AM ERI CAN BAR ASSOCIATIO N
Defending Liberty ,1'urs111119 ]W 'tice
PRIVATE ADVERTISING LITIGATION (PAL)
RECENT LITIGATION DEVELOPMENTS
[Cases from March 7 to March 15, 2010]
Prepared for the PAL Committee by Dan Blynn of Kelley Drye & Warren LLP; Angela Harris
of Bryan Cave; Ellie Boragine of Weil Gotshal & Manges; Lauren Teitelbaum of Manatt
Phelps & Phillips; Hesham Sharawy of Keller and Heckman ; and Dale Giali of Howrey LLP.
The U.S. Court of Appeals for the Third Circuit affirms the district court' s order enforcing a putative
settlement agreement in a Lanham Act case. The court held that a series of emails between the
parties constituted an enforceable settlement agreement , despite no formal agreement having been
signed . (California Sun Tanning USA, Inc. v. Electric Beach, Inc., No. 08-4843 , 2010 WL 827725
(3d Cir. Mar. 11, 2010)).
The U.S. District Court for the Eastern District of Pennsylvania remands a case challenging the
labeling of the cashmere content of Cashmerino yarn to the Pennsylvania Court of Common Pleas
for Philadelphia where there was no evidence of unanimity of consent to removal by all of the
Defendants, notwithstanding the court's acknowledgement that it had subject matter jurisdiction in
light of the federal question on the face of the complaint. The complaint alleged false advertising
pursuant to the Lanham Act and breach of contract.
(The Knit With v. Yarns, No. 09-5981, 2010
U.S. Dist. LEXIS 22592 (E.D. Pa. Mar. 11, 2010)).
The U.S. District Court for the Southern District of New York partially grants the City of New
York' s motion for summary judgment, holding that the City has a right to the trade name "Tavern on
the Green" for its restaurant in Central Park. Additionally the court canceled the Defendant's
registration of the restaurant services mark "Tavern on the Green " as fraudulent, as the application
for registration included deliberate misstatements and omissions designed to mislead the Patent and
Trademark Office .
(City of New York v. Tavern