GREENBELT, Md. — A dispute between manufacturers of linens for use in the hospitality industry will proceed in light of a May 15 memorandum by a Maryland federal judge that deemed allegations of copyright and trade dress infringement adequately pleaded to survive a motion to dismiss (Garnier Thiebaut Inc. v. Castello 1935 Inc. and Richard William Campbell, No. 17-3632, D. Md., 2018 U.S. Dist. LEXIS 83294).
BOSTON — Briefing concluded April 23 in a long-running, contentious trademark dispute between former bandmates of the band Boston with the filing of the cross-appellant’s reply in the First Circuit U.S. Court of Appeals, with the two musicians disputing infringement and abuse of process related to a 1983 agreement governing use of the “Boston” trademark (David Thomas Scholz v. Barry Goudreau, No. 17-1264, 1st Cir.).
AUSTIN, Texas — In a May 14 report and recommendation, a Texas magistrate judge found that an agreement that settled trademark infringement allegations is insufficient to confer prevailing party status because the parties to the settlement agreed only to submit the question of attorney fees to a Texas federal judge for resolution (Professional Liability Insurance Services Inc. v. U.S. Risk Inc., et al., No. 15-958, W.D. Texas, 2018 U.S. Dist. LEXIS 81144).
ORLANDO, Fla. — An expert’s opinion that a company’s trademark infringement cost the trademark holder more than $4 million in gross sales is admissible, although another analysis by the expert that yielded an $8 million loss is not because the method used to reach the higher amount is not reliable, a Florida federal judge determined May 9 (Superior Consulting Services, Inc. v. Shaklee Corporation, et al., No. 6:16-cv-2001, M.D. Fla., 2018 U.S. Dist. LEXIS 77840).
MIAMI — In a May 10 order, a Florida federal judge agreed with a plaintiff that a defense expert’s conclusions regarding whether the U.S. Patent and Trademark Office (PTO) properly issued the “Royal Palm” trademark are “problematic,” particularly in light of the expert’s status as an attorney (Royal Palm Properties LLC v. Pink Palm Properties LLC, No. 17-80476, S.D. Fla., 2018 U.S. Dist. LEXIS 78685).
SAN FRANCISCO — Although agreeing with adidas America Inc. that Skechers USA Inc. likely infringed and diluted adidas’ “Three-Stripe” trademark as applied to athletic shoes, a divided Ninth Circuit U.S. Court of Appeals on May 10 reversed an injunction entered against Skechers, citing adidas’ failure to demonstrate irreparable harm (adidas America Inc., et al. v. Skechers USA Inc., No. 16-35204, 9th Cir., 2018 U.S. App. LEXIS 12249).
WASHINGTON, D.C. — Citing a competitor’s purportedly baseless trade dress lawsuit that prevented it from entering the fiberglass utility body (FUB) market, a machine component firm filed a petition for certiorari on March 26, asking the U.S. Supreme Court to decide what constitutes sham litigation to permit antitrust claims to proceed under an exception to the Noerr-Pennington doctrine (Industrial Models Inc. v. SNF Inc., et al., No. 17-1367, U.S. Sup.).
CINCINNATI — The Sixth Circuit U.S. Court of Appeals heard oral arguments on April 26 between a water technology solutions company and a seller of aftermarket parts as to whether the former company is a successor-in-interest to a firm that was granted a permanent injunction against the latter firm, thereby entitling the appellant to pursue contempt claims for trade secret and trademark use barred by the injunction (Evoqua Water Technologies LLC v. M.W. Watermark LLC, et al., No. 17-2136, 6th Cir.).
SAN FRANCISCO — In a May 2 holding, the Ninth Circuit U.S. Court of Appeals found no error in a California federal judge’s dismissal of allegations that an “08” trademark was infringed and subsequent finding that the case qualifies as “exceptional” (Ketab Corp.v. Mesriani & Associates, et al., No. 15-56753, 9th Cir., 2018 U.S. App. LEXIS 11385).
NEW YORK — A New York federal judge on April 30 enjoined a former Mitsubishi Motors North America Inc. (MMNA) franchisee from continuing to use the company’s trademarked signs and materials at an unauthorized location after finding that the franchisee breached the terms of its dealer sales and service agreement (Mitsubishi Motors North America Inc. v. Grand Automotive Inc., No. CV 18-814, E.D. N.Y., 2018 U.S. Dist. LEXIS 72349).
ST. LOUIS — An award of attorney fees based, in part, on findings that a defendant had its counsel sign trademark applications that falsely swore that no other company was using the “Pakster” trademark despite knowledge to the contrary was reversed April 30 by the Eighth Circuit U.S. Court of Appeals (East Iowa Plastics Inc. v. PI Inc., No. 16-4574, 8th Cir.).
NEW YORK — In an April 23 appellee brief, a church known for its online ordination services asks the Second Circuit U.S. Court of Appeals to affirm a lower court’s finding that the term “universal church” is generic and canceling of another church’s trademarks, as well as judgments on trademark infringement and cybersquatting claims in its favor (The Universal Church Inc. v. Universal Life Church/ULC Monastery, et al., No. 17-2960, 2nd Cir.).
PITTSBURGH — Although acknowledging that two children’s books share “some similarity,” a Pennsylvania federal judge on April 27 deemed those similarities a “random scattershot” of aspects that would be expected by two works expressing the same unprotectable idea (Jennie Nicassio v. Viacom International Inc., et al., No. 17-805, W.D. Pa., 2018 U.S. Dist. LEXIS 70730).
AUGUSTA, Ga. — In light of a procedural rule of the Internet Cooperation for Assigned Names and Number (ICANN) and the first-filed rule, a Georgia federal judge on April 25 transferred an internet domain dispute between Augusta National Inc. golf club and an auction website operator to Arizona federal court to be consolidated with an almost identical suit between the same parties (Green Jacket Auctions Inc., et al. v. Augusta National Inc., No. 1:18-cv-00008, S.D. Ga., 2018 U.S. Dist. LEXIS 69680).
WASHINGTON, D.C. — A magistrate judge did not err in rejecting efforts by prevailing copyright and trademark infringement plaintiffs to recover damages under both the Copyright Act and the Lanham Act because double recovery is disfavored in cases involving the sale of pirated material, a New York federal judge ruled April 25 (Cengage Learning Inc., et al. v. Globonline SDN BHD, et al., No. 14-3174, S.D. N.Y., 2018 U.S. Dist. LEXIS 70315).
ST. LOUIS — Citing evidence that the “Onepul” trademark, when used in connection with plastic bags for picking up and disposing of dog droppings, could be considered generic or descriptive, the Eighth Circuit U.S. Court of Appeals on April 26 reversed a summary judgment of trademark validity (ZW USA Inc. v. PWD, LLC, No. 16-3999, 8th Cir., 2018 U.S. App. LEXIS 10530).
NEWARK, N.J. — A federal judge in New Jersey on April 23 awarded default judgment to Travelodge Hotels Inc. (THI) for damages and recurring fees owed to it by a former franchisee but found that treble damages under the Lanham Act for infringing the company’s trademarks after the defendant terminated the agreement were not warranted (Travelodge Hotels Inc. v. Wilcox Hotel LLC, et al., No. 17-0391, D. N.J., 2018 U.S. Dist. LEXIS 68297).
SAN DIEGO — A California federal judge on April 24 granted a jiu-jitsu kimono maker’s motion to dismiss claims asserted by a competitor for violation of California’s unfair competition law (UCL), fraud and other claims, but refused to dismiss a claim for breach of contract in relation to a nondisclosure agreement for proprietary data and development materials (Champion Courage Ltd. v. Fighter’s Market Inc., et al., No. 17-cv-01855, S.D. Calif., 2018 U.S. Dist. LEXIS 69043).
SAN FRANCISCO — In an April 25 holding, the Ninth Circuit U.S. Court of Appeals ruled in favor of Fox Entertainment Group Inc., upholding a dismissal by a California federal judge of allegations that the film studio infringed trademark rights in a half-squirrel, half-rat character known as “Sqrat” (Ivy Silberstein and Silberstein & Silberstein LLC v. Fox Entertainment Group Inc., et al., No. 16-55318, 9th Cir., 2018 U.S. App. LEXIS 10447).
SAN FRANCISCO — Finding that an appellant unreasonably delayed pursuing litigation against Dropbox Inc. (DBI) over the disputed “Dropbox” trademark, a Ninth Circuit U.S. Court of Appeals panel on April 25 affirmed a trial court’s summary judgment based on laches and an accompanying award of costs and attorney fees (Dropbox Inc. v. Thru Inc., No. 17-15078, 9th Cir., 2018 U.S. App. LEXIS 10453).