DENVER — A Utah federal judge’s summary judgment of no likelihood confusion in a dispute over a fleur-de-lis logo used on vape products was reversed and remanded by the 10th Circuit U.S. Court of Appeals on Aug. 27 (Affliction Holdings LLC v. Utah Vap or Smoke LLC, No. 18-4146, 10th Cir., 2019 U.S. App. LEXIS 25760).
WASHINGTON, D.C. — In an Aug. 21 reply brief supporting its petition for certiorari, the U.S. Patent and Trademark Office (PTO) argues to the U.S. Supreme Court that adding a top-level domain (TLD) to an otherwise generic term does not serve to make that trademark nongeneric and registrable (U.S. Patent and Trademark Office, et al. v. Booking.com B.V., No. 19-46, U.S. Sup.).
FORT LAUDERDALE, Fla. — A federal judge in Florida on July 25 administratively closed a trademark infringement lawsuit brought by a tax service franchisor based on a mediation report that indicated that the parties reached a settlement (JTH Tax, Inc., et al. v. Jesus Abikarram, et al., No. 19-60328, S.D. Fla.).
DENVER — A federal judge in Colorado on Aug. 20 found that the Rogers v. Grimaldi test “needs adapting” in view of “legitimate considerations brought out in subsequent cases” in which an alleged infringer claims a First Amendment right to use a disputed trademark (Marty Stouffer, et al. v. National Geographic Partners LLC, et al., No. 18-3127, D. Colo., 2019 U.S. Dist. LEXIS 140947).
PASADENA, Calif. — The Ninth Circuit U.S. Court of Appeals heard oral arguments on Aug. 12 between Allstate Insurance Co. and Kia Motors America Inc., with the insurer appealing a trial court’s finding that Kia’s “Drive Wise” trademark for its in-car advance driver assistance system (ADAS) does not infringe Allstate’s similarly named “Drivewise” safety product (Allstate Insurance Co. v. Kia Motors America Inc, et al., No. 18-55164, 9th Cir.).
WASHINGTON, D.C. — A trademark defendant that prevailed on infringement claims against it asks the U.S. Supreme Court in an Aug. 7 brief to deny the second petition for certiorari by the owner of the disputed “Sealtight” trademark, arguing that there is no split among the circuit courts on the standard for fraud on the U.S. Patent and Trademark Office (PTO), which defeated the petitioner’s claims (B&B Hardware Inc. v. Hargis Industries Inc., et al., No. 19-48, U.S. Sup.).
SAN DIEGO — A federal judge in California on Aug. 8 refused to dismiss a health food company’s trademark infringement complaint against its competitor, finding that the claims for federal trademark infringement, federal unfair competition and false designation of origin, violation of California unfair competition law (UCL) and common-law trademark infringement are plausible (Kip's Nut-Free Kitchen, LLC v. Kips Dehydrated Foods, LLC, et al., No. 19-00290, S.D. Calif., 2019 U.S. Dist. LEXIS 134654).
SACRAMENTO, Calif. — A federal judge in California on Aug. 13 denied Monster Energy Co.’s motion for summary judgment as to its unfair competition claims for the same reasons it denied summary judgment on the Lanham Act claims in its trademark dispute with a competitor (Monster Energy Company v. Beastup LLC, No. 17-01605, E.D. Calif., 2019 U.S. Dist. LEXIS 136772).
SAN FRANCISCO — In an Aug. 7 order, a California federal judge found that Twitch Interactive Inc. had shown good cause to conduct early discovery to identify anonymous defendants who posted objectionable content on its video-streaming platform by subpoenaing internet service providers (ISPs) and other companies to obtain information to identify the Doe defendants for the purpose of pursuing trademark infringement and other claims against them (Twitch Interactive Inc. v. John and Jane Does 1 through 100, No. 3:19-cv-03418, N.D. Calif., 2019 U.S. Dist. LEXIS 132842).
CHARLESTON, S.C. — A South Carolina attorney was temporarily enjoined from using his name online or elsewhere as a trademark related to his legal services on Aug. 9, when a South Carolina federal judge determined that his father, who has the same name and also practices law, was likely to succeed on trademark infringement and cybersquatting claims against his son (George Sink, P.A. Injury Lawyers v. George Sink II Law Firm LLC, et al., No. 2:19-cv-01206, D. S.C., 2019 U.S. Dist. LEXIS 134819).
WASHINGTON, D.C. — An opposition to a trademark application for a stylized “H” was correctly sustained by the Trademark Trial and Appeal Board, the Federal Circuit U.S. Court of Appeals ruled Aug. 1 (Hylete LLC v. Hybrid Athletics LLC, No. 17-2057, Fed. Cir., 2019 U.S. App. LEXIS 22911).
ATLANTA — Finding no reversible error, the 11th Circuit U.S. Court of Appeals on Aug. 7 left intact a jury’s verdict that the owners of a discount mall who subleased space to sellers of counterfeit eyewear are contributorily liable for trademark infringement (Luxottica Group S.p.A. v. Airport Mini Mall LLC, et al., No. 18-10157, 11th Cir., 2019 U.S. App. LEXIS 23555).
SAN FRANCISCO — A private label manufacturer for Wal-Mart Inc. recently asked the Ninth Circuit U.S. Court of Appeals to reverse a lower federal court’s ruling in favor of a commercial general liability insurer in its lawsuit seeking coverage for an underlying trademark infringement action brought against Wal-Mart, arguing that disputed issues of material fact preclude a summary judgment ruling (Hybrid Promotions LLC v. Federal Insurance Co., No. 18-56658, 9th Cir.).
CHICAGO — In an Aug. 2 ruling, the Seventh Circuit U.S. Court of Appeals found no error in an Illinois federal judge’s determination that a rebranding by The Gatorade Co. to “Gatorade: The Sports Fuel Company” is a fair use of the “sports fuel” trademark (SportFuel Inc. v. PepsiCo Inc., et al., No. 18-3010, 7th Cir., 2019 U.S. App. LEXIS 23207).
RICHMOND, Va. — The Fourth Circuit U.S. Court of Appeals on Aug. 1 reversed and remanded a lower court’s ruling that its businessowners liability and commercial umbrella insurance policies’ prior publication exclusion excused an insurer’s duty to defend an alleged advertising injury as to the insured's use of a trademark, finding that the insured’s “prior and subsequent publications differ in substance” (Pennsylvania National Mutual Casualty Insurance Co. v. Beach Mart, Inc., No. 18-1285, 4th Cir., 2019 U.S. App. LEXIS 22972).
PHOENIX — Best Western International Inc. on July 30 succeeded in its effort to obtain dismissal of allegations by a former franchisee that the hotel chain engaged in discrimination, when a federal judge in Arizona deemed the claim conclusory and inadequately supported (Best Western International Inc. v. Twin City Lodging LLC, No. 18-3374, D. Ariz., 2019 U.S. Dist. LEXIS 126487).
NEW YORK — Countering arguments by Costco Wholesale Corp. that it used the term “Tiffany” as a generic descriptor on engagement rings, Tiffany and Co. argues to the Second Circuit U.S. Court of Appeals in a July 24 appellee brief that the retailer intentionally tried to mislead customers as to the source of inferior rings (Tiffany and Company, et al. v. Costco Wholesale Corp., Nos. 17-2798, 19-338 and 19-404, 2nd Cir.).
MIAMI — Adopting a magistrate’s report and recommendation, a Florida federal judge on July 26 found that an online adult entertainment company failed to establish any likelihood of confusion between its “FyreTV” pornographic service and the “Fire TV” product offered by Amazon.com Inc., granting the internet retailer’s motion for summary judgment on the trademark infringement claims against it (Wreal, LLC v. Amazon.com, Inc., No. 1:14-cv-21385, S.D. Fla., 2019 U.S. Dist. LEXIS 125890).
SAN FRANCISCO — In a July 29 ruling, the Ninth Circuit U.S. Court of Appeals upheld a grant of summary judgment by a federal judge in Washington who rejected allegations that Whole Foods Market Services Inc. infringed the “Eat Right” trademark (Eat Right Foods Ltd. v. Whole Foods Market Services Inc., No. 18-35473, 9th Cir., 2019 U.S. App. LEXIS 22428).
ST. LOUIS — Efforts by PetSmart Inc. to obtain dismissal of allegations of trade dress infringement were unsuccessful on July 26, when a federal judge in Missouri found that online sales of PetSmart’s “Great Choice” kitty litter could be actionable (Nestle Purina Petcare Company v. PetSmart Inc., No. 18-1232, E.D. Mo., 2019 U.S. Dist. LEXIS 125195).