WASHINGTON, D.C. — A final determination by the International Trade Commission (ITC) that a trademark covering the midsole design of Converse Inc.’s famed Chuck Taylor All Star shoe is invalid was vacated and remanded Oct. 30 by a divided Federal Circuit U.S. Court of Appeals, which used the opportunity to enumerate a six-factor test for establishing the existence of secondary meaning (Converse Inc. v. International Trade Commission, No. 16-2497, Fed. Cir., 2018 U.S. App. LEXIS 30649).
WASHINGTON, D.C. — The U.S. Supreme Court on Oct. 26 agreed to hear a dispute involving claims by a licensee that the First Circuit U.S. Court of Appeals erred in holding that the licensee’s right to use a trademark and logo “did not survive” rejection of the agreement by the trademark licensor under Section 365(a) of the Bankruptcy Code (Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, U.S. Sup.).
SYRACUSE, N.Y. — A New York federal judge on Oct. 22 granted a franchisor’s motion for a temporary restraining order enjoining defendants from using its registered trade/service marks and operating a computer learning/training center and marketing, promoting, advertising and/or selling computer learning and training services within designated ZIP codes and territories in the greater Syracuse and Albany areas of New York (New Horizons Education Corp., et al. v. Krolak Technology Management of Syracuse, et al., No. 18-01223, N.D. N.Y., 2018 U.S. Dist. LEXIS 180550).
NEW YORK — A New York federal judge did not err in dismissing allegations that Steven Madden Ltd. infringed the trade dress of three styles of shoes, the Second Circuit U.S. Court of Appeals affirmed Oct. 23 (Eliya Inc. v. Steven Madden Ltd., No. 18-831, 2nd Cir., 2018 U.S. App. LEXIS 29824).
LAS VEGAS — A trademark infringement and cybersquatting dispute over a defendant’s use of the www.bearfilms.com domain and “Bear Films” business name will proceed, a Nevada federal judge ruled Oct. 18 (Bear Omnimedia LLC v. Mania Media LLC, No. 17-1478, D. N.V., 2018 U.S. Dist. LEXIS 179021).
WASHINGTON, D.C. — In a Sept. 25 reply brief supporting its petition for certiorari, a one-time trademark licensee asks the U.S. Supreme Court to determine whether the bankruptcy law agreement rejection provision properly terminated its right to use the licensed trademarks (Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, U.S. Sup.).
ORLANDO, Fla. — In an Oct. 10 order, a Florida federal judge partly granted and partly denied a motion to dismiss in a dispute between the operators of a timeshare resort and an entity that purportedly assists timeshare owners in avoiding the terms of their contract (Westgate Resorts Ltd., et al. v. U.S. Consumer Attorneys P.A., et al., No. 18-359, M.D. Fla., 2018 U.S. Dist. LEXIS 173473).
PORTLAND, Ore. — Although voicing concerns over the conduct of counsel for both sides in a trademark infringement case, an Oregon federal judge on Oct. 5 denied a defendant’s request for dismissal as a sanction (Adidas America Inc., et al. v. TRB Acquisitions LLC, No. 15-2113, D. Ore., 2018 U.S. Dist. LEXIS 172602).
ATLANTA — In an Oct 4 ruling, a Georgia federal judge found that an individual and his recently incorporated “United Grand Lodge” must face trademark infringement allegations over their adoption of the acronym “A.F.A.Y.M.” and the term “Ancient Free and Accepted York(rite) Masons” (National Grand Lodge v. United Grand Lodge GA AF & AYM Inc., et al., No. 17-2582, N.D. Ga., 2018 U.S. Dist. LEXIS 171617).
WASHINGTON, D.C. — Although agreeing with the Trademark Trial and Appeal Board (TTAB) that proposed trademarks for “Corn Thins” and “Rice Thins” are descriptive and have not acquired distinctiveness, the Federal Circuit U.S. Court of Appeals in an unsealed decision released Oct. 4 found that the TTAB “improperly narrowed the genus of the goods at issue” when rejecting a challenge to the registrations by Frito-Lay North America Inc. (Real Foods Pty Ltd. v. Frito-Lay North America Inc., Nos. 2017-1959, -2009, Fed. Cir.).
CINCINNATI — Upon de novo review, a panel of the Sixth Circuit U.S. Court of Appeals on Sept. 20 agreed with a Tennessee federal judge that consumers are unlikely to be confused between trademarks for “The Row” and “Whiskey Row” (The Row Inc. v. Rooke LLC, No. 18-5068, 6th Cir., 2018 U.S. App. LEXIS 27126).
NEW YORK — Efforts by Beyoncé Giselle Knowles-Carter and her trademark holding company to obtain partial summary judgment on allegations of infringement stemming from the sale of merchandise under the “Feyoncé” brand name were unsuccessful Oct. 1, when a New York federal judge found that “a rational jury might or might not conclude that the pun here is sufficient to dispel any confusion among the purchasing public” (Beyoncé Giselle Knowles-Carter, et al. v. Feyoncé Inc., et al., No. 16-2532, S.D. N.Y., 2018 U.S. Dist. LEXIS 169602).
WASHINGTON, D.C. — In its Oct.1 orders list, the U.S. Supreme Court announced that it will not review appellate rulings in various trademark disputes that center on, among other things, the ability of a district court to grant a global injunction and the “expressive work” exception to Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a)(1)(A).
SAN FRANCISCO — A California federal judge on Sept. 5 denied a motion for leave to seek reconsideration of an order denying a second motion for class certification in a lawsuit over the alleged use of former professional football players’ likenesses in the “Madden NFL” video game by Electronic Arts Inc. (EA), opining that individual issues predominate (Michael E. Davis, et al. v. Electronic Arts Inc., No. 10-3328, N.D. Calif.).
DALLAS — An eBay seller accused of selling out-of-date cosmetic and skin care products who was named as the defendant in a trademark suit by the products’ maker has failed to show that a defendant can certify a class of defendants on a counterclaim under Federal Rule of Civil Procedure 23, a Texas federal judge ruled Sept. 17 (Mary Kay Inc. v. Gerald Matthew Reibel, et al., No. 17-2634, N.D. Texas, 2018 U.S. Dist. LEXIS 157579).
BOSTON — A Maine federal judge’s determination that operation of a “highly interactive website” that sells cloud-based services combined with an effort to trademark “Scrutinizer” within the United States constitutes a prima facie showing of personal jurisdiction was affirmed Sept. 13 by the First Circuit U.S. Court of Appeals (Plixer International Inc. v. Scrutinizer GmbH, No. 18-1195, 1st Cir., 2018 U.S. App. LEXIS 25981).
WASHINGTON, D.C. — In a Sept. 7 petition for certiorari, the federal government asserts that the Federal Circuit U.S. Court of Appeals erroneously deemed the “immoral and scandalous marks” provision of the Lanham Act, 15 U.S.C. § 1052(a), (Section 2[a]), unconstitutional (Andrei Iancu, Director, United States Patent and Trademark Office, v. Eric Brunetti, No. 18-302, U.S. Sup.).
WASHINGTON, D.C. — In a Sept. 9 brief opposing a former licensee’s petition of certiorari, a trademark holder tells the U.S. Supreme Court that an appeals court correctly found that its rejection of the parties’ distribution agreement under a Chapter 11 bankruptcy provision ended the licensee’s trademark rights under the agreement (Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, U.S. Sup.).
SAN FRANCISCO — Although affirming a California federal judge’s finding that it possesses subject matter jurisdiction over a declaratory judgment action involving the right to use the “Delphix” trademark, a divided Ninth Circuit U.S. Court of Appeals on Sept. 11 reversed the same judge’s determination that personal jurisdiction over a defendant is lacking (Delphix Corp. v. Embarcadero Technologies Inc., No. 16-16572, 9th Cir., 2018 U.S. App. LEXIS 25721).
BOSTON — The Massachusetts Supreme Judicial Court on Sept. 12 found that a lower court erred in concluding that the family of deceased 1960 Olympic marathon gold medalist Abebe Bikila did not actually use the name Bikila as an advertising idea, reversing the lower court’s ruling in favor of insurers in a coverage dispute over a lawsuit challenging the propriety of a shoe company's use of the runner's name (Holyoke Mutual Insurance Co. in Salem, et al. v. Vibram USA Inc., et al., No. SJC-12401, Mass. Sup., 2018 Mass. LEXIS 568).