IP Law Daily, WORTH NOTING—Other IP law developments, (Apr 1, 2022)

By WK Editorial Staff

A periodic roundup of other items of interest to the Intellectual Property community.

TRADEMARK—5th Cir.: The U.S. Court of Appeals in New Orleans has determined that a Texas federal district court did not err in concluding that it could not exercise personal jurisdiction over a nonresident manufacturer of a pool float product in a trademark infringement action when the defendant’s allegedly infringing product was sold on its website and the websites of national retailers and the plaintiff alleged only two sales of the product into Texas, both of which were purchases made by the plaintiff’s counsel. The plaintiff did not show that its trademark infringement and unfair competition claims “arose out of” the two sales that were made to its attorney because the plaintiff could not reasonably argue that the sales caused consumer confusion, the gravamen of any trademark infringement action. The district court also did not abuse its discretion in implicitly denying the plaintiff’s request for jurisdictional discovery. “The district court was not required to authorize a fishing expedition for [the plaintiff] to discover in the first instance whether or not it had actually been injured in Texas” (GetaGadget, LLC v. Jet Creations Inc., March 20, 2022, per curiam).

TRADEMARK—2d Cir.: The federal district court in Hartford, Connecticut, abused its discretion in rejecting a pizza restaurant operator’s request for a preliminary injunction against former licensees accused of improperly using the restaurant’s trademark, trade secrets, and know how in breach of a covenant not to compete, the U.S. Court of Appeals in New York City has held in a summary order. Colony Grill, Inc. (“CGI”) appealed the district court’s denial of its preliminary injunction to restrain the licensees’ use of the COLONY GRILL trademarks. First, the district court erroneously reviewed the preliminary injunction request under the standard applicable to a mandatory rather than a prohibitory injunction. An injunction to restrain the use of a trademark is prohibitory. Second, when evaluating the balance of harms and the public interest, the district court incorrectly stated that grant of the injunction would require the defendants’ restaurants to close rather than merely rebrand. On remand, the district court should reconsider the balance of harms and the public interest factors in view of rebranding of the defendants' restaurants. Finally, in evaluating the likelihood of success on the merits, the district court took insufficient account of the parties’ licensing agreements, which prohibited the defendants from challenging the validity and ownership of CGI’s trademarks. On remand, the district court was directed to consider whether the defendant’s abandonment through naked licensing challenge was barred by licensee estoppel (Colony Grill Development, LLC v. Colony Grill, Inc., March 30, 2022, per curiam).

COPYRIGHT OFFICE NEWS— Register of Copyrights Shira Perlmutter has announced the appointment of Jacqueline “Jacklyn” Napier as Assistant Register and Director of Operations of the United States Copyright Office. Napier will have responsibility for an extensive portfolio of financial, budget, and operational issues for the Office. Napier recently served as integrated risk management program manager and as deputy director of financial operations for the Department of the Navy, leading enterprise financial accounting and internal control operations for 19 budget offices. Previously, she held several senior positions, including acting director and deputy director of financial operations and deputy chief financial officer, with the U.S. Coast Guard and U.S. Customs and Border Protection. Napier succeeds Jody Harry, who retired in November 2021.

COPYRIGHT ROYALTY BOARD NEWS: As of March 24, 2022, the Copyright Royalty Judges have announced the withdrawal a proposed rule published June 25, 2021 (86 Fed. Reg. 33601) that would have set continued, unaltered rates and terms for subpart B configurations subject to the statutory license to use nondramatic musical works to make and distribute phonorecords of those works (the Mechanical License) in connection with this proceeding: Determination of Royalty Rates and Terms for Making and Distributing Phonorecords (Phonorecords IV), Docket No. 21-CRB-0001-PR (2023-2027). After receiving a relatively large number of negative comments regarding the proposed settlement from interested parties, the Judges concluded that the proposed settlement did not provide a reasonable basis for setting statutory rates and terms (87 Fed. Reg. 18342, March 30, 2022).

USPTO PATENT NEWS: The USPTO has announced that on April 4, it will publish a formal notice in the Federal Register memorializing its prior decision, effective March 11, 2022, to no longer grant requests to participate in the Global Patent Prosecution Highway (GPPH) fast track examination program at the USPTO when such requests are based on work performed by Russia’s Rospatent as an Office of Earlier Examination under the GPPH. For Rospatent-related applications the USPTO previously designated to received special status under the GPPH, the USPTO will remove that status and return those applications to the regular processing and examination queue. The USPTO has also terminated engagement with officials from the national intellectual property office of Belarus

USPTO TRADEMARK NEWS: The USPTO has postponed the deadline for USPTO.gov account holders to verify their identity in order to file documents through the Trademark Electronic Application System (TEAS) and TEAS international (TEASi). The previous deadline for mandatory verification was April 9, 2022. The PTO will announce a new deadline when appropriate and with reasonable notice. More information is available on the Identity verification for trademark filers webpage.

Attorneys: Matthew James Booth (Matthew J Booth & Associates PLLC) for Getagadget, LLC. Lindsey Marie Rames (Rames Law Firm, PC) for Jet Creations Inc. David J. Wolfsohn (Duane Morris LLP) for Colony Grill Development, LLC and Fairfield Colony, LLC. John R. Horvack, Jr. (Carmody Torrance Sandak & Hennessey LLP) for Colony Grill, Inc.

Companies: Getagadget, LLC; Jet Creations Inc.; Colony Grill Development, LLC; Fairfield Colony, LLC; Colony Grill, Inc.; Colony Grill of Stamford, LLC

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