WASHINGTON, D.C. — In oral arguments on May 4 during the first ever televised session of the U.S. Supreme Court, the U.S. Patent and Trademark Office (PTO) and Booking.com B.V. debated whether Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888), and the Lanham Act preclude the combination of a generic term, such as “booking,” with a generic top level domain (TLD), such as “.com,” from creating a protectable trademark (U.S. Patent and Trademark Office, et al. v. Booking.com B.V., No. 19-46, U.S. Sup.).
WASHINGTON, D.C. — An attorney who twice sought cancellation of a Wisconsin restaurant’s registered trade dress, which incorporates live goats, filed a petition for certiorari over the dismissal of his latest petition on April 15, asking the U.S. Supreme Court to address the difference between establishing standing to seek cancellation based on alleged disparagement from a merits claim that a trademark is disparaging (Todd C. Bank v. Al Johnson’s Swedish Restaurant & Butik Inc., No. 19-1232, U.S. Sup.).
SAN FRANCISCO — In an April 29 order, a federal judge in California found that a counterclaim seeking cancellation of the “IdentityLink” trademark should be dismissed without prejudice because the allegation fails to adequately plead fraud by the trademark owner (LiveRamp Inc. v. Kochava Inc., No. 19-2158, N.D. Calif., 2020 U.S. Dist. LEXIS 75482).
CHICAGO — The Seventh Circuit U.S. Court of Appeals on April 24 upheld an Illinois federal judge’s decision to award damages and a permanent injunction following entry of a default judgment in a dispute over stolen “Prevagen” supplements (Quincy Bioscience LLC v. Ellishbooks, No. 19‐1799, 7th Cir., 2020 U.S. App. LEXIS 13182).
WASHINGTON, D.C. — In a ruling issued April 23, the U.S. Supreme Court vacated and remanded to the Federal Circuit U.S. Court of Appeals its March 2016 holding that a trademark owner is barred from seeking profits from a trademark infringer without first establishing willfulness (Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233, U.S. Sup.).
SAN FRANCISCO — Allegations that an Austrian company and its U.S. affiliate infringed the “Wool Runners” trademark won’t be dismissed, a federal judge in California ruled April 20 (Allbirds Inc. v. Giesswein Walkwaren AG, et al., No. 19-5638, N.D. Calif., 2020 U.S. Dist. LEXIS 69160).
SAN FRANCISCO — In an April 20 holding, a dissenting judge sitting by designation in the Ninth Circuit U.S. Court of Appeals argued that an Arizona federal judge erred in denying a trademark owner’s request for $4.5 million in disgorged profits in connection with infringement of the “Stone Creek” trademark (Stone Creek Inc. v. Omnia Italian Design Inc., Nos. 18-15914 19-15167, 9th Cir., 2020 U.S. App. LEXIS 12535).
ATLANTA — A federal judge in Florida did not err in rejecting allegations that a guitar maker is liable for copyright infringement and unfair competition in connection with its use of a “lightning storm” graphic without the consent of an appellant, the 11th Circuit U.S. Court of Appeals ruled April 16 (Buddy Webster v. Dean Guitars, No. 19-10013, 11th Cir., 2020 U.S. App. LEXIS 12078).
WASHINGTON, D.C. — In an April 14 ruling, the Federal Circuit U.S. Court of Appeals upheld a decision by the Trademark Trial and Appeal Board that denied a registration for “Stratus” on grounds of likely confusion with an existing “Strata” trademark (Stratus Networks Inc. v. UBTA-UBET Communications Inc., No. 19-1351, Fed. Cir., 2020 U.S. App. LEXIS 11701).
LOS ANGELES — A fabric supplier on April 6 answered a wholesale upholstery company’s trademark infringement and unfair competition lawsuit and brought counterclaims for trademark infringement, unfair competition and false advertising under California law and common-law unfair competition two weeks after a California federal judge rejected its argument that the common-law claims for trademark infringement and unfair competition are legally duplicative of the other statutory claims (Pelm Products LLC v. Plaza Fabrics Inc., No. 2:19-cv-08017, C.D. Calif., 2020 U.S. Dist. LEXIS 50174).
MINNEAPOLIS — In an April 9 decision, a federal judge in Minnesota enjoined several former franchisees from using or displaying the “Mainstream Boutique” trademarks, copyrights and “Mac and Me” exclusive products for a period of two years or until further modification by the court (Mainstream Fashions Franchising Inc. v. All These Things LLC, et al., No. 19-2953, D. Minn., 2020 U.S. Dist. LEXIS 62673).
CHICAGO — An Illinois federal judge did not err in declaring invalid as functional a claimed trade dress consisting of a beveled concave curve of the leading edge of a conveyor belt fastener, the Seventh Circuit U.S. Court of Appeals ruled April 7 (Flexible Steel Lacing Co. v. Conveyor Accessories Inc., No. 19-2035, 7th Cir., 2020 U.S. App. LEXIS 10835).
ST. LOUIS — In an April 6 holding, a divided Eighth Circuit U.S. Court of Appeals agreed with a Minnesota federal judge that although a party bus company should be permanently enjoined from infringing two unregistered trademarks, it need not pay the trademark owner disgorged profits (Safeway Transit LLC, et al. v. Discount Party Bus Inc., et al., No. 18-2990, 8th Cir., 2020 U.S. App. LEXIS 10691).
SAN FRANCISCO — The Ninth Circuit U.S. Court of Appeals on April 1 affirmed a lower federal court’s ruling that coverage for an underlying contempt proceeding against an insured is barred by a general liability insurance policy’s intellectual property and unfair competition exclusions, rejecting the appellants’ argument that the exclusions violate public policy pursuant to California law (Great American E&S Insurance Company v. Theos Medical Systems, Inc., No. 19-15351, 9th Cir., 2020 U.S. App. LEXIS 10345).
WASHINGTON, D.C. — In a March 16 reply brief supporting its petition for certiorari, a maker of storm shelters asks the U.S. Supreme Court to consider the application of a manufacturer-distributor test in its dispute over the ownership of the “LifeSaver Storm Shelters” trademark with a former dealer of its products (Southern Illinois Storm Shelters Inc., et al. v. 4SEMO.Com Inc., No. 19-990, U.S. Sup.).
WASHINGTON, D.C. — In an April 2 opposition brief, a water quality firm tells the U.S. Supreme Court that the Sixth Circuit U.S. Court of Appeals correctly found that it was the assignee of a 2003 consent judgment that pertained to trademarks and trade secrets at issue in the present suit, asking the high court to deny a petition for certiorari raising questions of assignability and enforcement of such consent decrees (M.W. Watermark LLC, et al. v. Evoqua Water Technologies LLC, No. 19-1079, U.S. Sup.).
SAN FRANCISCO — Although agreeing with an Arizona federal judge’s determination that the Jack Daniel’s trademark and related bottle design trade dress are valid, the Ninth Circuit U.S. Court of Appeals on March 31 reversed findings that the trademark and trade dress are infringed and diluted by a squeaking dog toy in the shape of a liquor bottle (VIP Products LLC v. Jack Daniel’s Properties Inc., No. 18-16012, 9th Cir., 2020 U.S. App. LEXIS 10037).
TRENTON, N.J. — In an April 1 memorandum, a federal judge in New Jersey ordered a nonprofit organization to pay a fellow nonprofit more than $11 million in disgorged profits for trademark infringement (Kars 4 Kids Inc. v. America Can!, Nos. 14-7770, 16-4232, D. N.J., 2020 U.S. Dist. LEXIS 56857).
WASHINGTON, D.C. — In a March 13 merits reply brief, the U.S. Patent and Trademark Office (PTO) tells the U.S. Supreme Court that longstanding case law teaches that the adding of a top-level domain (TLD), such as “.com,” to a generic term does not create a registrable, protectable trademark, asking the high court to reverse a Fourth Circuit U.S. Court of Appeals ruling to the contrary in favor of Booking.com B.V. (U.S. Patent and Trademark Office, et al. v. Booking.com B.V., No. 19-46, U.S. Sup.).
SAN DIEGO — A federal judge in California on March 27 denied a motion for summary judgment by MillerCoors LLC, which stands accused of willfully infringing the “STONE®” trademark when “refreshing” the packaging for its sub-premium “Keystone” beer (Stone Brewing Company LLC v. MillerCoors LLC, No. 18-331, S.D. Calif., 2020 U.S. Dist. LEXIS 54864).