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Category Archives: Lanham Act

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Judge Recommends Lanham Act Litigant “Shake it Off”

By Lawrence Weinstein, Anisha Shenai-Khatkhate and Nicole Sockett on Posted in Lanham Act
Judge Joshua D. Wolson of the U.S. District Court for the Eastern District of Pennsylvania recently dismissed a Lanham Act suit that challenged critical comments on a blog (not this one!).  The case was brought by plaintiff Crash Proof Retirement, a retirement investment adviser who was the subject of the criticism.  The defendant author of … Continue Reading

Fourth Circuit La(t)ches On to Timeliness of § 43(a) Lanham Act Claims

By Lawrence Weinstein, Jennifer Yang and Nicole Sockett on Posted in Lanham Act
The Fourth Circuit recently overturned a district court’s decision to apply an analogous state law statute of limitations to bar a claim for false advertising under § 43(a) of the Lanham Act.  In doing so, the Court held that because § 43(a) claims are “equitable in nature,” laches is the applicable timeliness rule, rather than … Continue Reading

2020 Advertising Law Year in Review

By Lawrence Weinstein, Baldassare Vinti, Jeff Warshafsky, Jennifer Yang and Anisha Shenai-Khatkhate on Posted in Class Actions, Deceptive Trade Practices, Labeling Claims, Lanham Act, NAD/NARB/CARU/ERSP, Regulatory
While 2020 was an eventful year in the world of advertising law, it feels wrong to begin any type of “year in review” without acknowledging the global events of this year, and the challenges they have brought to every individual in one way or another. In our role, we are often in a position of … Continue Reading

Fifth Circuit Rains on Plaintiff’s Parade, Vacates Award in Dispute over Windshield Water Repellant Ad

By Lawrence Weinstein, Jeff Warshafsky and Carl Mazurek on Posted in Deceptive Trade Practices, Lanham Act
Last month, a Fifth Circuit panel vacated in part a judgment in a false advertising case that disgorged the defendant’s profits, awarded corrective advertising damages under the Lanham Act and enjoined the disputed claims. Illinois Tool Works v. Rust-Oleum, 955 F.3d 512 (5th Cir. 2020). The panel held that the plaintiff failed to show the … Continue Reading

Single Communication-Based False Advertising Claim Permitted to Proceed

By Lawrence Weinstein, Alexander Kaplan and Marc Palmer on Posted in Deceptive Trade Practices, Lanham Act
A recent decision out of the District of Massachusetts serves as a reminder that a court may consider even a single communication by an advertiser made directly to a consumer to be advertising under the Lanham Act, particularly where the advertiser competes in a limited market. Allscripts Healthcare v. DR/Decision Res., No. CV 19-11038-NMG, 2020 … Continue Reading

The RealReal Falls Seven Bags Short of 100% Compliance with Advertising Claims

By Lawrence Weinstein, Jeff Warshafsky and Kelly Landers Hawthorne on Posted in Deceptive Trade Practices, Lanham Act
Judge Vernon Broderick of the U.S. District Court for the Southern District of New York recently decided a motion to dismiss by luxury consignment goods reseller The RealReal (“TRR”) in an action brought by famous French brand Chanel. Chanel v. The Realreal, 2020 WL 1503422 (S.D.N.Y. Mar. 30, 2020). In addition to the false advertising … Continue Reading

Update on Oral Argument in Romag: Supreme Court Considers Whether Willfulness is Required to Disgorge a Defendant’s Profits under the Lanham Act

By Lawrence Weinstein, Jeff Warshafsky and Carl Mazurek on Posted in Lanham Act
Last summer, we covered  the Supreme Court’s decision to grant certiorari in Romag Fasteners v. Fossil in order to decide whether § 1117(a) of the Lanham Act requires that a plaintiff make a showing of willfulness in order to obtain a trademark infringement defendant’s profits for a violation of § 1125(a). As we noted in … Continue Reading

Seventh Circuit Remands after District Judge Makes Injunction Stickier in Light Beer Corn Syrup Dispute

By Lawrence Weinstein, Carl Mazurek and Ariella Muller on Posted in Deceptive Trade Practices, Injunctions, Labeling Claims
The Seventh Circuit has remanded a lawsuit concerning beer advertising to the district court for failure to follow required procedures in issuing a preliminary injunction – the latest development in the case’s torturous procedural history. On May 24, 2019, Judge William Conley of the Western District of Wisconsin issued a preliminary injunction banning Anheuser-Busch from … Continue Reading

District Court Judge Finds that Herbal Extract Manufacturer Fails to Capture the Essence of a Lanham Act Claim

By Lawrence Weinstein, Carl Mazurek and Kelly Landers Hawthorne on Posted in Lanham Act
In a recent application of the Supreme Court’s 2014 Lexmark decision on standing, Judge Katharine Hayden of the District of New Jersey held last month that an herbal extract manufacturer allegedly misled by its supplier into purchasing diluted saw palmetto extract lacked standing to bring a Lanham Act false advertising claim. Jiaherb, Inc. v. MTC … Continue Reading

SCOTUS to Decide Whether the Lanham Act Requires Proof of Willfulness for Disgorgement of Profits

By Lawrence Weinstein, Alexander Kaplan, Jeff Warshafsky and Monique Curry on Posted in Lanham Act
On Friday, June 28, 2019, the Supreme Court granted certiorari in Romag Fasteners, Inc. v. Fossil, Inc. to decide whether a showing of willfulness is necessary to obtain a defendant’s profits under the Lanham Act. In Romag, the plaintiff, a manufacturer of magnetic snap fasteners, sued Fossil and various retailers for, among other things, infringement … Continue Reading

SDNY Judge Not Sweet on Dannon’s Bid for a Preliminary Injunction

By Lawrence Weinstein, Jeff Warshafsky and Emily H. Kline on Posted in Deceptive Trade Practices, Injunctions, Lanham Act
In a battle of leading yogurt beverage makers, Chief Judge Colleen McMahon of the U.S. District Court for the Southern District of New York recently denied Dannon’s application for a preliminary injunction in its false advertising suit against Chobani. The result of Judge McMahon’s decision is that Chobani can continue to sell its yogurt drinks … Continue Reading

$15 Million False Ad Verdict Boosts Damages In Probiotic IP Dispute

By Lawrence Weinstein, Daniel Werb and Russell Kostelak on Posted in Lanham Act
On November 20, 2018, a years-long dispute before Judge Theodore Chuang in the District of Maryland over probiotics culminated in a gut-wrenching $18 million jury verdict against defendant pharmaceutical companies.  The case is De Simone v. VSL Pharmaceuticals, Inc. et al., No. 8:15-cv-01356. The dispute involved numerous claims and counterclaims, including both a claim and a … Continue Reading

Eleventh Circuit Works Out Preclusion and Preemption Issues in Protein Powder Dispute

By Lawrence Weinstein, Jeff Warshafsky and Emily H. Kline on Posted in Labeling Claims, Lanham Act, Primary Jurisdiction/Preemption
On December 4, 2018, the Eleventh Circuit partially reversed the dismissal of Hi-Tech Pharmaceuticals’ suit against HBS International Corp. for alleged violations of the Lanham Act and Georgia’s Uniform Deceptive Trade Practices Act. Hi-Tech Pharmaceuticals, Inc. v. HBS International Corp., No. 17-13884 (11th Cir. 2018). Hi-Tech alleged that the label of HBS’s protein-powder supplement – … Continue Reading

District Court Filters Out Preempted “Spring Water” False Advertising Claim

By Alexander Kaplan and Jeff Warshafsky on Posted in Lanham Act
Earlier this year, we covered a decision from the District of Connecticut finding state law false advertising claims against the bottled water company Poland Spring preempted by the FDCA. Flowing from that decision is the case we are covering today: Frompovicz v. Niagara Bottling, LLC, 2018 WL 4465879 (E.D. Pa. Sept. 18, 2018).… Continue Reading

Update: Second Circuit Affirms Dismissal of Lanham Act Claims Based on Allegedly False UL Certification

By Alexander Kaplan and Jeff Warshafsky on Posted in Lanham Act
Last fall, we covered the Southern District of New York’s dismissal of Board-Tech Electronic Company’s Lanham Act false advertising claim.  Based on its own internal testing, Board-Tech alleged that light switches sold by its competitor, Eaton Corporation, were falsely labeled as complying with an Underwriters Laboratories (“UL”) certification standard.  However, the district court found that … Continue Reading

Sixth Circuit Says T-bone Steaks and Salmon Filets on Pet Food Packaging Not Misleading

By Lawrence Weinstein and Lee Popkin on Posted in Lanham Act
Last month, the Sixth Circuit held that photographs of “premium cuts” of meat on pet food packaging were not enough to mislead a reasonable consumer into believing that the kibble was made from these high-end ingredients.  Wysong v. APN, 889 F.3d 267 (6th Cir. 2018). In 2016, Wysong Corporation, a pet-food manufacturer, sued six other … Continue Reading

Lanham Act Injunction Floored Where Social Media Criticisms Were Not “Commercial Advertising”

By Lawrence Weinstein, Alexander Kaplan and Evelyn Pang on Posted in Injunctions, Lanham Act
A judge in the Western District of Wisconsin recently denied a motion for a preliminary injunction that sought to prevent a customer from criticizing the plaintiff’s products over social media.  Buckeye Int’l v. Schmidt Custom Floors, 2018 WL 1960115 (W.D. Wis. Apr. 26, 2018).  Plaintiff Buckeye sells floor finishing products, and defendant Schmidt is a … Continue Reading

Court Says “Lights Out” on UL Certification Lanham Act Claim

By Alexander Kaplan and Jeff Warshafsky on Posted in Lanham Act
Last week, a federal judge in Manhattan examined the intersection of false advertising and trademark infringement law in connection with the alleged misuse of a certification mark, and found the plaintiff to be entitled to neither body of law as a means to stop a competitor from advertising its products as “UL Certified.”  The court … Continue Reading

Can Inflating Jury Verdicts and Settlements Injure More than Just Your Reputation? Kansas Law Firm Sues Competitor For False Advertising

By Lawrence Weinstein, Jeff Warshafsky and Sara Schlafstein on Posted in Lanham Act
It’s not every day that a law firm sues a competing firm for false advertising. Earlier this month, however, a Wichita, Kansas personal injury law firm did just that. Brave Law Firm sued rival firm Truck Accident Lawyer’s Group and allegedly related entities in the U.S. District Court for the District of Kansas, alleging violations … Continue Reading

Fourth Circuit Tells District Court Not to Abstain in False Ad Holy War

By Alexander Kaplan and Lee Popkin on Posted in Lanham Act
At the heart of this unique Lanham Act case is a dispute between the Episcopal Church (the “Church”) and one of its “disaffiliated” districts, the Diocese of South Carolina (“Diocese”).  In 2012, led by its Bishop Mark Lawrence, the Diocese withdrew from the Church, but the Church did not recognize the withdrawal, and appointed Bishop … Continue Reading

Michigan District Court Won’t Hear Lanham Act Claim Against Tinnitus Treatment Certifier

By Lawrence Weinstein, Jeff Warshafsky and Tiffany Woo on Posted in Lanham Act
Last week, we covered a summary judgment decision holding that posts on the “Science-Based Medicine” blog were not “commercial speech” under the Lanham Act, and therefore the defendant in that case was not liable for false advertising in violation of that statute. In a similar recent decision, a judge in the Eastern District of Michigan … Continue Reading

No Scrubs Permitted: Eleventh Circuit Affirms Blog Post Is Not Advertising Actionable Under Lanham Act

By Alexander Kaplan and Evelyn Pang on Posted in Lanham Act
In an interesting recent opinion, the Eleventh Circuit held that a doctor’s blog post criticizing another doctor and his clinical practice could not form the basis of a Lanham Act claim because the blog posts were not commercial advertising or promotion. This case thus involves a rare circumstance in which a communication did not qualify … Continue Reading

Update on Second Circuit Ruling in Church & Dwight v. SPD Swiss Precision Diagnostics “Weeks Estimator” Home Pregnancy Test Litigation

By Alexander Kaplan and Daniel Werb on Posted in Deceptive Trade Practices, FDCA, Injunctions, Lanham Act, Primary Jurisdiction/Preemption, Uncategorized
Last month we summarized the Second Circuit’s important decision in a dispute between plaintiff-appellee Church & Dwight and its principal competitor, defendant-appellant SPD Swiss Precision Diagnostics, concerning SPD’s false advertising of its Clearblue Weeks Estimator Home Pregnancy Test.  As we reported, a Second Circuit panel in September unanimously affirmed rulings by Judge Alison Nathan of … Continue Reading
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