WASHINGTON, D.C. — A decision by the Trademark Trial and Appeal Board to uphold an examiner’s rejection of the “Aquapel” mark for use in connection with leather or imitation leather home goods was affirmed June 13 by the Federal Circuit U.S. Court of Appeals, which agreed that the registration would likely cause confusion with the registered mark “Aquapel” (In re: Halo Leather Limited, No. 17-1849, Fed. Cir., 2018 U.S. App. LEXIS 16135).
SYRACUSE, N.Y. — A New York federal judge on June 19 granted RE/MAX LLC’s motion for a default judgment against former franchisees, awarding the franchisor $231,989.23 in actual damages and issuing a permanent injunction enjoining the former franchisees from using, imitating, copying, duplicating or otherwise making use of RE/MAX marks (RE/MAX, LLC v. Robert Goodman Realty, LLC, et al., No. 17-0526, N.D. N.Y., 2018 U.S. Dist. LEXIS 101788).
SAN FRANCISCO — A California federal judge did not err in granting Jack in the Box Inc. (JIB) summary judgment on its allegations that a franchisee committed breach of contract and trademark infringement, the Ninth Circuit U.S. Court of Appeals ruled June 18 in a per curiam opinion (Jack in the Box Inc. v. Deepak Mehta, et al., No. 17-15336, 9th Cir., 2018 U.S. App. LEXIS 16362).
SAN FRANCISCO — A California federal judge erred when dismissing a trademark infringement complaint on grounds of trademark invalidity, as well as in his subsequent order canceling the “Mastermind” trademark, the Ninth Circuit U.S. Court of Appeals ruled June 15 (Raul Caiz v. William Leonard Roberts II, et al., No. 17-55051, 9th Cir., 2018 U.S. App. LEXIS 16171).
CINCINNATI — A Kentucky federal judge did not err in finding that two distillery operators adopted the “Old Taylor” name descriptively and in good faith, thus entitling them to a fair use defense to allegations of trademark infringement, the Sixth Circuit U.S. Court of Appeals ruled June 14 (Sazerac Brands LLC v. Peristyle LLC, et al., No. 17-5933, -5997, 6th Cir., 2018 U.S. App. LEXIS 15940).
NEW ORLEANS — A corporate trademark infringement claim was properly granted dismissal for lack of personal jurisdiction because the corporation has never solicited business in Texas, maintains no physical presence in Texas, and its owner and co-defendant was only ever in Texas on a flight layover, the Fifth Circuit U.S. Court of Appeals affirmed June 13 (GreatFence.com Inc. v. A Great Fence LLC, et al., No. 17-20487, 5th Cir., 2018 U.S. App. LEXIS 15888).
NEW YORK — In a June 13 letter motion, plaintiffs’ attorneys requested a two-week extension to file objections to a June 8 New York federal magistrate judge’s recommendation that they be awarded a default judgment on just three of seven counts of copyright infringement (Conan Properties International LLC, et al. v. Ricardo Jové Sanchez, No. 17-162, E.D. N.Y., 2018 U.S. Dist. LEXIS 98631).
LAS VEGAS — A November 2017 order that dismissed with prejudice allegations of copyright misuse, intentional interference with prospective economic advantage and false advertising by Oracle International Corp. will not be reconsidered, a Nevada federal judge ruled June 5 (Rimini Street Inc. v. Oracle International Corp., No. 14-1699, D. Nev., 2018 U.S. Dist. LEXIS 94585).
SAN FRANCISCO — For the second time in three years, the Ninth Circuit U.S. Court of Appeals on June 5 vacated and remanded a California federal judge’s finding that the use of the color bright green for foam ear plugs is functional and thus unprotectable as trade dress (Moldex-Metrix Inc. v. McKeon Products Inc., No. 16-55548, 9th Cir, 2018 U.S. App. LEXIS 15064).
SAN FRANCISCO — Efforts by a trademark infringement plaintiff to disqualify counsel for Twitter Inc. on the basis of a prior relationship with the plaintiff surrounding patent litigation which never materialized were rejected June 1 by a California federal judge (TWiT LLC v. Twitter Inc., No. 18-341, N.D. Calif., 2018 U.S. Dist. LEXIS 92321).
CINCINNATI — The Sixth Circuit U.S. Court of Appeals on May 31 found that a Tennessee federal judge properly concluded that a trademark infringement plaintiff is not entitled to a preliminary injunction barring the band “Trick Pony” from touring under its name (PGP LLC v. TPII LLC, et al., No. 17-6221, 6th Cir., 2018 U.S. App. LEXIS 14315).
ATLANTA — A makeup distributer tells the 11th Circuit U.S. Court of Appeals in a May 24 reply brief that as licensee of the “Kroma” trademark, it has a reasonable interest to protect the mark, thereby establishing its standing to sue reality TV stars the Kardashians for vicarious infringement via a similarly named line of makeup (Kroma Makeup EU LLC v. Kimberly Kardashian, No. 17-14211, 11th Cir.).
WASHINGTON, D.C. — Claiming that an appeals court failed to properly apply controlling precedent to their reverse confusion complaint against Viacom International Inc., the owners of the “Guppie Kid” clothing line in an April 19 petition for certiorari ask the U.S. Supreme Court to reverse a noninfringement ruling in Viacom’s favor (Debbie Rohn, et al. v. Viacom International Inc., et al., No. 17-1460, U.S. Sup.).
SAN JOSE, Calif. — After finding that statements made on a trademark filing service company’s website would not likely mislead consumers, a California federal judge on May 25 granted the company’s request to dismiss claims for violation of California’s unfair competition law (UCL) and the Lanham Act and for false advertising asserted by a law firm, its owner and a trademark search service company (Legalforce RAPC Worldwide, P.C., et al. v. Trademark Information International LLC, et al., No. 17-cv-07354, N.D. Calif., 2018 U.S. Dist. LEXIS 88506).
NEW ORLEANS — A copyright and trademark infringement plaintiff’s effort to establish jurisdiction in Louisiana based upon a defendant’s access of a computer server there was unsuccessful May 29, when a Louisiana federal judge found that it is unclear whether the access was without permission (Future World Electronics LLC v. Results HQ LLC, No. 17-17982, E.D. La., 2018 U.S. Dist. LEXIS 88979).
RICHMOND, Va. — In a May 29 ruling, the Fourth Circuit U.S. Court of Appeals held that a prevailing party under the Lanham Act, 15 U.S.C. § 1117(a), is entitled to an award of attorney fees upon establishing exceptionality by a preponderance of the evidence (Verisign Inc. v. XYZ.com LLC, et al., No. 17-1704, 4th Cir.).
CINCINNATI — A Michigan federal judge’s order denying dismissal of trademark infringement allegations will not be reviewed by the Sixth Circuit U.S. Court of Appeals at this time, the court announced May 23 (In re: MovingSites LLC, No. 18-102, 6th Cir., 2018 U.S. App. LEXIS 13716).
HOUSTON — A Texas federal judge on May 22 awarded a hotel franchisor more than $900,000 on its unopposed motion for damages and attorney fees against a former franchisee that continued to use registered trademarks after its franchise agreement was terminated and now must remit profits during that time under the Lanham Act and state law (Choice Hotels International, Inc. v. Frontier Hotels, Inc., et al., No. 15-2355, S.D. Texas, 2018 U.S. Dist. LEXIS 85914).
NEW ORLEANS — The Fifth Circuit U.S. Court of Appeals on May 22 ruled that a Texas federal judge did not err in granting Viacom International Inc. summary judgment on its allegation that plans to name a restaurant “The Krusty Krab” would represent trademark infringement (Viacom International Inc. v. IJR Capital Investments LLC, No. 17-20334, 5th Cir., 2018 U.S. App. LEXIS 13331).
CHICAGO — Allegations by Becton, Dickinson and Co. that a competitor falsely advertised its medical sharps as the “safest in the world” fail as a matter of law, an Illinois federal judge ruled May 20 (Daniels Sharpsmart Inc. v. Becton, Dickinson and Co., No. 17-6940, N.D. Ill., 2018 U.S. Dist. LEXIS 84314).