SOUTH BEND, Ind. — Efforts by Wal-Mart.com USA LLC and a co-defendant to move allegations of trademark infringement to the U.S. District Court for the Northern District of California were unsuccessful Dec. 6, when an Indiana federal magistrate judge found that “the only factor that narrowly favors transfer is convenience of the third-party Chinese witnesses” (Dwyer Instruments Inc. v. Wal-Mart.com USA LLC, et al., No. 17-636, N.D. Ind., 2017 U.S. Dist. LEXIS 200566).
DALLAS — Efforts by a defendant to obtain dismissal of trademark infringement allegations stemming from the use of — among other things — a million-dollar bill bookmark in connection with a literacy program were unsuccessful on Dec. 5, when a Texas federal judge denied the request (Springboards to Education v. Demco Inc., et al., No. 16-2398, N.D. Texas).
WEST PALM BEACH, Fla. — Citing a lack of personal jurisdiction over two defendants accused of violating the Telephone Consumer Protection Act (TCPA), a Florida federal judge on Dec. 1 reversed course, vacating his earlier finding that unsolicited facsimile (fax) advertisements bearing the “Ulesfia” trademark were sent on behalf of the mark owner (S.A.S.B. Corporation, et al., v. Concordia Pharmaceuticals Inc., et al., No. 16-14108, S.D. Fla., 2017 U.S. Dist. LEXIS 199021).
ST. LOUIS — In a Nov. 20 appellee brief, the defendant in a long-running dispute over the “Sealtight” and “Sealtite” trademarks asks the Eighth Circuit U.S. Court of Appeals to affirm a trial court’s judgment in its favor, citing its opponent’s fraud on the U.S. Patent and Trademark Office (PTO), as well as a lapse in the plaintiff’s registration for its purportedly incontestable trademark (B&B Hardware Inc. v. Hargis Industries Inc., No. 17-1570 and 17-1755, 8th Cir.).
WASHINGTON, D.C. — A Ninth Circuit U.S. Court of Appeals ruling deepened a circuit split on the interpretation of good faith adoption of a regional, common-law trademark under the Tea Rose-Rectanus doctrine, a furniture manufacturer argues in a Nov. 13 petition for certiorari, asking the U.S. Supreme Court to provide guidance on the matter (Omnia Italian Design Inc. v. Stone Creek Inc., No. 17-731, U.S. Sup.).
SAN FRANCISCO — A dispute between two beauty product suppliers will proceed in California federal court but without a claim for trademark infringement against an individual defendant, a federal magistrate judge ruled Nov. 27 (BioZone Laboratories Inc. v. Next Step Laboratories Corporation and Richard Rigg, No. 17-2768, N.D. Calif., 2017 U.S. Dist. LEXIS 194454).
SEATTLE — Although denying a trademark infringement plaintiff summary judgment, a Washington federal judge on Nov. 29 rejected assertions by defendants in the case that they “strictly proved” trademark abandonment (Kische USA LLC v. Ali Simsek, et al., No. 16-168, W.D. Wash., 2017 U.S. Dist. LEXIS 196191).
WASHINGTON, D.C. — A decision by the Trademark Trial and Appeal Board to deny two trademark registration applications for “Magnesita” on grounds that the marks are generic for refractory products was not erroneous, the Federal Circuit U.S. Court of Appeals concluded Nov. 27 (In re: Magnesita Refractories Company, No. 16-2345, Fed. Cir., 2017 U.S. App. LEXIS 23845).
CHICAGO — Efforts by two defendants to obtain dismissal of allegations they committed copyright and trademark infringement by copying and exhibiting photographs by the late Vivian Maier were unsuccessful on Nov. 20, when an Illinois federal judge deemed claims by a public administrator appointed to Maier’s estate upon her death in 2009 adequately pleaded (The Estate of Vivian Maier v. Jeffrey Goldstein, et al., No. 17-2951, N.D. Ill., 2017 U.S. Dist. LEXIS 191294).
SAN FRANCISCO — Two broadcasters were properly granted a summary judgment that their use of the name “Empire” is protected under the First Amendment to the U.S. Constitution, the Ninth Circuit U.S. Court of Appeals ruled Nov. 16 (Twentieth Century Fox Television, et al. v. Empire Distribution Inc., No. 16-55577, 9th Cir.).
ST. LOUIS — A South Dakota organization affiliated with the Sturgis Motorcycle Rally tells the Eighth Circuit U.S. Court of Appeals in a Nov. 6 brief that a jury correctly found its “Sturgis” trademarks to be valid and infringed by the sale of unlicensed Sturgis items. However, the plaintiff appeals a post-verdict ruling that vacated a damages award for the infringement (Sturgis Motorcycle Rally Inc. v. Rushmore Photo & Gifts Inc., et al., Nos. 17-1762, -1869, -2712 and -2731, 8th Cir.).
WASHINGTON, D.C. — Findings by the Trademark Trial and Appeal Board that the “Sensi” trademark in Class 5 of the Trademark Classifications for Goods and Services for diapers would likely cause confusion with two previously registered marks for “Sensi-Care” for use in connection with a treatment for diaper rash were not erroneous, the Federal Circuit U.S. Court of Appeals ruled Nov. 13 (In re: P.T. Arista Latindo, No. 17-1292, Fed. Cir., 2017 U.S. App. LEXIS 22637).
SAN FRANCISCO — In a Nov. 6 brief, Jack in the Box Inc. asks the Ninth Circuit U.S. Court of Appeals to affirm a trial court’s finding that a former franchisee engaged in infringement by continuing to use the “Jack in the Box” trademarks after its franchise agreement was terminated for contractual breaches (Jack in the Box Inc. v. Deepak Mehta, et al., No. 17-15336, 9th Cir.).
FORT LAUDERDALE, Fla. — A Florida federal judge on Nov. 8 granted Gucci America Inc.’s motion for a preliminary injunction against 75 website operators that the plaintiff said were selling counterfeit goods bearing the “Gucci” mark, finding Gucci “very likely” to succeed in its trademark infringement claims (Gucci America Inc. v. 532buy.com, et al., No.0:17-cv-62068, S.D. Fla.).
NEW YORK — A New York federal judge did not err in rejecting allegations that a licensee violated the Digital Millennium Copyright Act (DMCA), 17 U.S.C. § 1201(a), when it modified security measures to prevent two software programs from self-enforcing certain licensing restrictions because the plaintiffs failed to demonstrate the copyrightability of the underlying programs, the Second Circuit U.S. Court of Appeals ruled Nov. 8 (Dynamic Concepts Inc. and Point 4 Data Corp. v. Tri-State Surgical Supply, et al., Nos. 15-0563, -3212, 2nd Cir., 2017 U.S. App. LEXIS 22348).
WASHINGTON, D.C. — A Texas federal judge’s denial of a motion to dismiss a declaratory judgment action relating to patent, copyright and trade dress protection for fiberglass utility bodies for use with trucks was affirmed Nov. 7 by the Federal Circuit U.S. Court of Appeals, which agreed that an actual case or controversy existed between the parties (Industrial Models Inc. v. SNF Inc., et al., Nos 17-1172, -1173, Fed. Cir.).
SAN JOSE, Calif. — Responding to discovery disputes by the parties in a lawsuit alleging monopolization and false advertising of patents for specialty medical software, a California federal judge on Nov. 6 clarified a previous order compelling production, differentiating between fact and opinion work product in the context of waiver of privilege (Cave Consulting Group Inc. v. OptumInsight Inc., No. 3:15-cv-03424, N.D. Calif, 2017 U.S. Dist. LEXIS 183672).
NEW YORK — A New York federal judge did not err in determining, following a bench trial, that a declaratory judgment plaintiff’s bag closure products do not infringe or dilute a competitor’s trade dress, the Second Circuit U.S. Court of Appeals concluded Nov. 2 (Schutte Bagclosures Inc. and Schutte Bagclosures B.V. v. Kiwk Lok Corporation, No. 16-2767, 2nd Cir., 2017 U.S. App. LEXIS 21864).
SAN FRANCISCO — Two companies claiming ownership of the “Lush” trademark debate in briefs to the Ninth Circuit U.S. Court of Appeals whether a cosmetics firm’s infringement claim was barred under the doctrine of laches and whether it was filed within the statute of limitations (Pinkette Clothing Inc. v. Cosmetic Warriors Limited, No. 17-55325, 9th Cir.).
RICHMOND, Va. — Retailers Variety Stores Inc. and Wal-Mart Stores Inc. recently briefed the Fourth Circuit U.S. Court of Appeals on whether Wal-Mart infringed Variety’s “The Backyard” trademark and whether the amount of disgorged profits was properly limited to $32 million (Variety Stores Inc. v. Wal-Mart Stores Inc., No. 17-1503 and 17-1644, 4th Cir.).