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).
SAN FRANCISCO — The Ninth Circuit U.S. Court of Appeals on July 7 found no abuse of discretion in a California federal judge’s entry of preliminary injunctive relief in a dispute over the “GRAM” trademark for use in connection with digital currency (Telegram Messenger Inc. v. Lantah LLC, No. 18-16695, 9th Cir., 2019 U.S. App. LEXIS 21158).
RICHMOND, Va. — A Maryland federal judge erred in entering judgment against the president of a corporation that infringed the “Life Technologies” trademark where the individual was not named as a defendant “or otherwise brought into the case by service of process,” the Fourth Circuit U.S. Court of Appeals ruled July 24 (Life Technologies Corp. v. Krishnamurthy Govindarai, No. 16-1803, 4th Cir., 2019 U.S. App. LEXIS 22081).
SAN JOSE, Calif. — A federal judge in California issued a permanent injunction against a former Baskin-Robbins franchisee on July 16 and ordered him to pay approximately $125,000 in damages and interest for breaching the franchise agreement, trademark infringement and unfair competition (Baskin-Robbins Franchising LLC, et al. v. Alan A. Chun, No. 18-cv-05476-BLF, N.D. Calif, 2019 U.S. Dist. LEXIS 118457).
BALTIMORE — A federal judge in Maryland on July 18 found that jurisdiction is lacking over the owner of a trademark for “ICAN” in a declaratory judgment action filed by Under Armour Inc. (Under Armour Inc. v. Kelsey Battle, No. 17-3223, D. Md., 2019 U.S. Dist. LEXIS 119543).
ANN ARBOR, Mich. — A federal judge in Michigan on July 16 ordered a preliminary injunction to prevent a former franchisee from continuing to operate four restaurants branded as Little Caesars, saying the franchisor “would suffer substantial reputational harm” without the ban; the judge also denied the ex-franchisee’s motion to enjoin the franchisor from canceling the franchise (Little Caesar Enterprises, Inc., et al. v. Miramar Quick Service Restaurant Corp. et al., No. 2:18-cv-10767, E.D. Mich., Southern Div., 2019 U.S. Dist. LEXIS 117942).
WASHINGTON, D.C. — The U.S. Supreme Court was presented with a second petition for certiorari in a dispute over the registration of the trademark “Booking.com” on July 5, as the U.S. Patent and Trademark Office (PTO) asked the high court to find that the addition of a top-level domain (TLD), such as “.com,” to an otherwise generic term, such as “Booking,” does not serve to make it nongeneric and protectable (U.S. Patent and Trademark Office, et al. v. Booking.com B.V., No. 19-46, U.S. Sup.).
WASHINGTON, D.C. — The plaintiff in a long-running dispute over the “Sealtight” trademark filed its second petition for certiorari in the case with the U.S. Supreme Court on July 3, asking the high court to adopt a test for determining whether a trademark holder has engaged in fraud on the U.S. Patent and Trademark Office (PTO) in obtaining a registration, arguing that the circuit courts of appeal do not have a consistent standard (B&B Hardware Inc. v. Hargis Industries Inc., et al., No. 19-48, U.S. Sup.).
WASHINGTON, D.C. — The Federal Circuit U.S. Court of Appeals on July 11 agreed with an examining attorney that a proposed “Artisan NY” trademark for clothing items would likely confuse consumers in view of a pre-existing “Artesano New York City” trademark (In re: JS ADL LLC, No. 18-2017, Fed. Cir., 2019 U.S. App. LEXIS 20549).
WASHINGTON, D.C. — An examining attorney’s refusal to register the “APOGÉE” trademark sought by Louis Vuitton Malletier was proper, and the Trademark Trial and Appeal Board did not err in upholding the rejection, the Federal Circuit U.S. Court of Appeals concluded July 5 (In re: Louis Vuitton Malletier, No. 18-1651, Fed. Cir., 2019 U.S. App. LEXIS 20044).