for monetary damages and sought to recover attorneys’ fees and costs only.18On December 20, 2012, the plaintiff filed a motion for summary judgment on three counts of the FAC, seeking injunctive relief and an award of costs and attorneys’ fees. On February12, 2013, the defendants filed an opposition to the plaintiff’s summary judgment motion, as well as a motion to dismiss the FAC for lack of subject matter jurisdiction. After a September 18, 2013 oral argument on these motions, Judge Grisea granted the defendants’ motion to dismiss and denied the plaintiff’s summary judgment motion. But, Judge Grisea also granted the plaintiff leave to amend its FAC to reflect its claim for injunctive relief.The plaintiff filed its Second Amended Complaint (“SAC”) on October 1, 2013, with the following eleven counts, which include various claims for damages, injunctive relief, and attorneys’ fees: (1) use of a false designation of origin or false and misleading representation of fact in violation of 15 U.S.C. § 1125(a)(l); (2) dilution of a famous mark in violation of 15 U.S.C. § 1125(c); (3) engaging in unfair business practices in violation of New York General Business Law § 349; (4) trademark infringement in violation of New York common law; (5) unfair competition in violation of 15 U.S.C. § 1125(a); (6) common law defamation; (7) unfair competition under New York State law; (8) common law disparagement; (9) injunctive relief under the Lanham Act, 15 U.S.C. §§ 1116 and 1125; (10) making false and misleading statements about the plaintiff’s business in violation of New York General Business Law § 349; and (11) injunctive relief under New York common law. On September 23,2014, Judge Grisea dismissed Counts Three, Ten, and Eleven of the SAC. Romeo & Juliette Laser Hair Removal v. Assara I LLC, No. 08cv442, 2014 WL 4723299, at *9 (S.D.N.Y. Sept. 23, 2014). On February 10, 2015, Judge Grisea granted the plaintiff leave to file a new motion for summary judgment. Romeo & Juliette Laser Hair Removal v. Assa

for monetary damages and sought to recover attorneys’ fees and costs only.18On December 20, 2012, the plaintiff filed a motion for summary judgment on three counts of the FAC, seeking injunctive relief and an award of costs and attorneys’ fees. On February 12, 2013, the defendants filed an opposition to the plaintiff’s summary judgment motion, as well as a motion to dismiss the FAC for lack of subject matter jurisdiction. After a September 18, 2013 oral argument on these motions, Judge Grisea granted the defendants’ motion to dismiss and denied the plaintiff’s summary judgment motion. But, Judge Grisea also granted the plaintiff leave to amend its FAC to reflect its claim for injunctive relief.The plaintiff filed its Second Amended Complaint (“SAC”) on October 1, 2013, with the following eleven counts, which include various claims for damages, injunctive relief, and attorneys’ fees: (1) use of a false designation of origin or false and misleading representation of fact in violation of 15 U.S.C. § 1125(a)(l); (2) dilution of a famous mark in violation of 15 U.S.C. § 1125(c); (3) engaging in unfair business practices in violation of New York General Business Law § 349; (4) trademark infringement in violation of New York common law; (5) unfair competition in violation of 15 U.S.C. § 1125(a); (6) common law defamation; (7) unfair competition under New York State law; (8) common law disparagement; (9) injunctive relief under the Lanham Act, 15 U.S.C. §§ 1116 and 1125; (10) making false and misleading statements about the plaintiff’s business in violation of New York General Business Law § 349; and (11) injunctive relief under New York common law. On September 23, 2014, Judge Grisea dismissed Counts Three, Ten, and Eleven of the SAC. Romeo & Juliette Laser Hair Removal v. Assara I LLC, No. 08cv442, 2014 WL 4723299, at *9 (S.D.N.Y. Sept. 23, 2014). On February 10, 2015, Judge Grisea granted the plaintiff leave to file a new motion for summary judgment. Romeo & Juliette Laser Hair Removal v. Ass

” (Id. at ¶ 24) (emphasis added).False Advertising Claim Under Lanham Act (Count I)ADA’s first claim is a false advertising claim under Section 43(a)(1)(B) of the Lanham 11 2:16-cv-13839-SFC-MKM Doc # 21 Filed 02/21/17 Pg 11 of 33 Pg ID 689 Act, 15 U.S.C. § 1125(a)(1)(B). ADA alleges that the Certificate will falsely or misleadingly communicate that a Dealer (other than one in North Carolina) holding it: 1) is legally permitted to provide tinnitus care; and 2) is competent to provide tinnitus care.

This week in Romag Fasteners, Inc. v. Fossil Group, Inc., the Supreme Court changed the landscape for trademark litigation damage awards and resolved a split in Circuit Courts of Appeal when it held “ [a] plaintiff in a trademark infringement suit [under 15 U.S.C § 1125(a)] is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award”In general, the infringement of a registered trademark is prohibited under 15 U.S.C § 1114, whereas, the infringement of an unregistered or common law trademark and other acts of unfair competition are prohibited by 15 U.S.C § 1125(a). Both statutes effectively require the same finding of confusing similarity between a plaintiff’s mark and whatever the defendant is using to establish liability.Plaintiffs with trademark registrations may bring actions under both statutes, as they are not mutually exclusive, but often do not favoring 15 U.S.C § 1114 because of the additional remedies that may be available, namely, the attorney’s fees and potential for treble damages in exceptional cases.

In 2010, Romag discovered that Fossil sold handbags in the United State containing counterfeit snaps bearing the Romag trademark and filed suit in the U.S. District Court for the District of Connecticut. In 2014, the jury found that Fossil violated 15 U.S.C. § 1125(a) by falsely representing that its products came from the same source as Romag’s, and determined that Fossil should pay Romag more than $6 million in profits. While the jury concluded that Fossil had acted with “callous disregard” for Romag’s trademark rights, the jury found that none of Fossil’s violations were willful.Following the jury’s verdict, the District Court held a two-day bench trial on equitable defenses and remedies where it concluded that Romag was not entitled to any award of profits because Romag failed to prove that Fossil’s trademark infringement was willful.

The U.S. Supreme Court held this week that willfulness is not a prerequisite for an award of profits for violation of Lanham Act §43(a), 15 U.S.C. §1125(a), resolving a longstanding circuit split. Romag Fasteners, Inc. v. Fossil Group, Inc., No. 18-1233 (Apr. 23, 2020).

INTRODUCTION On March 25, 2014, the Supreme Court, in Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. ___ (2014), resolved a circuit split regarding the test for standing to assert a claim for false advertising under the Lanham Act, 15 U.S.C. § 1125(a) (“Section 1125(a)”). Rejecting all tests previously applied in the circuits, the Court, in a unanimous opinion written by Justice Antonin Scalia, held that a Lanham Act plaintiff will have standing if its claim is within the “zone of interests” protected by the Lanham Act and the defendant’s alleged false advertising proximately caused the plaintiff’s injuries.

Romag soon learned that the factories in China hired to produce Fossil’s handbags were using counterfeit versions of Romag’s fasteners. Concerned that Fossil was not taking adequate preventative measures against such counterfeiting conduct, Romag sued Fossil in the District of Connecticut for trademark infringement (15 U.S.C. §1114) and false designation of origin (15 U.S.C. §1125(a)).Circuit SplitDespite the jury finding that Fossil acted “in callous disregard” of Romag’s rights, the district court refused to award Romag with damages equating to Fossil’s earned profits because the “callous disregard” mens rea finding did not rise to the intentional standard of willful conduct.

ORDER ON MOTIONS FOR SUMMARY JUDGMENTBURROUGHS, D.J.The parties, Shark Ninja Operating LLC ( “Shark Ninja ”), and Dyson Inc. and Dyson LTD(together , “Dyson ”), are competitors in the household vacuum market. In this action, each accuses the other of disseminating false and misleading advertising about their respective vacuum products, in violation of the federal Lanham Act, 15 U.S.C. § 1125(a) , and Massachusetts state law.In 2013, Dyson launched an advertising campaign claiming that certain of its vacuums had “twice the suction of any other vacuum” on the market. In July 2014, however, Shark Ninja released a vacuum called the Shark Powered Lift -Away (the “Shark Lift -Away ”). Shark Ninjaclaims that Dyson ’s “twice the suction ” advertising claims became literally false no later than July 2014, when the Shark Lift-Away was introduced, because Dyson vacuums did not, in fact, have “ twice the suction ”of the Shark Lift- Away. In its First Amended Complaint, [ECF No. 40] (“Compl.”), Shark Ninja asserts claims for false advertising in violation of the Lanham Act,15 U.S.C. § 1125(a)(1)(B) (Count I); deceptive trade practices in violation ofMass. Gen. Laws, ch.93A (Count II); and false advertising in violation of Mass. Gen. Laws, ch. 266, § 91 (Count III). Dyson filed counterclaims [ECF No. 59] for false advertising in violation of the Lanham Act (Count I), and violations of Mas

According to Trader Joe’s, this conduct dilutes its trademarks, confuses consumers, and damages Trader Joe’s’ reputation by associating it with highcost, reduced-quality goods. The complaint includes six claims for relief, four of which arise under the Lanham Act and two of which arise under Washington law: (1) federal trademark infringement, 15 U.S.C. § 1114(1); (2) unfair competition, false endorsement, and false designation of origin, 15 U.S.C. § 1125(a)(1)(A); (3) false advertising, 15 U.S.C. § 1125(a)(1)(B); (4) federal trademark dilution, 15 U.S.C. § 1125(c); (5) state trademark dilution, Wash. Rev. Code § 19.77.160; and (6) deceptive business practices in violation of the Washington Consumer Protection Act, Wash. Rev. Code § 19.86.020. Trader Joe’s asked the district court to award it damages and permanently enjoin Hallatt from reselling its goods or using its trademarks in Canada.