WASHINGTON, D.C. — In a Jan. 15 ruling, the Federal Circuit U.S. Court of Appeals found that a federal judge in Connecticut did not abuse his discretion in granting LEGO A/S a preliminary injunction barring a competitor from selling action figures that infringe LEGO’s “minifigure” copyrights (LEGO A/S v. ZURU Inc., No. 19-2122, Fed. Cir., 2020 U.S. App. LEXIS 1282).
SAN DIEGO — In a Jan. 13 order, a federal judge in California found that the nonprofit veterans advocacy group “Veterans 360” is not entitled to a preliminary injunction barring the U.S. Department of Veterans Affairs (USVA) from using the “Vet360” and “Veteran 360” trademarks (Rick Collins, et al. v. U.S. Department of Veterans Affairs, No. 19-867, S.D. Calif., 2020 U.S. Dist. LEXIS 5625).
WASHINGTON, D.C. — An attorney for a manufacturer of handbag fasteners on Jan. 14 argued before the U.S. Supreme Courtt hat an innocent trademark infringer can nonetheless be subject to an award of disgorged profits under the Lanham Act and that the Federal Circuit U.S. Court of Appeals erred in reaching a contrary conclusion (Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233, U.S. Sup.).
WASHINGTON, D.C. — The U.S. Supreme Court on Jan. 13 heard oral arguments in a trademark dispute over whether federal preclusion principles bar a defendant from raising defenses that were not actually litigated and resolved in any prior case between the parties, when a plaintiff asserts new claims against the same defendant (Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., No. 18-1086, U.S. Sup.).
SAN FRANCISCO — A Nevada federal judge’s decision to impose case terminating sanctions was affirmed Dec. 27 by the Ninth Circuit U.S. Court of Appeals, which found that various trademark infringement defendants’ “overall conduct” over “several months” justified the district court’s action (Seiko Epson Corp. v. Artem Koshkalda, et al., Nos. 18-15124, -15125, 9th Cir., 2019 U.S. App. LEXIS 38703).
MIAMI — In a Jan. 7 order, a federal judge in Florida adopted in full an October recommendation that the franchisors of Tim Hortons restaurants should prevail in a dispute with former franchisees over, among other things, subleases and the right to use the “Tim Hortons” trademark (Tim Hortons USA, Inc., States, et al. v. Tims Milner LLC, et al., No. 18-24152, S.D. Fla., 2020 U.S. Dist. LEXIS 3015).
WASHINGTON, D.C. — In its Jan. 6 opening merits brief, the U.S. Patent and Trademark Office (PTO) opposes the Fourth Circuit U.S. Court of Appeals’ finding that “Booking.com” is a protectable trademark, asking the U.S. Supreme Court to find that the combination of a generic top-level domain (TLD), such as “.com,” and a generic term does not create a registrable mark (U.S. Patent and Trademark Office, et al. v. Booking.com B.V., No. 19-46, U.S. Sup.).
CONCORD, N.H. — In a Jan. 6 holding, a federal judge in New Hampshire agreed with a defendant that allegations that it infringed a trademarked headstock design as depicted in a photograph used by the defendant without authorization fail because the design in question is not entitled to trademark protection (D’Pergo Custom Guitars Inc. v. Sweetwater Sound Inc., No. 17-747, D. N.H., 2020 U.S. Dist. LEXIS 1358).
SAN FRANCISCO — In a Dec. 27 holding, the Ninth Circuit U.S. Court of Appeals reversed the dismissal by a California federal judge, on claim preclusion grounds, of allegations that a trademark relating to sesame seed oil was infringed (V.V.V. & Sons Edible Oils v. Meenakshi Overseas LLC, No. 18-16071, 9th Cir., 2019 U.S. App. LEXIS 38551).
SAN FRANCISCO — A federal magistrate judge in California on Dec. 20 dismissed a declaratory judgment counterclaim of false advertising alleged in a dispute over co-authorship of the documentary “Sign My Name to Freedom” (Focal Point Films LLC, et al. v. Arjot Sandhu, No. 19-2898, N.D. Calif., 2019 U.S. Dist. LEXIS 219314).
ROCHESTER, N.Y. — Despite a purposeful failure by two defendants to enter an appearance in a trademark infringement case, the trademark owner was denied a default judgment Dec. 26 by a federal judge in New York who found that the defendants’ accused use of the “Deep” trademark is unlikely to cause consumer confusion (Deep Foods Inc. v. Deep Foods Inc., et al., No. 18-1256, W.D. N.Y., 2019 U.S. Dist. LEXIS 221101).
WASHINGTON, D.C. — In a respondent brief filed Nov. 27, Fossil Inc. tells the U.S. Supreme Court that the Lanham Act and long-standing precedent support the Federal Circuit U.S. Court of Appeals’ finding that disgorgement of a trademark infringer’s profits requires proof that the infringement was willful, rather than innocent (Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233, U.S. Sup.).
WASHINGTON, D.C. — In its Dec. 16 orders list, the U.S. Supreme Court denied certiorari in a case that poses the question of whether nonfunctionality of claimed trade dress can be established upon demonstrating that a particular feature or set of features did not affect the cost or quality of a product (A Top New Casting Inc. v. Bodum USA Inc., No. 19-462, U.S. Sup.).
WASHINGTON, D.C. — With U.S. Supreme Court oral arguments a month away, a clothing manufacturer argues in its Dec. 12 reply brief that claim preclusion did not prevent it from asserting a release defense to trademark claims against it because the present law suit involves different claims and facts from a previous lawsuit between the same parties, asking the high court to overturn an “unprecedented decision” to the contrary by the Second Circuit U.S. Court of Appeals (Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., No. 18-1086, U.S. Sup.).
SAN FRANCISCO — The latest appellate challenge in a long-running dispute over who is the rightful leader of a California Indian tribe ended Dec. 9 before it began when the Ninth Circuit U.S. Court of Appeals dismissed an appeal by another tribe seeking to intervene for failure to prosecute (Shingle Springs Band of Miwok Indians v. Cesar Caballero v. Wopumnes Nisenan-Mewuk Tribe, No. 19-16576, 9th Cir., 2019 U.S. App. LEXIS 36433).
CHICAGO — In entering relief following a jury trial, a Wisconsin federal judge did not abuse his discretion in requiring a trademark infringer to run only a disclaimer that makes clear it is not associated with a trademark owner, a Seventh Circuit U.S. Court of Appeals panel ruled Dec. 9 (Fabick Inc. v. JFTCO Inc., Nos. 19-1760 & 19-1872, 7th Cir., 2019 U.S. App. LEXIS 36418).
WASHINGTON, D.C. — The Federal Circuit U.S. Court of Appeals on Dec. 9 found that it lacks appellate jurisdiction over an appeal of a dismissal, on standing grounds, by the Trademark Trial and Appeal Board (TTAB) of a trade dress cancellation petition (Todd C. Bank v. Al Johnson’s Swedish Restaurant & Butik Inc., No. 19-1880, Fed. Cir.).
SEATTLE — On the heels of a September summary judgment ruling in favor of a trademark infringement counterclaimant, a federal judge on Dec. 6 permanently enjoined further use of the “Bok Bok” unregistered mark by a plaintiff in the state of Washington (BBC Group NV LLC v. Island Life Restaurant Group LLC, No. 18-1011, W.D. Wash., 2019 U.S. Dist. LEXIS 210866).
WILMINGTON, Del. — In a Dec. 4 holding, a federal judge in Delaware granted New Balance Athletics Inc. summary judgment on allegations the domestic distributor of Chinese counterfeit New Balance sneakers is liable for trademark infringement and dilution (New Balance Athletics Inc. v. USA New Bunren International Co. Ltd., No. 17-1700, D. Del., 2019 U.S. Dist. LEXIS 208759).
PITTSBURGH — A trademark infringement counterclaimant on Dec. 3 won a preliminary injunction barring a false advertising plaintiff from prosecuting a petition to cancel “The Big Switch” and “Big Switch” trademarks with the U.S. Patent and Trademark Office (USPTO) (Mazcon v. BEG Group LLC, et al., No. 19-40, W.D. Pa., 2019 U.S. Dist. LEXIS 207942).