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).
BALTIMORE — A federal judge in Maryland on Oct. 10 converted a temporary restraining order (TRO) to a preliminary injunction, barring a former franchisee from continued use of a franchisor’s trademarks while the parties’ breach of contract and infringement case proceeds (ICENY USA LLC v. M&M’s LLC, et al., No. 19-2418, D. Md., 2019 U.S. Dist. LEXIS 176999).
TEXARKANA, Texas — After seeing their motions to dismiss and transfer denied, an antitrust lawsuit brought against them by an online travel agency (OTA), the defendant hotel chains each filed answers in Texas federal court on Oct. 11, denying any conspiracy and leveling counterclaims for trademark infringement against TravelPass Group LLC (TravelPass Group LLC, et al. v. Caesars Entertainment Corp., et al., No. 5:18-cv-00153, E.D. Texas).
MIAMI — In an Oct. 9 order, a federal judge in Florida partially granted a motion to dismiss in part filed by counterdefendants in a trademark infringement lawsuit, ruling, in particular, that counterplaintiffs in the action have failed to sufficiently state their counterclaim for trade secret misappropriation under Florida trade secret law (VVIG Inc. v. Henry Alvarez, et al., No. 18-23109, S.D. Fla., 2019 U.S. Dist. LEXIS 175304).
CINCINNATI — A federal judge in Ohio on Oct. 8 ruled that a medical device maker has sufficiently shown that personal jurisdiction exists over its claims in a trade secret misappropriation lawsuit against former business associates based in China under Ohio’s long-arm statute and the due process clause of the Fourth Amendment to the U.S. Constitution (AtriCure Inc. v. Dr. Jian Meng, et al., No. 19-0054, S.D. Ohio, 2019 U.S. Dist. LEXIS 174499).
ROANOAKE, Va. — Franchisees who continued using their former franchisor’s trademarks after their franchise agreement was terminated must pay $3,094,066 in connection with the infringement, a Virginia federal judge ruled Sept. 30 (Choice Hotels International Inc. v. A Royal Touch Hospitality LLC, et al., No. 17-381, W.D. Va., 2019 U.S. Dist. LEXIS 167904).
TAMPA, Fla. — In a blow to Sream Inc., exclusive licensee of the “RooR” trademark, a federal judge in Florida on Oct. 7 found that only a registrant or its assignee has standing to sue for infringement (RooR International B.V., et al. v. Good Timez III LLC, et al., No. 19-439, M.D. Fla., 2019 U.S. Dist. LEXIS 173283).
CINCINNATI — A panel of the Sixth Circuit U.S. Court of Appeals on Oct. 7 vacated a Michigan federal judge’s grant of summary judgment that two defendants are not liable for copyright infringement because the copyrights at issue were not unambiguously transferred in a 2013 asset sale (Evoqua Water Technologies LLC v. M.W. Watermark LLC, et al., Nos. 18-2397, 18-2398, 6th Cir., 2019 U.S. App. LEXIS 30023).
SAN FRANCISCO — A California federal judge did not err in granting $518,817 in attorney fees to a vineyard accused of infringing the trade dress of Sazerac Co. Inc.’s “Buffalo Trace” bourbon, the Ninth Circuit U.S. Court of Appeals ruled Oct. 4 (Sazerac Company Inc. v. Fetzer Vineyards Inc., Nos. 17-16916, 17-17511, 9th Cir., 2019 U.S. App. LEXIS 29728).
WASHINGTON, D.C. — A purported split among the circuit courts of appeal as to what constitutes fraud on the U.S. Patent and Trademark Office (PTO) will not be resolved by the U.S. Supreme Court, which on Oct. 7 denied a petition for certiorari by a trademark holder (B&B Hardware Inc. v. Hargis Industries Inc., et al., No. 19-48, U.S. Sup.).
WASHINGTON, D.C. — A fastener manufacturer tells the U.S. Supreme Court in its Sept. 13 opening merits brief that the Lanham Act does not require a trademark holder to prove that a defendant acted willfully in infringing its mark, arguing that the Federal Circuit U.S. Court of Appeals incorrectly read this provision into the statute (Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233, U.S. Sup.).
NEW YORK — Allegations by an artist that two individual defendants falsely attributed her name as the creator of an oil painting will proceed in New York federal court, according to an Oct. 2 ruling (Annamarie Trombetta v. Marie Novocin, et al., No. 18-993, S.D. N.Y., 2019 U.S. Dist. LEXIS 171228).
NEW YORK — A panel of the Second Circuit U.S. Court of Appeals on Sept. 30 found no error in a New York federal magistrate judge’s sua sponte dismissal of allegations that a convenience store infringed the “Deli Express” trademark (E.A. Sween Company v. A&M Deli Express Inc., No. 18-2998, 2nd Cir., 2019 U.S. App. LEXIS 29313).
KANSAS CITY, Mo. — In a Sept. 27 ruling, a federal judge in Missouri rejected a lawsuit by a jewelry company that seeks a declaration that it is the rightful owner of the “Hallmark Diamonds” and “Hallmark Rings” trademarks (Hallmark Industries Inc. v. Hallmark Licensing LLC, No. 18-236, W.D. Mo., 2019 U.S. Dist. LEXIS 166665).
COLUMBUS, Ohio — A couple and their homebuilder won dismissal Sept. 24 of allegations of unfair competition but will face copyright claims levied in connection with their home design, a federal judge in Ohio ruled (W.H. Midwest LLC v. A.D. Baker Homes, No. 18-1387, S.D. Ohio, 2019 U.S. Dist. LEXIS 163108).
CINCINNATI — In reversing and remanding a lower federal court, a majority of the Sixth Circuit U.S. Court of Appeals on Sept. 25 found that an insurance policy’s “dishonest acts” exclusion does not bar coverage for a steel products producer’s lawsuit alleging that a trade association published false statements about its products (Evanston Insurance Co. v. Certified Steel Stud Association, Inc., et al., Nos.18-3406 and 3407, 6th Cir., 2019 U.S. App. LEXIS 28937).
ATLANTA — A Georgia federal judge’s decision to sanction two corporate officers and their company for continuing to sell the “Gorilla Gym” playset following a permanent injunction barring further use of the “Gorilla” trademark was affirmed Sept. 24 by the 11th Circuit U.S. Court of Appeals (PlayNation Play Systems Inc. v. Velex Corporation, et al., No. 18-12828, 11th Cir., 2019 U.S. App. LEXIS 28810).
HARTFORD, Conn. — Allegations that Armor All/STP Products Co. and others infringed a competitor’s trademark, engaged in false advertising and conspired to maintain a monopoly in the market for value-added automotive air conditioning (AC) recharge kits will proceed, a Connecticut federal judge ruled Sept. 23 (TSI Products Inc. v. Armor All/STP Products Company, No. 17-1131, D. Conn., 2019 U.S. Dist. LEXIS 161795).
CHICAGO — A federal judge in Illinois on Sept. 20 held that insureds failed to comply with their insurance policy’s requirement of timely notifying the insurer of underlying claims brought by the National Hockey League, granting the insurer’s cross-motion for summary judgment (Frankenmuth Mutual Insurance Company v. The Hockey Cup, LLC, et al., No. 18-8142, N.D. Ill., Eastern Div., 2019 U.S. Dist. LEXIS 160278).