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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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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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Seventh Circuit Formally Adopts Octane Fitness Standard for Trademark Cases

TRADEMARKS / ATTORNEY’S FEE AWARD The US Court of Appeals for the Seventh Circuit officially joined its sister circuits in holding that the Supreme Court standard for awarding attorney’s fees in patent cases, set forth in Octane Fitness, LLC v. ICON Health & Fitness, Inc., was equally applicable to attorney’s fees claims under the Lanham Act. In doing so, the Seventh Circuit overruled its prior holding that a plaintiff’s claims were only “exceptional” under the Lanham Act if they constituted an abuse of process. LHO Chicago River, LLC v. Perillo, Case. No. 19-1848 (7th Cir. Nov. 8, 2019) (Manion, J). LHO Chicago, owner of the Hotel Chicago, sued defendants after the defendants opened a competing “Hotel Chicago” three miles from the plaintiff’s hotel. After more than a year of litigating, LHO moved to voluntarily dismiss its claims with prejudice, and the district judge granted the motion. Defendants then moved for attorney’s fees under § 1117(a) of the...

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