Opinions — Friday, January 16, 2026

The Seventh Circuit reversed the district court's grant of a preliminary injunction to Illinois Tamale Company (Iltaco) enjoining Little Caesars' use of "Pizza Puff" in its marketing for "Crazy Puffs," and affirmed the denial of the preliminary injunction as to "Crazy Puffs" and "Puff." Iltaco alleged Section 32 registered mark infringement and Section 43(a) false designation based on its registered "Pizza Puff" and "Puff" marks. The court held that Iltaco failed to demonstrate likelihood of success on the merits because it did not establish that "Pizza Puff" was protectable or overcome Little Caesars' fair use defense. The district court applied an incorrect legal standard for determining genericness—asking whether competitors could compete effectively without using the term—rather than the statutory "primary significance" test under Section 1064(3). Under the correct standard, Little Caesars' evidence, including a Teflon survey showing 83.3% of consumers perceived "pizza puff" as a common term, crowdsourced dictionary definitions, and third-party USPTO registrations using "pizza puff" descriptively, sufficiently overcame the presumption of validity for Iltaco's incontestable mark.

The case is significant for its application of the genericness analysis to incontestable marks and its treatment of the fair use defense under Section 1115(b)(4). The court held that consumer survey data showing over 80% generic perception constitutes strong evidence of genericness despite the heightened presumption afforded incontestable marks, rejecting the district court's reliance on dicta suggesting that 10% brand association could suffice to avoid a genericness finding. On fair use, the court corrected the district court's error in requiring the challenged term to describe the product itself, clarifying that a term is descriptive for fair use purposes if it "refer[s] to a characteristic" of the defendant's goods, not whether the defendant's product matches the term's primary definition. The court found "Pizza Puff" plausibly descriptive of Little Caesars' "puffy" dough filled with pizza ingredients used in the phrase "4 Hand-Held Pizza Puffs." The court also reaffirmed that when evaluating likelihood of confusion between "Crazy Puffs" and "Pizza Puff," marks must be considered in their entirety rather than by isolating common elements, and a district court may permissibly find no likelihood of confusion based heavily on mark dissimilarity even when other factors favor the plaintiff.

The First Circuit vacated dismissal of Lanham Act claims under 15 U.S.C. §§ 1114(1), 1125(a)(1)(A), and 1125(c) against Puerto Rico government officials sued in their personal capacities and remanded for further proceedings, but otherwise affirmed dismissal on a Rule 12(b)(6) motion. The sons of baseball player Roberto Clemente and two corporations they control sued the Governor, three agency secretaries, and the Puerto Rico Convention Center District Authority over the unauthorized use of Clemente's name and image on commemorative license plates and vehicle registration tags sold to fund a "Roberto Clemente Sports District." Plaintiffs alleged registered mark infringement (§ 1114), false association and false advertising (§ 1125(a)(1)(A) and (B)), and dilution (§ 1125(c)). The district court dismissed all claims, holding that plaintiffs failed to plausibly allege that defendants used the mark "in connection with goods or services." The First Circuit held that license plates and registration tags are "goods" within the Lanham Act's broad scope, rejecting the district court's conclusion that issuing motor vehicle plates is categorically non-commercial government activity beyond trademark law's reach. The circuit declined to adopt the restrictive definition of "use in commerce" from 15 U.S.C. § 1127, which applies to registration requirements rather than infringement claims.

The panel's analysis turned on whether government-issued commemorative license plates fall within the Lanham Act's "in connection with goods or services" element required for claims under §§ 1114 and 1125(a). Surveying sister-circuit precedent recognizing expansive definitions of "goods" and "services"—including non-profit political activities and various civic benefits—the court held that tangible license plates exchanged for payment qualify as goods, noting that federal courts have entertained Lanham Act cases involving infringing marks on license plates without questioning their status as protectable products. The court distinguished government's sovereign function of vehicle registration from the separately-funded commemorative items bearing Clemente's persona. The panel vacated dismissal only as to personal-capacity suits against individual officials, where sovereign immunity provides no shield, and remanded for development of whether the officials' conduct violated clearly established law for qualified immunity purposes. The court affirmed dismissal of official-capacity claims on sovereign immunity grounds and declined to exercise supplemental jurisdiction over state-law claims.

In re Jefferson Street Holdings LLC involves an appeal from the Patent Trial and Appeal Board in a reexamination proceeding (No. 90/019,270) that was voluntarily dismissed under Fed. R. App. P. 42(b) by agreement of the parties, with each side bearing their own costs.

In Masimo Corporation v. Apple Inc., No. 2024-1625, an appeal from a Patent Trial and Appeal Board decision in IPR2022-01299, the Federal Circuit dismissed the proceeding under Federal Rule of Appellate Procedure 42(b) based on the parties' agreement. Each side was ordered to bear its own costs.

The Federal Circuit affirmed summary judgment of noninfringement in favor of Nintendo against Gamevice's assertions of U.S. Patent Nos. 9,808,713 and 10,391,393, both titled "Game Controller with Structural Bridge." The patents cover an accessory device that attaches to a handheld computing device (like a smartphone or tablet) to provide game controls via buttons and joysticks. The court held that the Nintendo Switch does not infringe because it lacks the claimed "input module apertures" that "secure an instructional input device," affirming on that ground alone without reaching whether the Switch has the required "confinement structures."

The court's analysis turned on the claim term "each" requiring all apertures to individually secure their respective input devices—both buttons and joysticks. Because the Switch joysticks are undisputedly secured by screws rather than apertures, the court found no infringement even assuming the buttons were secured by apertures. The court rejected Gamevice's argument that the holes secure buttons by sizing them smaller than the buttons' flanges, reasoning that under this theory the wall material surrounding the holes—not the holes themselves—would perform the securing function, a construction never requested below and unsupported by the specification. The court also declined to read "secure" as encompassing additional structural components like flanges or screws absent clear redefinition in the intrinsic record.

The Federal Circuit affirmed-in-part and reversed-in-part the district court's judgment following a bifurcated jury trial in which Sunoco Partners Marketing & Terminals L.P. sued Magellan Midstream Partners L.P. and Powder Springs Logistics, LLC for infringement of claims from three patents covering systems and methods for blending butane with gasoline at tank farms. The court affirmed the district court's damages rulings and judgment as a matter of law of no infringement on certain claims, but reversed in part the district court's eligibility determination under 35 U.S.C. § 101.

The appeal presented distinct questions about how Sunoco's profit-sharing business model—under which it constructs blending systems, supplies butane, and shares profits with licensees rather than charging per-gallon royalties—mapped onto reasonable royalty calculations, as well as whether method and system claims incorporating calculations and automated control of physical blending processes satisfied § 101. The court's treatment of the damages issues required evaluating whether Dr. Ugone's profit-sharing apportionment methodology reliably isolated the value attributable to the patented features from bundled services, butane supply, and proprietary algorithms, while the eligibility analysis turned on whether the claims were directed to abstract ideas or instead integrated the calculations into practical industrial processes with physical transformation.