RICHMOND, Va. — A North Carolina federal judge’s summary judgment that Walmart Stores Inc. infringed Variety Stores Inc.’s “The Backyard” trademark was premised on an erroneous finding of likely confusion, the Fourth Circuit U.S. Court of Appeals ruled April 24, vacating a subsequent $32.5 million award of disgorged profits (Variety Stores Inc. v. Walmart Stores Inc., No. 17-1503 and 17-1644, 4th Cir., 2018 U.S. App. LEXIS 10317).
NEW YORK — A New York federal judge on April 18 ordered a lighting design company and its owner to pay Restoration Hardware Inc. $1.3 million in statutory damages, following entry of a default judgment on allegations of copyright infringement and false designation of origin (Restoration Hardware Inc. v. Lighting Design Wholesalers Inc., No. 17-5553, S.D. N.Y., 2018 U.S. Dist. LEXIS 65099).
CHARLESTON, S.C. — A South Carolina federal judge on April 17 granted leave to amend a complaint to add “constituent organizations” acting under the leadership of a bishop accused of false advertising and trademark infringement under the Lanham Act, 15 U.S.C. § 1051 et seq. (Bishop Charles G. vonRosenberg, et al., v. Bishop Mark J. Lawrence, et al., No. 13-587, D. S.C., 2018 U.S. Dist. LEXIS 63350).
LOS ANGELES — After a hot sauce maker failed to respond to another hot sauce company’s claims for trademark infringement and violation of California’s unfair competition law (UCL), a California federal judge on April 16 entered a default judgment in favor of the company (Tapatio Foods LLC v. Ingrid Veronica Ponce, et al., No. 17-7530, C.D. Calif., 2018 U.S. Dist. LEXIS 31864).
SEATTLE — An inventor on April 10 moved in a Washington federal court to dismiss counterclaims asserted against him in which a company and its owners seek declarations that they did not violate California’s unfair competition law (UCL), the Lanham Act and other laws in relation to allegedly copied patented designs (Elliot Kremerman v. Open Source Steel, LLC, et al., No. 2:17-cv-953, W.D. Wash., 2017 U.S. Dist. LEXIS 171735).
SAN FRANCISCO — Although dismissing allegations by one plaintiff that LegalZoom.com Inc. violated the Lanham Act, 15 U.S.C. § 1051 et seq., when it advertised itself as a non-practicing legal entity, a California federal judge on April 11 stayed identical claims by a co-plaintiff, in view of an arbitration agreement between the parties (LegalForce RAPC, et al. v. LegalZoom Inc., No. 17-7194, N.D. Calif., 2018 U.S. Dist. LEXIS 60986).
SAN FRANCISCO — The former bassist for Ratt defends his ownership rights in the band’s trademarks in an April 6 cross-appellant brief, asking the Ninth Circuit U.S. Court of Appeals to affirm a trial court’s finding that the purported transfer of the marks’ ownership was ineffective (WBS Inc. v. Juan Croucier, et al., No. 17-55973 and 17-56009, 9th Cir.).
MIAMI — In two orders issued April 6, a Florida federal judge largely denied a defendant summary judgment on allegations of trademark misuse but also reconsidered her March 2 ruling that barred the defendant from seeking cancellation of the trademark in question on grounds of confusing similarity with two other previously registered marks (Royal Palm Properties LLC v. Pink Palm Properties LLC, No. 17-80476, S.D. Fla., 2018 U.S. Dist. LEXIS 58997).
SAN FRANCISCO — A California federal magistrate judge on April 4 granted two defendants summary judgment on allegations that their use of a former astronaut’s name, title, photo and voice in an advertisement without his permission represented a negligent and intentional infliction of emotional distress (Colonel David Randolph Scott v. Citizen Watch Company of America Inc., et al., No. 17-436, N.D. Calif., 2018 U.S. Dist. LEXIS 57672).
SAN FRANCISCO — A California federal judge did not abuse his discretion in refusing to declare a trademark dispute between operators of Thai restaurants in California “exceptional” under the Lanham Act, 15 U.S.C. § 1117(a), the Ninth Circuit U.S. Court of Appeals ruled March 30 (Tritaporn Sirisup and Sirisup Inc. v. It’s Thai LLC, et al., No. 16-55875, 9th Cir., 2018 U.S. App. LEXIS 8119).
DENVER — The Tenth Circuit U.S. Court of Appeals on March 21 heard arguments from the parties in a dispute over U.S. rights to the “DermaPen” trademark, with arguments focusing on whether a trial court properly entered default judgment against the underlying defendants for failure to comply with a court order requiring them to retain counsel (Steve Marshall v. Derma Pen LLC, No. 17-4096, 10th Cir.).
SAN DIEGO — Although agreeing with a defendant that allegations of false designation of origin and false advertising under the Lanham Act, 15 U.S.C. §§ 1125(a)(1)(A-B), are inadequately pleaded pursuant to Rule 9(b) of the Federal Rules of Civil Procedure, Fed. R. Civ. P. 9(b), a California federal judge on March 28 stopped short of applying the heightened pleading standard to a related claim for trademark infringement (Julian Bakery Inc. v. Healthsource International Inc., No. 16-2594, S.D. Calif., 2018 U.S. Dist. LEXIS 52248).
WASHINGTON, D.C. — A September 2017 final order by the Trademark Trial and Appeal Board that turned away Omaha Steaks International Inc.’s opposition to a trademark application for “Greater Omaha Providing The Highest Quality Beef” is at the center of a dispute before the Federal Circuit U.S. Court of Appeals (Omaha Steaks International Inc. v. Greater Omaha Packing Co. Inc., No. 18-1152, Fed. Cir.).
DETROIT — Although indicating his disagreement with a defendant’s interpretation of the relevant case law, a Michigan federal judge on March 27 nonetheless certified for interlocutory appeal his earlier ruling that the defendant — the operator of a consumer-based review website — can be held contributorily liable for alleged direct trademark infringement (Reliable Carriers Inc. v. MovingSites LLC, No. 17-10971, E.D. Mich., 2018 U.S. Dist. LEXIS 49904).
CHICAGO — In a March 26 ruling, an Illinois federal judge deemed the “capsule” trademark for use in connection with “cases specifically adapted for protection and storage of consumer electronics, namely, cellular phones and mobile media players” merely descriptive and lacking secondary meaning (Uncommon LLC v. Spigen Inc., No. 15-10897, N.D. Ill., 2018 U.S. Dist. LEXIS 48806).
ATLANTA — A decision by a Florida federal judge to dismiss, on res judicata grounds, allegations of copyright infringement and violations of the Lanham Act, 15 U.S.C. § 1125 et seq., was not erroneous, the 11th Circuit U.S. Court of Appeals ruled March 22 (Eric Ferrier v. James V. Atria, No. 17-11261, 11th Cir., 2018 U.S. App. LEXIS 7467).
CINCINNATI — A Michigan federal judge did not err in granting summary judgment to Coach Services Inc. and others or in awarding statutory damages and a permanent injunction in a dispute over counterfeit Coach purses and wallets, the Sixth Circuit U.S. Court of Appeals ruled March 15 (Coach Services Inc., et al. v. Source II Inc., et al., No. 17-1546, 6th Cir., 2018 U.S. App. LEXIS 6398).
ATLANTA — The 11th Circuit U.S. Court of Appeals on March 13 found that a karaoke disc jockey’s display of the “Sound Choice” service mark as part of his karaoke accompaniment tracks is unlikely to confuse consumers into believing that the DJ is associated or affiliated with the mark owner (Phoenix Entertainment Partners LLC v. Casey Road Food and Beverage LLC, et al., No. 17-13043, 11th Cir., 2018 U.S. App. LEXIS 6486).
SAN FRANCISCO — Disputing that it infringed the trademark of an American “sugar daddy” website operator, a Cyprus-based firm argues in a March 9 reply in the Ninth Circuit U.S. Court of Appeals that a trial court’s entry of default judgment against it should be vacated for improper service (Reflex Media Inc. v. Apiriliaco Ltd., et al., No. 17-55505, 9th Cir.).
LOS ANGELES — A California jewelry brand on March 9 sued numerous companies, asserting claims for trademark infringement and violation of California’s unfair competition law (UCL), alleging that they are making and selling imitations of its jewelry pieces (Zenga Inc. v. K3 Jewelry, et al., No. 2:18cv1983, C.D. Calif.).