Intellectual Property Research: Trademark Law

SYSCO MACHINERY CORPORATION, a Taiwan corporation, Plaintiff-Appellant, v. DCS USA CORPORATION, d/b/a Dorey Converting Systems, a North Carolina corporation, Defendant-Appellee, No. 24-1675. United States Court of Appeals, Fourth Circuit. July 9, 2025

“Yet one of the trade secret definitions Sysco used in its complaint includes “the Copyrighted Works,” a defined term that encompasses at least 23 apparently unredacted technical drawings deposited with the Copyright Office. J.A. 48. Sysco has not argued that it took any steps to preserve the confidentiality of those drawings or that there is a reason the Copyright Office did not make them open to public inspection. In context, we are convinced that any trade secrets Sysco might have had in those documents were “extinguished” when they were deposited. Sysco clarified at oral argument that it did not mean to include copyrighted works in the definition of its trade secrets, but its burden was to make that clear in the pleadings. The inclusion of copyrighted material is but another reason why Sysco has not plausibly alleged that it possessed a valid trade secret.”

IN RE: RANDY WAYNE WHITE, Appellant. No. 2024-1073. United States Court of Appeals, Federal Circuit. (July 10, 2025).

The Board’s conclusion—that a consumer would understand the YUCATAN SHRIMP mark to convey information about the dish offered at Mr. White’s restaurant—is supported by substantial evidence.

TTABlog discussion of YUCATAN SHRIMP here.

The Scotts Co. v The Procter & Gamble Co., 2:24-cv-4199 (S.D. Ohio June 27, 2025)

Miracle-Gro has an incontestable registration for a green and yellow rectangle depicted below (the cross-hatching being the Trademark Office color-designation code our tm lawyer ancestors labored under when designating colors in trademark applications):

Miracle-Gro sells a lot of plant food using this trade dress and in other green and yellow shaped packages, but it also sells some products that look like this:

Your marketing team at Proctor, wants to use this packaging for a weed killer:

Would you clear this packaging, in view of Miracle-Gro’s registration (and common-law usages)?

Before you answer, you should know: Spruce is a weed killer while Miracle-Gro sells, for the most part, plant food – although it does sell weed preventer. These are not competitive but might appear in the same aisle at Home Depot. Someone might use both products in a single day of gardening (that’s how the court put it).

Also: the shade of Miracle-Gro’s green is a light green reminiscent of a lawn, while the shade of Spruce’s green is, uh, spruce green.

Also, third-party usages in the categories include:

OK, Miracle-Gro goes for a prelim injunction. More facts: no instances of actual confusion. And the surveys showed confusion or no confusion, depending on who they were representing.

Held: Prelim denied. Scott has a low likelihood of success, as the trade dresses are too dissimilar.

-the greens are very different;

-the Spruce package has a transparent section;

-the proportion of green to yellow are meaningfully different;

-the use of different packaging by Miracle-Gro reduces the distinctiveness of its gree/yellow trade dress;

-the Spruce package has a big yellow dandelion; and

-the word SPRUCE acts a differentiating housemark.

Text of Scotts v Procter here.

43(b)log discussion of Scott v Procter here.

DI Reed v. Joi Marshall; Tonya Harris, aka Tonya Kelly; Myracle Hollowway, 24-20198, (5th Cir. July 2, 2025)

“Critical to resolving this dispute is understanding that Reed, Marshall, and Harris entered into joint ownership of the JADE mark—that is, each individual owns a complete interest in the mark. Joint ownership of a mark has two interconnected problems. First, a mark is fundamentally intended to “identify and distinguish a single commercial source,” not three distinct owners. 2 McCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 16:40 (5th ed. 2025). Second, any discord between co-owners could result in “multiple, fragmented use” that may result in “consumer confusion and deception.” Id. It is for these reasons that “joint ownership of a trademark is disfavored in the law,” and that in the instances it does occur, parties often enter into “contractual agreements” to clarify outcomes should owner interests become unaligned. Id.

Here, the parties failed to enter into a contractual agreement that defined their respective obligations; and some of the mark’s co-owners have had a falling out with another set of co-owners. But at bottom, the question before us is simpler: whether the Lanham Act, which is aimed at protecting consumers and mark owners from fraud and deceptive acts, provides an appropriate cause of action to remedy disputes between the co-owners of a trademark. The answer, for the reasons discussed below, is “no.”“

Approximately 80% of Schedule A Defendant (“SAD”) counterfeiting suits are brought in the Northern District of Illinois. The name refers to the captioned name of the defendants – usually “The Partnerships and Unincorporated Associations Identified on Schedule A.”

SAD litigations have been a topic of controversy in recent years. Plaintiffs may make aggressive assertions as to service of process, joinder, and the use of urgent relief regarding freezing defendants’ assets – which claims often go unchallenged in default scenarios. This creates an opportunity for a plaintiff to freeze and seize a lot of ill-gotten gains in one lawsuit. The Northern District of Illinois had, until recently at least, been accommodating to these suits – giving rise to the meme: The Northern District of Illinois vs. The Internet.

Over the past few weeks a judge in the ND Ill, Judge John Kness, has issued an order staying all of his pending SAD suits ( 14 to my count). The Judge will “reassess” his view on these suits (however it is unclear to what extent the Judge will conduct any sort of fact-finding or briefing in this regard).

The order(which appears to be identical in all 14 suits) provides a handy bullet point list spot-lighting the procedural questions raised by these suits:

“MINUTE entry before the Honorable John F. Kness: On the Court’s initiative, all pending motions are held in abeyance, and the case is stayed pending further order. This stay, which the Court is entering in other so-called “Schedule A” cases on its docket where requests for temporary restraining orders remain pending, is intended to permit the Court the opportunity to reassess its previous approach in Schedule A litigation involving Lanham Act, Copyright Act, and Patent Act claims typically brought on an ex parte basis against various online merchants.

This reassessment will consider, among other things, whether:

(1) ex parte proceedings are appropriate in these types of cases;

(2) the routine sealing of parts or all of the docket is appropriate;

(3) the routine granting of temporary restraining orders on an ex parte basis is a sound exercise of judicial discretion;

(4) the routine granting of prejudgment asset restraints is a sound exercise of judicial discretion; and

(5) the mass joinder of defendants is appropriate under the circumstances typically present in Schedule A cases.

Plaintiff remains free, of course, to dismiss this action voluntarily if they wish to pursue their claims in another District, but no supplemental briefing on the pending motions may be filed absent advance leave of Court.” (emphasis and formatting added)

The following SAD cases on Judge Kness’ docket appear to be stayed at this time:

Warner Bros. Entertainment Inc. v. The Partnerships And Unincorporated Associations Identified On Schedule A, N.D.Ill. 1:25-cv-06252

Universal City Studios LLC v. The Partnerships and Unincorporated Associations Identified on Schedule A N.D.Ill. 1:25-cv-05473

Garyck Truls Arntzen v. The Partnerships and Unincorporated Associations Identified on Schedule A N.D.Ill. 1:25-cv-05397

Toyota Motor Sales, U.S.A., Inc. v. The Partnerships and Unincorporated Associations Identified on Schedule A N.D.Ill. 1:25-cv-05874

Hong Kong Leyuzhen Technology Co. Limited v. yifang N.D.Ill. 1:25-cv-03183

GJL Holding Company LLC v. The Partnerships and Unincorporated Associations Identified on Schedule A N.D.Ill. 1:25-cv-04726

Jessica Rose Hanselmann v. The Partnerships and Unincorporated Associations Identified on Schedule A N.D.Ill. 1:25-cv-04639

Judge Kness entered a stay, and plaintiffs withdrew their litigation without prejudice in:

Fendi S.R.L. v. The Partnerships and Unincorporated Associations Identified on Schedule A et al N.D.Ill. 1:25-cv-04859

Milwaukee Electric Tool Corporation v. The Individuals, Corporations, Limited Liabiltiy (sic) Companies, Partnerships and Unincorporated Associations Identified on Schedule A Hereto N.D.Ill. 1:25-cv-01797

Spin Master Ltd. et al v. The Partnerships and Unincorporated Associations Identified on Schedule A N.D.Ill. 1:25-cv-03605

Spin Master Ltd. et al v. The Partnerships and Unincorporated Associations Identified on Schedule A N.D.Ill. 1:25-cv-03442

Pit Viper, LLC v. The Partnerships and Unincorporated Associations Identified on Schedule A N.D.Ill. 1:25-cv-04516

Christian Dior Couture, S.A. v. The Partnerships and Unincorporated Associations Identified on Schedule A N.D.Ill. 1:25-cv-04096

Nike, Inc. v. The Partnerships and Unincorporated Associations Identified on Schedule A N.D.Ill. 1:25-cv-04318

Prior press coverage on the growing resistance to SAD litgation reported here.