LOS ANGELES — A request by Marc Jacobs International LLC for dismissal of allegations that it infringed the copyrighted “Happy Face” smiley face design and logo made famous by the rock band Nirvana was denied Nov. 8 by a California federal judge, in an in-chambers ruling entered Nov. 12 (Nirvana LLC v. Mark Jacobs International LLC, et al., No. 18-10743, C.D. Calif.).
WASHINGTON, D.C. — The defendant in a long-running dispute over the “Get Lucky” clothing trademark was appropriately barred from raising a defense it could have pursued in a previous suit between the same parties, a clothing maker tells the U.S. Supreme Court in a Nov. 12 respondent brief, asserting that res judicata applied because the causes of action were the same (Lucky Brand Dungarees Inc., et al v. Marcel Fashion Group Inc., No. 18-1086, U.S. Sup.).
CHICAGO — In a Nov. 7 ruling, the Seventh Circuit U.S. Court of Appeals for the first time adopted and applied the U.S. Supreme Court’s standard for awarding attorney fees in patent cases to requests for fees under Section 1117(a) of the Lanham Act, 15 U.S.C. § 1117(a) (LHO Chicago River LLC v. Joseph Perillo, et al., No. 19‐1848, 7th Cir., 2019 U.S. App. LEXIS 33463).
DENVER — A panel of the 10th Circuit U.S. Court of Appeals on Nov. 7 found that a federal judge in Utah erred in ordering a franchisor to resume its relationship with a former franchisee, including the revival of a disputed trademark license agreement (TLA) (Mrs. Fields Franchising LLC v. MFGPC Inc., Nos. 19-4046, -4063, 10th Cir., 2019 U.S. App. LEXIS 33521).
WASHINGTON, D.C. — The U.S. Supreme Court on Nov. 8 announced that it will take on a dispute between the U.S. Patent and Trademark Office (PTO) and a travel website over the significance of adding a top-level domain (TLD) such as “.com” to an otherwise generic, unregistrable trademark (U.S. Patent and Trademark Office, et al. v. Booking.com B.V., No. 19-46, U.S. Sup.).
CAMDEN, N.J. — Following a one-day bench trial in May 2019, a federal judge in New Jersey on Nov. 4 ruled in favor of a defendant accused of trademark infringement in connection with a decision to revive the name “Il Portico” for its restaurant (Fife & Drum Inc. v. DelBello Enterprises, No. 17-3676, D. N.J., 2019 U.S. Dist. LEXIS 190582).
RICHMOND, Va. — In an Oct. 30 ruling, the Fourth Circuit U.S. Court of Appeals found no error in a Virginia federal judge’s determination that allegations of copyright and trademark infringement levied against a spinoff masonic organization fail as a matter of law (United Supreme Council v. United Supreme Council, No. 18-2034, 4th Cir., 2019 U.S. App. LEXIS 32478).
SANTA ANA, Calif. — Finding that substantial questions exist over whether personal jurisdiction can be exercised over the Cyprus-based operator of a “sugar daddy” dating website accused of trademark infringement, a California federal judge on Oct. 23 ordered the parties to engage in jurisdictional discovery prior to the resolution of a pending summary judgment motion (Reflex Media Inc., et al. v. Apiriliaco Ltd., et al., No. 8:16-cv-00795, C.D. Calif.).
SAN ANTONIO — A water filtering company that provides services to hydraulic fracturing companies on Oct. 4 filed a lawsuit in Texas federal court against two companies, seeking injunctive and monetary relief for trade secret misappropriation and trademark infringement (WaterFleet LLC v. TanMar Rentals LLC, et al., No. 19-1190, W.D. Texas).
NEW YORK — The Oneida Indian Nation of New York lacks constitutional standing to sue the Department of the Interior (DOI) over the agency’s decision to allow the Oneida Tribe of Indians of Wisconsin to change its name to the Oneida Nation, the Second Circuit U.S. Court of Appeals affirmed Oct. 21 (Oneida Indian Nation v. U.S. Department of the Interior, No. 18-2607, 2nd Cir., 2019 U.S. App. LEXIS 31501).
CHARLOTTE, N.C. — In what he said “appears to be a matter of first impression in this Circuit and perhaps nationally,” a North Carolina federal judge on Oct. 21 found that a dissatisfied trademark applicant who appeals an adverse ruling by the Trademark Trial and Appeal Board (TTAB) to the Federal Circuit U.S. Court of Appeals waives the right to also seek review in federal district court of subsequently issued TTAB decisions involving the same application (Vanguard LLC, et al. v. Frito-Lay North America Inc., No. 17-652, W.D. N.C., 2019 U.S. Dist. LEXIS 182242).
SAN DIEGO — A federal judge in California on Oct. 21 found that a plaintiff cannot prove that two laboratories chose to use a defendant’s thyroid assay because it was briefly marketed as thyroid stimulating immunoglobin (TSI) only; the same day, however, the judge denied the defendant’s request for attorney fees (Quidel Corporation v. Siemens Medical Solutions USA Inc., No. 16-3059, S.D. Calif., 2019 U.S. Dist. LEXIS 181874).
BALTIMORE — A federal judge in Maryland on Oct. 10 converted a temporary restraining order (TRO) to a preliminary injunction, barring a former franchisee from continued use of a franchisor’s trademarks while the parties’ breach of contract and infringement case proceeds (ICENY USA LLC v. M&M’s LLC, et al., No. 19-2418, D. Md., 2019 U.S. Dist. LEXIS 176999).
TEXARKANA, Texas — After seeing their motions to dismiss and transfer denied, an antitrust lawsuit brought against them by an online travel agency (OTA), the defendant hotel chains each filed answers in Texas federal court on Oct. 11, denying any conspiracy and leveling counterclaims for trademark infringement against TravelPass Group LLC (TravelPass Group LLC, et al. v. Caesars Entertainment Corp., et al., No. 5:18-cv-00153, E.D. Texas).
MIAMI — In an Oct. 9 order, a federal judge in Florida partially granted a motion to dismiss in part filed by counterdefendants in a trademark infringement lawsuit, ruling, in particular, that counterplaintiffs in the action have failed to sufficiently state their counterclaim for trade secret misappropriation under Florida trade secret law (VVIG Inc. v. Henry Alvarez, et al., No. 18-23109, S.D. Fla., 2019 U.S. Dist. LEXIS 175304).
CINCINNATI — A federal judge in Ohio on Oct. 8 ruled that a medical device maker has sufficiently shown that personal jurisdiction exists over its claims in a trade secret misappropriation lawsuit against former business associates based in China under Ohio’s long-arm statute and the due process clause of the Fourth Amendment to the U.S. Constitution (AtriCure Inc. v. Dr. Jian Meng, et al., No. 19-0054, S.D. Ohio, 2019 U.S. Dist. LEXIS 174499).
ROANOAKE, Va. — Franchisees who continued using their former franchisor’s trademarks after their franchise agreement was terminated must pay $3,094,066 in connection with the infringement, a Virginia federal judge ruled Sept. 30 (Choice Hotels International Inc. v. A Royal Touch Hospitality LLC, et al., No. 17-381, W.D. Va., 2019 U.S. Dist. LEXIS 167904).
TAMPA, Fla. — In a blow to Sream Inc., exclusive licensee of the “RooR” trademark, a federal judge in Florida on Oct. 7 found that only a registrant or its assignee has standing to sue for infringement (RooR International B.V., et al. v. Good Timez III LLC, et al., No. 19-439, M.D. Fla., 2019 U.S. Dist. LEXIS 173283).
CINCINNATI — A panel of the Sixth Circuit U.S. Court of Appeals on Oct. 7 vacated a Michigan federal judge’s grant of summary judgment that two defendants are not liable for copyright infringement because the copyrights at issue were not unambiguously transferred in a 2013 asset sale (Evoqua Water Technologies LLC v. M.W. Watermark LLC, et al., Nos. 18-2397, 18-2398, 6th Cir., 2019 U.S. App. LEXIS 30023).
SAN FRANCISCO — A California federal judge did not err in granting $518,817 in attorney fees to a vineyard accused of infringing the trade dress of Sazerac Co. Inc.’s “Buffalo Trace” bourbon, the Ninth Circuit U.S. Court of Appeals ruled Oct. 4 (Sazerac Company Inc. v. Fetzer Vineyards Inc., Nos. 17-16916, 17-17511, 9th Cir., 2019 U.S. App. LEXIS 29728).