WILMINGTON, Del. — In a Dec. 4 holding, a federal judge in Delaware granted New Balance Athletics Inc. summary judgment on allegations the domestic distributor of Chinese counterfeit New Balance sneakers is liable for trademark infringement and dilution (New Balance Athletics Inc. v. USA New Bunren International Co. Ltd., No. 17-1700, D. Del., 2019 U.S. Dist. LEXIS 208759).
PITTSBURGH — A trademark infringement counterclaimant on Dec. 3 won a preliminary injunction barring a false advertising plaintiff from prosecuting a petition to cancel “The Big Switch” and “Big Switch” trademarks with the U.S. Patent and Trademark Office (USPTO) (Mazcon v. BEG Group LLC, et al., No. 19-40, W.D. Pa., 2019 U.S. Dist. LEXIS 207942).
CHARLOTTE, N.C. — A federal judge in North Carolina held Nov. 26 that an insurance policy’s intellectual property exclusion “unequivocally bars coverage” for an underlying trademark lawsuit brought against the insured, granting the insurer’s motion for summary judgment (Direct Technologies International, Inc. v. Maxum Indemnity Co., No. 19-81, W.D. N.C., 2019 U.S. Dist. LEXIS 205158).
GREENSBORO, N.C. — Sportswear giant Nike Inc. on Dec. 2 was enjoined from use of the phrase “Sport Changes Everything,” after a North Carolina federal judge found that the owner of the “Change Everything” and “Running Changes Everything” trademarks is likely to succeed on its allegation of infringement (Fleet Feet Inc. v. Nike Inc., No. 19-885, M.D.N.C., 2019 U.S. Dist. LEXIS 207068).
CHARLESTON, S.C. — In a Nov. 26 holding, a federal judge in South Carolina found that his August 2019 preliminary injunction must be modified to require a plaintiff to post bond (George Sink P.A. Injury Lawyers v. George Sink II Law Firm LLC, et al., No. 19-1206, D. S.C., 2019 U.S. Dist. LEXIS 204840).
WASHINGTON, D.C. — In a Nov. 7 brief, houseware maker Bodum USA Inc. tells the U.S. Supreme Court that a competitor’s petition for certiorari in a dispute over the trade dress of a Bodum French press coffee maker should be denied because the petitioner misstates controlling case law and is attempting to rehash the trial court’s ruling against it (A Top New Casting Inc. v. Bodum USA Inc., No. 19-462, U.S. Sup.).
SAN FRANCISCO — In a Nov. 25 order, a federal judge in California rejected a defendant’s request for dismissal of allegations that it infringed the “Steeped Coffee” trademark (Steeped Inc. v. NuZee Inc., No. 19-3763, N.D. Calif., 2019 U.S. Dist. LEXIS 203545).
WASHINGTON, D.C. — In a Nov. 20 unpublished ruling, the Third Circuit U.S. Court of Appeals upheld the rejection by a federal judge in New Jersey of allegations that the owner of a medical publishing company infringed 16 trademarks belonging to a family member (Engage Healthcare Communications LLC, et al. v. Intellisphere LLC, et al., No. 19-1017, 3rd Cir., 2019 U.S. App. LEXIS 34515).
LOS ANGELES — A request by Marc Jacobs International LLC for dismissal of allegations that it infringed the copyrighted “Happy Face” smiley face design and logo made famous by the rock band Nirvana was denied Nov. 8 by a California federal judge, in an in-chambers ruling entered Nov. 12 (Nirvana LLC v. Mark Jacobs International LLC, et al., No. 18-10743, C.D. Calif.).
WASHINGTON, D.C. — The defendant in a long-running dispute over the “Get Lucky” clothing trademark was appropriately barred from raising a defense it could have pursued in a previous suit between the same parties, a clothing maker tells the U.S. Supreme Court in a Nov. 12 respondent brief, asserting that res judicata applied because the causes of action were the same (Lucky Brand Dungarees Inc., et al v. Marcel Fashion Group Inc., No. 18-1086, U.S. Sup.).
CHICAGO — In a Nov. 7 ruling, the Seventh Circuit U.S. Court of Appeals for the first time adopted and applied the U.S. Supreme Court’s standard for awarding attorney fees in patent cases to requests for fees under Section 1117(a) of the Lanham Act, 15 U.S.C. § 1117(a) (LHO Chicago River LLC v. Joseph Perillo, et al., No. 19‐1848, 7th Cir., 2019 U.S. App. LEXIS 33463).
DENVER — A panel of the 10th Circuit U.S. Court of Appeals on Nov. 7 found that a federal judge in Utah erred in ordering a franchisor to resume its relationship with a former franchisee, including the revival of a disputed trademark license agreement (TLA) (Mrs. Fields Franchising LLC v. MFGPC Inc., Nos. 19-4046, -4063, 10th Cir., 2019 U.S. App. LEXIS 33521).
WASHINGTON, D.C. — The U.S. Supreme Court on Nov. 8 announced that it will take on a dispute between the U.S. Patent and Trademark Office (PTO) and a travel website over the significance of adding a top-level domain (TLD) such as “.com” to an otherwise generic, unregistrable trademark (U.S. Patent and Trademark Office, et al. v. Booking.com B.V., No. 19-46, U.S. Sup.).
CAMDEN, N.J. — Following a one-day bench trial in May 2019, a federal judge in New Jersey on Nov. 4 ruled in favor of a defendant accused of trademark infringement in connection with a decision to revive the name “Il Portico” for its restaurant (Fife & Drum Inc. v. DelBello Enterprises, No. 17-3676, D. N.J., 2019 U.S. Dist. LEXIS 190582).
RICHMOND, Va. — In an Oct. 30 ruling, the Fourth Circuit U.S. Court of Appeals found no error in a Virginia federal judge’s determination that allegations of copyright and trademark infringement against a spinoff masonic organization fail as a matter of law (United Supreme Council v. United Supreme Council, No. 18-2034, 4th Cir., 2019 U.S. App. LEXIS 32478).
SANTA ANA, Calif. — Finding that substantial questions exist over whether personal jurisdiction can be exercised over the Cyprus-based operator of a “sugar daddy” dating website accused of trademark infringement, a California federal judge on Oct. 23 ordered the parties to engage in jurisdictional discovery prior to the resolution of a pending summary judgment motion (Reflex Media Inc., et al. v. Apiriliaco Ltd., et al., No. 8:16-cv-00795, C.D. Calif.).
SAN ANTONIO — A water filtering company that provides services to hydraulic fracturing companies on Oct. 4 filed a lawsuit in Texas federal court against two companies, seeking injunctive and monetary relief for trade secret misappropriation and trademark infringement (WaterFleet LLC v. TanMar Rentals LLC, et al., No. 19-1190, W.D. Texas).
NEW YORK — The Oneida Indian Nation of New York lacks constitutional standing to sue the Department of the Interior (DOI) over the agency’s decision to allow the Oneida Tribe of Indians of Wisconsin to change its name to the Oneida Nation, the Second Circuit U.S. Court of Appeals affirmed Oct. 21 (Oneida Indian Nation v. U.S. Department of the Interior, No. 18-2607, 2nd Cir., 2019 U.S. App. LEXIS 31501).
CHARLOTTE, N.C. — In what he said “appears to be a matter of first impression in this Circuit and perhaps nationally,” a North Carolina federal judge on Oct. 21 found that a dissatisfied trademark applicant who appeals an adverse ruling by the Trademark Trial and Appeal Board (TTAB) to the Federal Circuit U.S. Court of Appeals waives the right to also seek review in federal district court of subsequently issued TTAB decisions involving the same application (Vanguard LLC, et al. v. Frito-Lay North America Inc., No. 17-652, W.D. N.C., 2019 U.S. Dist. LEXIS 182242).
SAN DIEGO — A federal judge in California on Oct. 21 found that a plaintiff cannot prove that two laboratories chose to use a defendant’s thyroid assay because it was briefly marketed as thyroid stimulating immunoglobin (TSI) only; the same day, however, the judge denied the defendant’s request for attorney fees (Quidel Corporation v. Siemens Medical Solutions USA Inc., No. 16-3059, S.D. Calif., 2019 U.S. Dist. LEXIS 181874).