Opinions — Thursday, July 30, 2026

The Eighth Circuit affirmed the district court's bench trial decision canceling Weems Industries' registered trademark in the color chartreuse as applied to water hoses and awarding defendant Teknor Apex over three million dollars in attorneys' fees. Weems brought claims under Lanham Act §§ 32 and 43(a)(1)(A) for infringement of its registered color mark when Teknor introduced fluorescent green and yellow hoses. The district court held that Weems's mark was invalid both because chartreuse on water hoses is a functional feature and because the color lacked acquired distinctiveness; the Eighth Circuit affirmed on functionality grounds alone, applying the TrafFix standard that a feature is functional if it affects the cost or quality of the article. The court held that Teknor firmly rebutted the presumption of validity that attaches to registered marks under 15 U.S.C. § 1057(b), relying principally on Weems's own extensive advertising touting the safety benefits of high-visibility chartreuse hoses in preventing tripping accidents. The court rejected Weems's argument that functionality requires a feature to improve the "operation" of goods in a narrow mechanical sense, holding instead that enhanced visibility affecting safety constitutes a quality improvement sufficient to establish functionality under TrafFix.

The court's treatment of both functionality evidence and the exceptional-case fee award merits attention. On functionality, the court gave dispositive weight to the trademark owner's own utility advertising, characterizing Weems's promotional emphasis on chartreuse's safety benefits as "strong evidence of functionality" under McCarthy § 7:74, and held that patent evidence describing chartreuse's visibility advantages in unrelated product categories (road signs, softballs) remained probative even though the patents did not involve water hoses. The court also rejected the argument that availability of alternative high-visibility colors defeats functionality, reaffirming that under Pocket Plus competitors need not explore alternative designs when a feature affects product quality. On attorneys' fees under 15 U.S.C. § 1117(a), the court held that plaintiff's lack of candor before the USPTO—specifically, withholding promotional materials emphasizing visibility after the examining attorney expressly requested "any material that relates specifically to the applied-for color mark" and warned that functional features cannot be registered—combined with extensive baseless evidentiary objections and witness credibility problems, rendered the case "exceptional" under Octane Fitness's totality-of-the-circumstances standard and that fees bore a sufficient causal nexus to the misconduct because the defective registration "allowed Weems to drag Teknor into this case in the first place."

The Ninth Circuit reversed in part and affirmed in part a post-jury-trial judgment in favor of Multiple Energy Technologies, LLC against Seth Casden, CEO of competitor Hologenix. The case arose from MET's claims that Casden violated § 43(a)(1)(B) of the Lanham Act by making false advertising statements that Hologenix's bioceramic product Celliant had been FDA-approved or determined by the FDA to have health benefits, in breach of a prior settlement agreement, and that Casden tortiously interfered with that settlement agreement under California law. The district court granted MET judgment as a matter of law on the tortious interference claim, awarding $2.5 million; the jury found for MET on the false advertising claim with nominal damages of one dollar, but the district court awarded disgorgement of Casden's 2020–2023 salary ($983,171), trebled that amount under 15 U.S.C. § 1117(a), and awarded approximately $600,000 in attorney's fees. The Ninth Circuit reversed the tortious interference judgment, holding that the district court misapplied California's agent's immunity doctrine by denying immunity merely because Casden acted for his "individual advantage"; the court held that an agent loses immunity only when acting outside the scope of agency—such as for his own benefit at the expense of the principal—not when acting in the principal's interest while also harboring self-interested motives. The court reversed the disgorgement award, holding that Casden's salary was not "defendant's profits" under § 1117(a) because MET failed to prove Casden's sales (as distinct from Hologenix's sales), and salary constitutes compensation and a business cost, not profits remaining after expenses. The court affirmed the attorney's fees award under § 1117(a), holding the district court did not abuse discretion in finding the case "exceptional" based on the jury's finding that Casden's representations were "deliberately or intentionally false."

The opinion's significance for false advertising practitioners lies in its strict construction of the "defendant's profits" disgorgement remedy under § 1117(a) when the defendant is an individual corporate officer rather than the entity making sales. The court held that salary paid to an individual defendant cannot serve as a proxy for that defendant's profits where the plaintiff failed to establish the individual's own sales, rejecting any conflation of an employee's compensation with the employing entity's sales-derived profits. This interpretation imports the statute's plain text requirement that plaintiff prove "defendant's sales" as a threshold matter before reaching profit calculation, and it applied the Supreme Court's recent Dewberry holding that profits must be "properly ascribable to the defendant itself." The ruling creates practical difficulties for plaintiffs seeking monetary relief from individual officers in false advertising cases, as salary disgorgement—a potentially significant deterrent—is foreclosed absent proof that the individual officer personally made sales. The decision also engages California state law on agent's immunity from tortious interference claims, holding that immunity turns on an objective test of whether the agent acted within the scope of agency (i.e., in the principal's interest, even if at the expense of a third-party contract) rather than a subjective inquiry into whether the agent harbored self-interested motives, and rejecting a "motives-only" test as administrably unworkable and doctrinally unsound.

The Federal Circuit affirmed the PTAB's final written decision finding claims 1–5, 7–9, 14, and 20 of G+ Communications' U.S. Patent No. 10,736,130 unpatentable as anticipated by a single prior art reference (Kwak). The '130 patent relates to methods for transmitting uplink control signals in 5G systems, and the central dispute turned on whether Kwak disclosed mapping N-length predefined sequences to N subcarriers, as required by claim limitation 1d. G+ argued that Kwak's Figure 44 necessarily used a "comb structure" that reserved alternating subcarriers for demodulation reference signals, leaving insufficient subcarriers to meet the claim limitation.

The court rejected G+'s procedural argument that the Board violated the APA by relying on an argument Samsung first raised at oral hearing, distinguishing Dell Inc. v. Acceleron, LLC on the ground that the "may" language at issue appeared in Kwak itself and G+ had briefed the relevant portions of the reference. On the merits, the court applied the substantial evidence standard and upheld the Board's finding that Kwak disclosed limitation 1d, emphasizing that a prior art reference anticipates even if it does so only in some modes of operation—here, embodiments of Figure 44 that did not employ a comb structure. The court credited expert testimony explaining that Figure 44 lacked visual indicators (shading) present in other Kwak figures that depicted comb structures.

The Federal Circuit reversed in part and vacated in part the district court's rulings in Schmeisser GmbH v. AC-Unity d.o.o., holding that distance-related claim terms in U.S. Patent No. 10,866,045—directed to a firearm cartridge magazine housing—were definite under 35 U.S.C. § 112. The district court had construed terms specifying "first distance (A)," "second distance (B)," "third distance (C)," and "offset (V)" as indefinite, granted partial summary judgment of invalidity and noninfringement to AC-Unity, and dissolved a preliminary injunction against AC-Unity. The Federal Circuit exercised pendent appellate jurisdiction over the non-appealable Markman and summary judgment orders because they were inextricably intertwined with the appealable preliminary injunction dissolution order.

The court held that the district court erred by conflating the definiteness inquiry with enablement and written description requirements under § 112. Although the district court acknowledged it readily understood what each distance term represented and that the distances were measurable once a magazine was built, it nonetheless found the claims indefinite because a skilled artisan allegedly could not calculate specific distance values needed to build an operable housing. The Federal Circuit clarified that definiteness requires only that claims inform skilled artisans about claim scope with reasonable certainty—here, whether a housing falls within the claimed distance parameters—not whether the specification enables one to make the design decisions necessary to build a working embodiment. The court reversed the indefiniteness determination where the claim language, specification figures, and prosecution history (including a successfully overcome indefiniteness rejection) all supported that the distance terms were clear and measurable.