WASHINGTON, D.C. — An August 2018 finding by the Eighth Circuit U.S. Court of Appeals that a visual artist’s trade dress claim was preempted by the Copyright Act will stand, thanks to a denial of certiorari Jan. 22 by the U.S. Supreme Court (Bruce Munro, et al. v. Lucy Activewear Inc., et al., No. 18-615, U.S. Sup.).
WASHINGTON, D.C. — The Eighth Circuit U.S. Court of Appeals correctly found that a visual artist was not entitled to trade dress protection for his artistic light display, a women’s sportswear chain asserts in a Dec. 13 brief opposing the artist’s petition for certiorari and arguing that there is no overlap between trade dress and copyright law that needs review by the court (Bruce Munro, et al. v. Lucy Activewear Inc., et al., No. 18-615, U.S. Sup.).
SAN FRANCISCO — The Ninth Circuit U.S. Court of Appeals on Jan. 15 found that although a California federal judge abused his discretion in dismissing, as a sanction, allegations of trademark infringement and unfair competition, his earlier dismissal for failure to state a claim was proper (Applied Underwriters Inc. v. Larry J. Lichtenegger, et al., No. 17-16815, 9th Cir., 2019 U.S. App. LEXIS 1291).
WASHINGTON, D.C. — In a Jan. 14 ruling, the Federal Circuit U.S. Court of Appeals found no error in a decision by the Trademark Trial and Appeal Board that affirmed an examining attorney’s refusal to register “Casalana” on grounds of failure to demonstrate use in commerce (In re: Siny Corp., No. 18-1077, Fed. Cir., 2019 U.S. App. LEXIS 1136).
WASHINGTON, D.C. — In a Jan. 9 merits respondent brief, a trademark holder tells the U.S. Supreme Court that under “extraordinary authority” in the U.S. Bankruptcy Code, it was permitted to terminate a trademark license, stripping its former licensee’s rights to continue use of the once-licensed marks (Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, U.S. Sup.).
WASHINGTON, D.C. — The Trademark Trial and Appeal Board erred in affirming an examiner’s refusal to register “Guild Mortgage Company” because the ruling was premised on an inadequate analysis of the factors for confusion, the Federal Circuit U.S. Court of Appeals concluded Jan. 14 (In re: Guild Mortgage Company, No. 17-2620, Fed. Cir., 2019 U.S. App. LEXIS 1131).
NEW YORK — Allegations that four defendants marketed and sold a plastic beer stein that replicates the National Hockey League (NHL) Stanley Cup trophy will proceed in New York, a federal judge ruled Jan. 8 (National Hockey League v. The Hockey Cup LLC, et al., No. 18-6597, S.D. N.Y., 2019 U.S. Dist. LEXIS 3411).
NEW YORK — In a Jan. 3 holding, a New York federal judge agreed with a defendant that it is protected by the Noerr-Pennington doctrine, as established in Eastern R.R. Presidents Conference v. Noerr Motor Freight, Inc., 365 U.S. 127, 136-39 (1961), and United Mine Workers v. Pennington, 381 U.S. 657, 669-70 (1965), from allegations it violated Section 43(a) of the Lanham Act, 15 U.S.C. § 1125, when it filed a citizen petition with the U.S. Food and Drug Administration (Elysium Health Inc. v. Chromadex Inc., No. 17-7394, S.D. N.Y., 2019 U.S. Dist. LEXIS 1871).
WASHINGTON, D.C. — In its orders list issued on Jan. 4, the U.S. Supreme Court announced that it will decide the constitutionality of Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), which bars registration of “immoral and scandalous” trademarks (Andrei Iancu v. Erik Brunetti, No. 18-302, U.S. Sup.).
LOS ANGELES — Allegations of trade dress and copyright infringement levied against Dollar General Corp. in connection with sprinkler toys were rejected on summary judgment on Dec. 28 by a California federal judge, who found that a plaintiff is unable to demonstrate ownership of the intellectual property at issue (Swift Harvest USA LLC v. Dollar General Corporation, No. 17-8644, C.D. Calif., 2018 U.S. Dist. LEXIS 217845).
NEW YORK — In a Jan. 2 ruling, a New York federal judge found that allegations of patent and trademark infringement, as well as federal unfair competition, should proceed in the U.S. District Court for the Central District of California (NextEngine Inc. v. NextEngine Inc., No. 17-9785, S.D. N.Y., 2019 U.S. Dist. LEXIS 584).
NEW YORK — In a Jan. 2 report, a New York federal magistrate judge recommended an award of $6.2 million on behalf of four publishers that accuse 15 individuals and one corporate defendant of copyright and trademark infringement in connection with their online sales of counterfeit textbooks (Elsevier Inc., et al. v. Siew Yee Chew, et al., No. 17-6225, S.D. N.Y., 2019 U.S. Dist. LEXIS 196).
ST. LOUIS — In a Dec. 21 ruling, a panel of the Eighth Circuit U.S. Court of Appeals upheld in their entirety findings by an Arkansas federal judge that in view of a jury’s determination of fraud committed by a trademark owner before the U.S. Patent and Trademark Office (PTO), a defendant was entitled to a final judgment of noninfringement (B&B Hardware Inc. v. Hargis Industries Inc., No. 17-1570 and 17-1755, 8th Cir., 2018 U.S. App. LEXIS 36214).
PASADENA, Calif. — In a Dec. 31 mandate, the Ninth Circuit U.S. Court of Appeals awarded costs to a Cyprus-based website operator that saw a default judgment ruling against it in a trademark lawsuit reversed, due to the plaintiff’s failure to properly serve the defendant with its summons and complaint (Reflex Media Inc. v. Apiriliaco Ltd., et al., No. 17-55505, 9th Cir., 2018 U.S. App. LEXIS 34524).
GREEN BAY, Wis. — A Wisconsin federal judge on Dec. 17 ruled that mandatory purchases of inventory under distributorship agreements did not constitute a franchise fee under California or Washington law and that a food service manufacturer complied with termination and notice provisions (PW Stoelting LLC v. Steven J. Levine, et al., No. 16-381, E.D. Wis., 2018 U.S. Dist. LEXIS 211914).
WASHINGTON, D.C. — In a Dec. 11 reply brief supporting its petition for certiorari, the U.S. Patent and Trademark Office (PTO) defends its decision to deny registration of a trademark it deemed vulgar, asking the U.S. Supreme Court to decide whether the scandalous-marks provision of the Lanham Act violates the First Amendment to the U.S. Constitution (Andrei Iancu v. Erik Brunetti, No. 18-302, U.S. Sup.).
WASHINGTON, D.C. — A licensee of certain trademark and distribution rights argues in a Dec. 10 merits brief to the U.S. Supreme Court that a bankruptcy filing does not empower a debtor to rescind any agreements or revoke any licensed intellectual property rights that it could not do outside of the bankruptcy context (Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, U.S. Sup.).
ALEXANDRIA, Va. — With remand instructions from the Fourth Circuit U.S. Court of Appeals on the proper standard for considering attorney fees awards under the Lanham Act, a Virginia federal judge on Nov. 28 denied an internet domain registrar’s fees motion for a second time, determining that although the defendant prevailed on the false advertising claims brought by Verisign Inc., it did not establish that the case was exceptional (Verisign Inc. v. XYZ.com LLC, et al., No. 1:14-cv-01749, E.D. Va., 2018 U.S. Dist. LEXIS 203037).
WASHINGTON, D.C. — A North Carolina federal judge’s decision to dismiss claims of false patent marking and false advertising under the Lanham Act, 15 U.S.C. § 1125, was affirmed Dec. 10 by a per curiam panel of the Federal Circuit U.S. Court of Appeals (Gordon Gravelle v. Kaba Ilco Corp. et al., No. 18-1937, Fed. Cir., 2018 U.S. App. LEXIS 34613).
WASHINGTON, D.C. — Allegations that various defaulting respondents imported spine boards, cervical collars, CPR masks, training manikins and product literature that infringed the trade dress of two medical device makers were erroneously rejected by the International Trade Commission (ITC) as inadequately pleaded, the Federal Circuit U.S. Court of Appeals ruled Dec. 7 (Laerdal Medical Corp., et al. v. International Trade Commission, No. 17-2445, Fed. Cir., 2018 U.S. App. LEXIS 34465).