Holding: In this suit relating to the "Hot Dog Hall of Fame" mark, the U.S. District Court for the Southern District of California ruled that the owner of an online newsletter at www.thehotdoghalloffame.com, J. Frank Webster, had no enforceable right over this disputed mark. Plaintiff Schussler Creative, Inc. registered this mark, and filed this action for a declaration that its trademark is valid. In ruling in Schussler's favor, the district court held that since Schussler registered the mark, it is presumed valid. A defendant like Webster can rebut the presumption of validity if he used the trademark in commerce prior to Schussler’s registration of the mark. Here, Webster failed to rebut this presumption. Specifically, Webster added a “store” to his website only after the commencement of this lawsuit. Because Webster started this activity after plaintiffs registered the trademark, this activity was not “prior” use. In addition, Webster’s miscellaneous activities had not included any commercial component. An intent to eventually commercially exploit an idea is not sufficient to confer trademark rights or meet the “in commerce” requirement. On this basis, the district court granted plaintiffs' motion for summary judgment. More...

Holding: In this dispute over the restaurant mark "Garduno's," the U.S. District Court for the District of Arizona issued injunctive relief to plaintiff Garduno's of Arizona, LLC. Defendant Tortilla, Inc. was the owner of this disputed mark, and licensed defendant to use it in the latter's chain of restaurants. Claiming that plaintiff had failed to pay royalties, defendant sent a letter purporting to terminate the license agreement. In response, plaintiff filed the instant suit, arguing that defendant should be restrained from terminating its right to use the "Garduno's" name. The district court granted plaintiff's motion for preliminary injunction, concluding that it had established a probability of success on the merits and the prospect of irreparable harm. In addition, the district court found that plaintiff was able to demonstrate that the hardship of forcing to close its restaurants outweighed the hardship defendant would incur if plaintiff would continue operating under the "Garduno's" name. More...

Holding: In this controversy relating to the "Popular" and "Tabacalera Popular Cubana" design and marks, the U.S. District Court for the Southern District of Florida ruled that a creditor could cause the seizure and auction sale of a debtor's trademarks to satisfy the latter's judgment debt. Here, the district court determined that defendants owned the marks in dispute and that plaintiffs Cuban Cigar Brands, N.V. and Max Rohr were able to comply with the requirement of Florida statute that as judgment holders, they must file an affidavit stating that they hold an unsatisfied judgment. With regard to the due process rights of the third-party trademarks licensee, the district court determined there was nothing in the record to indicate that any of the licensee's property rights would be directly altered if the trademark were to be seized and sold to the highest bidder at auction. Significantly, under the license agreement, defendants were entitled to sell or transfer their ownership rights in the trademarks without notifying the licensee in advance or obtaining its consent. On such basis, the district ordered the U.S. Marshall to seize the trademarks-at-issue for sale at a judicial auction to be applied toward the satisfaction of defendants' judgment debt. More...

Holding: The U.S. District Court for the District of Utah granted injunctive relief to plaintiffs Talisker Corp. and Talisker Deer Valley Corp. (collectively, "Talisker) in their trademark row with defendants Prime West. Both plaintiffs and defendants were engaged in real estate development, but the former sued the latter, claiming that Prime West's mark, "Talisman," infringed their own "Talisker" mark. The district court sided with plaintiffs because there was a strong and substantial likelihood that they would succeed in their infringement claim. Citing court precedents, the district court found that almost all factors used in determining likelihood of confusion, such as degree of similarity of the marks and intent of the alleged infringer, weighed in Talisker's favor. In this regard, an injunction would eliminate any confusion between the Talisman development and Talisker’s developments and facilities. Such an injunction would also enforce Talisker's marks. The district court therefore ruled that issuance of preliminary injunction to be effective immediately upon the posting of a bond.
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