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Seventh Circuit Slaps Online Marketer with Default Judgment, Permanent Injunction

A unanimous panel of the US Court of Appeals for the Seventh Circuit upheld a default judgment and permanent injunction against an online marketer for trademark infringement, false advertising, dilution, unfair competition under the Lanham Act, and claims under Illinois statutory and common law. Quincy Bioscience, LLC v. Ellishbooks, et al., Case No. 19-1799 (7th Cir. Apr. 24, 2020) (Wood, J.). Quincy Bioscience develops, markets and sells the dietary supplement Prevagen® for the support of cognitive function. Ellishbooks sold various products on Amazon, including dietary supplements identified as Prevagen®. Ellishbooks was not authorized to sell Prevagen® products, however. Quincy brought this action against Ellishbooks alleging violations of the Lanham Act and violations of Illinois statutory and common law, and seeking preliminary and permanent injunctive relief to prevent Ellishbooks from using the Prevagen® mark and falsely representing that it was...

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Thank You to Our Readers

We greatly appreciate our readers over the past year and are pleased to share that we were recently recognized for our intellectual property thought leadership in the 2020 JD Supra Readers’ Choice Awards, which acknowledge top authors and firms for their thought leadership in key topics during all of last year. Eleanor Atkins, a regular contributor to IP Update, was recognized as “Top Author” for trademarks. She focuses her practice on trademark, copyright, sweepstakes and promotions, and false advertising matters. Through our various blogs and thought leadership pieces, we are dedicated to maintaining our position as a leading firm for intellectual property work and keeping clients abreast of significant and relevant topics in the industry.

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CBD Products in the Time of COVID-19: Best Practices for Making Your (Trade)mark

In the midst of an unprecedented and unsettling global pandemic, one constant remains: certain entrepreneurial-minded folks will not miss the opportunity to file trademark applications for new “brands” that align with the latest news cycle. COVID-19 is no different. The United States Patent and Trademark Office (USPTO) has experienced a swell of new US trademark applications for COVID-related trademarks, with many of the marks using descriptive terms or phrases that have become commonplace in a shelter-in-place, #wfh and social distancing world. Unfortunately for the applicants of these pandemic-related trademarks, very few are likely to achieve registration. In many cases, applicants of “news cycle” trademarks are unable to demonstrate the requisite bona fide intent to use a trademark, or they never get around to actually using the mark in commerce. In other cases, the USPTO might find a COVID-related trademark to be “merely descriptive” of the applied-for...

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Supreme Court: Profit Disgorgement Available Remedy for Trademark Infringement, Willful or Not

Resolving a split among the circuits regarding whether proof of willfulness is necessary for an award of a trademark infringer’s profits, the Supreme Court of the United States issued a unanimous decision holding that the plain language of the Lanham Act has never required a showing of willful infringement in order to obtain a profits award in a suit for trademark infringement under §1125(a). Romag Fasteners, Inc. v. Fossil, Inc., et al. Case No. 18-1233 (Supr. Ct. Apr. 23, 2020) (Gorsuch, Justice) (Alito, Justice, concurring) (Sotomayor, Justice, concurring). Background Romag sells magnetic snap fasteners under its ROMAG registered trademark. Fossil sells handbags and leather fashion accessories that are made by authorized manufacturers and include ROMAG fasteners pursuant to an agreement between the parties. When Romag discovered that one of Fossil’s authorized manufacturers had used counterfeit ROMAG fasteners in its products, Romag sued Fossil for...

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Stratus Update: Federal Circuit Affirms TTAB Refusal to Register Telecoms Mark

The US Court of Appeals for the Federal Circuit affirmed a US Patent & Trademark Office (PTO) Trademark Trial and Appeal Board (TTAB) refusal to register the mark STRATUS over the existing registration for STRATA, finding a likelihood of confusion between the two marks. Stratus Networks, Inc. v. UBTA-UBET Communications, Inc., Case No. 19-1351 (Fed. Cir. Apr. 14, 2020) (Reyna, J.). Stratus Networks, a telecommunications provider, filed an application at the PTO seeking to register its STRATUS mark: UBTA-UBET Communications, also a telecommunications provider, owns a PTO registration for its STRATA mark: UBTA opposed Stratus’s application for the STRATUS mark based on a likelihood of confusion with its registered STRATA mark. The TTAB found a likelihood of confusion and refused registration of the STRATUS mark. Stratus appealed, arguing that the two marks had coexisted for more than six years without confusion. The Lanham Act bars the registration of...

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No Disgorgement When Injunction is Sufficient Remedy

Addressing issues related to the disgorgement of profits and attorneys’ fees in a trademark infringement lawsuit, the US Court of Appeals for the Eighth Circuit affirmed a denial of such fees and profits. Safeway Transit LLC and Aleksey Silenko v. Discount Party Bus, Inc., Party Bus MN LLC, and Adam Fernandez, Case No. 18-2990 (8th Cir. Apr. 6, 2020) (Smith, J.). In 2000, Alex Fernandez started Party Bus MN, which was the first party-bus company in the Twin Cities region. In 2004, Fernandez formed Discount Party Bus Co., LLC (DPB).  Fernandez also used the names “Rent My Party Bus” and “952 Limo Bus” in print advertising before 2008. In September 2008, Aleksey Silenko formed Party Bus MN LLC and registered the domain name A month later, Silenko changed the name of the company to Safeway Transit LLC and registered the domain name From 2008 to 2015, Safeway displayed decals reading “Rent My Party Bus,” “952 Limo Bus” and...

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Federal Circuit Confirms Color Marks of Certain “Character” Can Be Inherently Distinctive for Product Packaging

Reviewing a decision from the United States Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board, the Federal Circuit vacated and remanded the Board’s refusal to register a trademark consisting of a gradient of multiple colors applied to product packaging, and relied on Supreme Court precedent in concluding that color marks can be inherently distinctive when used on product packaging “depending upon the character of the color design.” In re Forney Industries, Inc., Case No. 2019-1073 (Fed. Cir. Apr. 8, 2020) (O’Malley, J.)[precedential]. Background Metalworking company Forney Industries, Inc., appealed a decision of the Trademark Trial and Appeal Board, which affirmed the USPTO Examining Attorney’s refusal to register Forney’s applied-for trademark consisting of a “solid black stripe …[atop]… the color yellow which fades into the color red… located on… packaging and/or labels” for various welding and machining goods. Citing an amalgamation...

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Belt Fastener Trade Dress Conveyed as Invalid for Being Functional

The US Court of Appeals for the Seventh Circuit affirmed a district court finding that a trade dress for a conveyor belt fastener was invalid as functional because its utilitarian advantages were disclosed in patents, advertising materials and internal corporate documents. Flexible Steel Lacing Co. v. Conveyor Accessories, Inc., Case No. 19-2035 (7th Cir. Apr. 7, 2020) (Ripple, J.). Flexco manufactures and sells accessories for conveyor belts. Many conveyors belts are an “endless belt” made up of several pieces of rubber spliced or held together with belt fasteners or clips. Flexco sued Conveyor Accessories (CAI) for infringement of its trademark registration covering “a three-dimensional configuration of the curved beveled scalloped upper edge of a metal fastener,” which is shown in solid lines in the drawing below. Flexco’s belt fastener was also disclosed in an expired utility and design patent. A figure in the utility patent shows a leading edge (46) of a...

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Hair of the Dog? Squeaker Toy Is Expressive Work

Addressing whether a dog toy meant to humorously evoke a bottle of whiskey was entitled to First Amendment protection, the US Court of Appeals for the Ninth Circuit held that the toy was a protectable expressive work. The Ninth Circuit vacated and remanded the district court’s finding of trademark infringement, reversed the judgment on dilution, and upheld the validity of the whiskey proprietor’s trademark and trade dress rights. VIP Products LLC v. Jack Daniel’s Properties, Inc., Case No. 18-16012 (9th Cir. Mar. 31, 2020) (Hurwitz, J.).   VIP Products sells the “Bad Spaniels Silly Squeaker” dog toy (on the left above). The design of the dog toy is similar, but not identical, to the Jack Daniel’s (JDPI) whiskey bottle, and some of the textual elements vary as well. For example, JDPI’s “Old. No. 7” has been replaced by “Old No. 2” on the dog toy, and underneath this text, VIP’s product says “On Your Tennessee Carpet” where JDPI’s product reads “Tennessee...

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No Trade Dress Protection for Functional Shape and Color Scheme

Addressing the scope of trade dress protection, the US Court of Appeals for the Fourth Circuit found that the shape and color scheme of a product was functional and therefore only eligible for patent law’s protection of utilitarian inventions. CTB, Inc. v. Hog Slat, Inc., Case No. 18-2107 (4th Cir. Mar. 27, 2020) (Wynn, J.) (Keenan, J. concurring) (Rushing, J. concurring). CTB owns a trade dress registration covering the octagonal shape and red and gray color scheme of its chicken feeder products. CTB sued Hog Slat for infringement of the trade dress. The district court granted Hog Slat’s motion for summary judgment, finding that the shape and color scheme of the feeder products is functional, and trade dress protection is therefore not available. CTB appealed. The Fourth Circuit affirmed the district court’s grant of summary judgment. Addressing trade dress infringement under the Lanham Act and North Carolina common law, the Court held that a feature is...

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