- Volume 19, Issue #10
- 4th Circuit Adopts Octane Evidence Standard For Fee Awards In Lanham Act Cases
RICHMOND, Va. - In a May 29 ruling, the Fourth Circuit U.S. Court of Appeals held that a prevailing party under the Lanham Act, 15 U.S.C. 1117(a), is entitled to an award of attorney fees upon establishing exceptionality by a preponderance of the evidence (Verisign Inc. v. XYZ.com LLC, et al., No. 17-1704, 4th Cir.).
- 5th Circuit Upholds Validity Of 'Krusty Krab' Trademark, Judgment
NEW ORLEANS - The Fifth Circuit U.S. Court of Appeals on May 22 ruled that a Texas federal judge did not err in granting Viacom International Inc. summary judgment on its allegation that plans to name a restaurant "The Krusty Krab" would represent trademark infringement (Viacom International Inc. v. IJR Capital Investments LLC, No. 17-20334, 5th Cir., 2018 U.S. App. LEXIS 13331).
- False Advertising Counterclaims Dismissed By Illinois Federal Judge
CHICAGO - Allegations by Becton, Dickinson and Co. that a competitor falsely advertised its medical sharps as the "safest in the world" fail as a matter of law, an Illinois federal judge ruled May 20 (Daniels Sharpsmart Inc. v. Becton, Dickinson and Co., No. 17-6940, N.D. Ill., 2018 U.S. Dist. LEXIS 84314).
- 9th Circuit Again Reverses Trade Dress Functionality Finding
SAN FRANCISCO - For the second time in three years, the Ninth Circuit U.S. Court of Appeals on June 5 vacated and remanded a California federal judge's finding that the use of the color bright green for foam ear plugs is functional and thus unprotectable as trade dress (Moldex-Metrix Inc. v. McKeon Products Inc., No. 16-55548, 9th Cir, 2018 U.S. App. LEXIS 15064).
- Nevada Federal Judge Won't Reconsider Dismissal Of False Advertising Claim
LAS VEGAS - A November 2017 order that dismissed with prejudice allegations of copyright misuse, intentional interference with prospective economic advantage and false advertising by Oracle International Corp. will not be reconsidered, a Nevada federal judge ruled June 5 (Rimini Street Inc. v. Oracle International Corp., No. 14-1699, D. Nev., 2018 U.S. Dist. LEXIS 94585).
- Judge Dismisses UCL, Lanham Act Claims, Finds Statements Were Not Misleading
SAN JOSE, Calif. - After finding that statements made on a trademark filing service company's website would not likely mislead consumers, a California federal judge on May 25 granted the company's request to dismiss claims for violation of California's unfair competition law (UCL) and the Lanham Act and for false advertising asserted by a law firm, its owner and a trademark search service company (Legalforce RAPC Worldwide, P.C., et al. v. Trademark Information International LLC, et al., No. 17-cv-07354, N.D. Calif., 2018 U.S. Dist. LEXIS 88506).
- 6th Circuit: Injunction Properly Denied In 'Trick Pony' Trademark Case
CINCINNATI - The Sixth Circuit U.S. Court of Appeals on May 31 found that a Tennessee federal judge properly concluded that a trademark infringement plaintiff is not entitled to a preliminary injunction barring the band "Trick Pony" from touring under its name (PGP LLC v. TPII LLC, et al., No. 17-6221, 6th Cir., 2018 U.S. App. LEXIS 14315).
- Extension Of Time To Oppose Report Sought In Copyright, Trademark Case
NEW YORK - In a June 13 letter motion, plaintiffs' attorneys requested a two-week extension to file objections to a June 8 New York federal magistrate judge's recommendation that they be awarded a default judgment on just three of seven counts of copyright infringement (Conan Properties International LLC, et al. v. Ricardo Jove Sanchez, No. 17-162, E.D. N.Y., 2018 U.S. Dist. LEXIS 98631).
- California Federal Judge Won't Disqualify Counsel In 'Twit' Trademark Case
SAN FRANCISCO - Efforts by a trademark infringement plaintiff to disqualify counsel for Twitter Inc. on the basis of a prior relationship with the plaintiff surrounding patent litigation which never materialized were rejected June 1 by a California federal judge (TWiT LLC v. Twitter Inc., No. 18-341, N.D. Calif., 2018 U.S. Dist. LEXIS 92321).
- 6th Circuit Turns Away Appeal Of Denied Dismissal Of Trademark Claims
CINCINNATI - A Michigan federal judge's order denying dismissal of trademark infringement allegations will not be reviewed by the Sixth Circuit U.S. Court of Appeals at this time, the court announced May 23 (In re: MovingSites LLC, No. 18-102, 6th Cir., 2018 U.S. App. LEXIS 13716).
- Louisiana Federal Judge Dismisses Copyright, Trademark Claims
NEW ORLEANS - A copyright and trademark infringement plaintiff's effort to establish jurisdiction in Louisiana based upon a defendant's access of a computer server there was unsuccessful May 29, when a Louisiana federal judge found that it is unclear whether the access was without permission (Future World Electronics LLC v. Results HQ LLC, No. 17-17982, E.D. La., 2018 U.S. Dist. LEXIS 88979).
- 5th Circuit Affirms: Personal Jurisdiction Lacking In Trademark Case
NEW ORLEANS - A corporate trademark infringement claim was properly granted dismissal for lack of personal jurisdiction because the corporation has never solicited business in Texas, maintains no physical presence in Texas, and its owner and co-defendant was only ever in Texas on a flight layover, the Fifth Circuit U.S. Court of Appeals affirmed June 13 (GreatFence.com Inc. v. A Great Fence LLC, et al., No. 17-20487, 5th Cir., 2018 U.S. App. LEXIS 15888).
- Mark Licensee Defends Standing To Sue Kardashians For Infringement In 11th Circuit
ATLANTA - A makeup distributer tells the 11th Circuit U.S. Court of Appeals in a May 24 reply brief that as licensee of the "Kroma" trademark, it has a reasonable interest to protect the mark, thereby establishing its standing to sue reality TV stars the Kardashians for vicarious infringement via a similarly named line of makeup (Kroma Makeup EU LLC v. Kimberly Kardashian, No. 17-14211, 11th Cir.).