ATLANTA — A Georgia federal judge’s determination that Gorilla Glue Co. did not infringe or dilute the trade dress of a competitor was reversed and remanded Oct. 20 by the 11th Circuit U.S. Court of Appeals, which found that disputed evidence was not weighed in favor of the trade dress owner (J-B Weld Company v. Gorilla Glue Company, No. 18-14975, 11th Cir., 2020 U.S. App. LEXIS 33064).
By John P. Katerndahl
NEW YORK — A federal magistrate judge in New York on Oct. 15 directed a defendant to refile its request for attorney fees after the Federal Circuit U.S. Court of Appeals weighs in on a summary judgment determination that the defendant did not infringe trade dress or patents relating to candy (The Topps Company Inc. v. Koko’s Confectionary & Novelty Inc., No. 16-5954, S.D. N.Y., 2020 U.S. Dist. LEXIS 191302).
WASHINGTON, D.C. — The Eighth Circuit U.S. Court of Appeals applied the incorrect standard in determining that no naked license existed related to a trademark used by two competing lawn care companies, the one firm argued in a Sept. 28 petition for certiorari, also asking the U.S. Supreme Court to provide guidance on the doctrine of unclean hands in the context of parallel state and federal court lawsuits between former spouses (Progressive Lawn Managers Inc. v. Lawn Managers Inc., No. 20-421, U.S. Sup.).
By Lauren Bolcar and Scott Pivnick
WASHINGTON, D.C. — In a Sept. 15 petition for certiorari, Jack Daniel’s Properties Inc. tells the U.S. Supreme Court that the Ninth Circuit U.S. Court of Appeals wrongly applied First Amendment principles in finding that humorous uses of its trademarks and trade dress on a dog toy did not constitute trademark infringement and dilution (Jack Daniel’s Properties Inc. v. VIP Products LLC, No. 20-365, U.S. Sup.).
PHILADELPHIA — Two product configurations for “Pocky” — a thin, stick-shaped cookie — claim functional features protectable only with patents, not trade dress, a panel of the Third Circuit U.S. Court of Appeals ruled Oct. 8 (Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp., No. 19-3010, 3rd Cir., 2020 U.S. App. LEXIS 31926).
MIAMI — A Florida trial court erred in dismissing a production and marketing company’s state law trade secret misappropriation claim against a cruise line because the cruise line failed to sufficiently show that the proprietary processes and techniques the company alleged the cruise line misappropriated were not protected trade secrets, a Florida appellate panel ruled Oct. 7 (Poet Theatricals Marine LLC, et al. v. Celebrity Cruises Inc., No. 3D19-26920, Fla. App., 3rd Dist., 2020 Fla. App. 14081).
PHILADELPHIA — Citing a plaintiff’s covenant not to sue, a federal judge in Pennsylvania on Oct. 6 dismissed without prejudice a counterclaim by Nike Inc. for cancellation of the “Cool Compression” trademark (Lontex Corporation v. Nike Inc., No. 18-5623, E.D. Pa., 2020 U.S. Dist. LEXIS 185598).
BROOKLYN, N.Y. — A federal magistrate judge in New York on Sept. 30 recommended that Whirlpool Corp. and Maytag Properties LLC be awarded permanent injunctive relief on allegations that a defaulting defendant infringed the "Whirlpool" and "Maytag" trademarks when selling replacement refrigerator water filters (Whirlpool Corporation, et al. v. Menpin Supply Corp., No. 19-2722, E.D. N.Y., 2020 U.S. Dist. LEXIS 183459).
GREENSBORO, N.C. — A federal judge in North Carolina on Sept. 30 granted dismissal on jurisdictional grounds of allegations that a provider of clinical research and development services infringed the "Built for Biotech" trademark (Premier Research International LLC v. Medpace Inc., No. 19-1147, M.D. N.C., 2020 U.S. Dist. LEXIS 179669).
SAN FRANCISCO — In an Oct. 1 ruling, the Ninth Circuit U.S. Court of Appeals upheld summary judgment in favor of a defendant, joining with other circuit courts in concluding that in order to prevail, plaintiffs who assert trademark counterfeiting are required to establish a likelihood of confusion (Arcona Inc. v. Farmacy Beauty LLC, No. 19-55586, 9th Cir., 2020 U.S. App. LEXIS 31203).
ATLANTA — In a Sept. 30 unpublished opinion, the 11th Circuit U.S. Court of Appeals affirmed a Georgia federal judge's rejection of allegations that several appellees filed fraudulent trademark infringement notices and misrepresented the nature of a trademark injunction in their dispute with a former distributor (Steven Mandala v. Tire Stickers LLC, et al., No. 19-14416, 11th Cir., 2020 U.S. App. LEXIS 31016).
SAN DIEGO — In a Sept. 29 order, a federal judge in California granted a declaratory judgment plaintiff summary judgment that it has not infringed a competing credit union's trademarks while also sua sponte dismissing a counterclaim seeking cancellation of the plaintiff's mark; the same day, the judge issued a separate order rejecting the plaintiff's allegation that the defendant's trademark was procured by fraud (San Diego County Credit Union v. Citizen's Equity First Credit Union, No. 18-967, S.D. Calif., 2020 U.S. Dist. LEXIS 179341).
WASHINGTON, D.C. — In a Sept. 24 holding, the Federal Circuit U.S. Court of Appeals upheld an Arkansas federal judge's rejection of allegations of false patent marking and false advertising leveled in connection with poultry processing equipment (John Bean Technologies Corp. v. Morris & Associates Inc., Nos. 2020-1035, -1081, Fed. Cir.).
NASHVILLE, Tenn. — In a dispute over the termination of a franchise agreement, a franchisor of cleaning and damage restoration services was granted summary judgment in part on Sept. 21 by a Tennessee federal judge on the franchisor's breach of contract and trademark infringement claims as well as a breach of contract counterclaim brought by a former franchisee (Servpro Industries, Inc. v. Tammy Woloski, et al., No. 17-1433, M.D. Tenn., 2020 U.S. Dist. LEXIS 171955).
ATLANTA — A federal judge in Florida did not err in rejecting on summary judgment allegations of copyright and trademark infringement levied by a used car dealership against a competitor, in connection with the parties' billboard advertisements, the 11th Circuit U.S. Court of Appeals ruled Sept. 17 (Off Lease Only Inc. v. Lakeland Motors LLC, No. 20-10825, 11th Cir., 2020 U.S. App. LEXIS 29691).
WASHINGTON, D.C. — An International Centre for Settlement of Investment Disputes (ICSID) tribunal in an award issued Aug. 14 and released publicly on Sept. 4 denied two tire companies' nearly $20 million claim against the Republic of Panama after finding that there was not "a scintilla of evidence" showing that the companies' tire trademarks were harmed or lost value due to a Panama Supreme Court judgment against the companies (Bridgestone Licensing Services, Inc., et al. v. Republic of Panama, No. ARB/16/34, ICSID).
CINCINNATI — In a wide-ranging ruling issued Sept. 10, the Sixth Circuit U.S. Court of Appeals reversed a Michigan federal judge's denial of a copyright and trademark defendant's motion for a new trial while also affirming the judge's determination that the plaintiff in the case is not entitled to judgment as a matter of law with regard to its "CATIA" trademark (Dassault Systèmes, SA v. Keith Childress, Nos. 17-2175, -2239, -2416, 6th Cir., 2020 U.S. App. LEXIS 28941).
NEW YORK — A New York federal judge did not err in granting summary judgment that Apple Inc. did not infringe the "IONEX" trademark when it adopted "Ion-X" to describe the glass face of the Apple watch, the Second Circuit U.S. Court of Appeals concluded Sept. 11 (Saxon Glass Technologies Inc. v. Apple Inc., No. 19-2190, 2nd Cir., 2020 U.S. App. LEXIS 28946).