indian Nation. The Board also rejected Applicant's constitutional and treaty-based claims that pertained to his allegations of racial discrimination. Applicant timely appealed the Board's decision to this court. We have jurisdiction over the appeal pursuant to 28 U.S.C. § 1295(a)(4)(B). We affirm.

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Zino Davidoff SA v. CVS Corp.

Defendant appeals from a preliminary injunction ordered by the United States District Court for the Southern District of New York (Karas, J.), which enjoined defendant, inter alia, from selling plaintiff’s trademarked products with the unique production code removed. The Court of Appeals (Leval, J.) affirms. Because the production codes play an important role in helping the trademark owner to guard against counterfeits and protect the reputation of the mark, the district court properly found that its unauthorized removal by a seller could justify a finding of trademark infringement.

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Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc.

Defendants-Appellants Mylan Laboratories and Mylan Pharmaceuticals (collectively “Mylan”) appeal from the district court’s order awarding approximately $1.3 million in costs to Plaintiff-Appellee Daiichi Pharmaceutical Co. (“Daiichi”) under 28 U.S.C. § 1920 and Federal Rule of Civil Procedure 54(d). We affirm-in-part, vacate-in-part, and remand.

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Univ. of Pittsburgh v. Varian Medical Systems, Inc.

The University of Pittsburgh (“Pitt”) appeals the final judgment of the United States District Court for the Western District of Pennsylvania dismissing with prejudice its patent infringement action for lack of standing. Judgment, Univ. of Pittsburgh v. Varian Med. Sys., Inc., No.07-CV-0491 (W.D. Penn. June 16, 2008). Varian Medical Systems, Inc. (“Varian”) cross appeals the district court’s denial of its motions for sanctions and attorney fees. We need not decide whether a dismissal was warranted in this case because we hold the district court erred in dismissing the claims “with prejudice.” Thus, we vacate the dismissal and remand with instructions to designate the dismissal as “without prejudice.”

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