Societe Pour Loeuvre et la Memoire Dantoine de Saint Exupery – Succession De Saint Exupery-Dagay v. Schedule A Does, No. 25 C 579, Slip Op. (N.D. Ill. Oct. 3, 2025) (Durkin, J.).

Judge Durkin denied a Schedule A defendant’s motion to dismiss trademark claims centering on “The Little Prince,” novella rejecting arguments under Fed. Civ. P. R. 12(b)(2), 12(b)(5), and 12(b)(6), finding personal jurisdiction based upon an Illinois sale documented by plaintiff and declined to dismiss on service or fair-use grounds at the pleadings stage.

Key IP Rulings and Implications. The complaint plausibly alleged likelihood of confusion where the product listing not only referenced “the little prince” but visually emphasized the phrase in a way that could signal association. The Court treated the similarity inquiry as consumer-facing: would a buyer reasonably associate the product with the source of the registered mark? Under that standard, the Court allowed the claim to proceed notwithstanding aesthetic differences between the registered stylized mark and the listing’s text.

The Court next considered defendant’s fair use arguments, both descriptive and nominative. The Court noted that fair use defenses are fact-heavy defenses generally unsuited to Rule 12 motions, unless the complaint pleads the defense’s elements on its face. Plaintiff did not affirmatively plead the facts making a fair use case against it in this instance. Brand owners alleging misuse of famous titles and imagery (or trademarks) will be well-served to capture and preserve the listing context, including how the mark is presented and marketed to consumers.

Procedural Issues and Their Influence. The Court denied defendant’s Fed. R. Civ. P. 12(b)(2) jurisdiction challenge, crediting plaintiff’s claimed evidence of an actual sale into Illinois. That actual sale satisfied minimum-contacts requirements for specific jurisdiction.

The Court also rejected a Fed. R. Civ. P. 12(b)(5) challenge to plaintiff’s email service despite the fact that the Court previously authorized email service, and where defendant’s explanation for nonresponse amounted to internal staffing changes rather than a legal defect in service or not having received the service email.

Strategy Notes. Plaintiffs should lead with proof of an Illinois sale, preferably with purchase, shipment, and delivery documentation. Defendants seeking early dismissal should address jurisdiction with specificity and avoid relegating core arguments to reply briefs; thin jurisdictional showings—especially in the face of a documented Illinois transaction may not prevail.

Tee Turtle LLC v. Schedule A Does, No. 25 C 2910, Slip Op. (N.D. Ill. Oct. 9, 2025) (Coleman, J.)

Judge Coleman denied default judgment and dismissed Tee Turtle’s Schedule A case for lack of personal jurisdiction pursuant to Fed. R. Civ. P. 12(b)(2) after the plaintiff failed to offer evidence of even a single completed Illinois sale, shipment, or order confirmation, despite screenshots showing product listings and the ability to ship to an Illinois address in this copyright case. The decision underscores an increasingly consistent Northern District trend: for online marketplace defendants, a purchase into Illinois—or similarly concrete sales evidence—remains the most reliable jurisdictional anchor.

Key IP Rulings and Implications. Although Tee Turtle asserted Lanham Act and Copyright Act claims, the Court did not reach the merits because it did not have jurisdiction. In Schedule A cases involving foreign online sellers, plaintiffs cannot rely on “on information and belief” allegations or shopping-cart screenshots alone. The Court stressed the defendant-focused nature of specific jurisdiction and the need for evidence connecting the alleged infringement to Illinois. Practically, this means that plaintiffs should be ready to provide authenticated proof of an Illinois transaction—order confirmation, shipment data, and/or delivery records—to avoid early dismissal. The case is part of a line of decisions making clear that bare screenshots are insufficient when they do not reflect an actual sale into the forum. A test purchase likely would have solved these issues, although there is no guarantee of that.

Strategic Takeaways. For plaintiffs, invest early in test purchases and record trails that show order confirmations and shipments delivered to Illinois customers. Anticipate that screenshots of product pages with an Illinois address field will not suffice. For defendants, a clean record—no Illinois sales—paired with a prompt jurisdictional challenge can short-circuit default motions and asset restraints. Counsel should also expect courts to scrutinize affidavit support and to deny default judgment where jurisdiction is not clearly established on the record.

The Northern District and the Chicago Chapter of the Federal Bar Association are seeking nominations – no later than March 3, 2026 – for exceptional pro bono and public interest representation in civil and criminal matters before the Court.

Factors considered include: 

  • dedication to pro bono or public interest work;
  • outstanding achievement resulting from the representation of a large group of indigents, successful representation in a difficult case, outstanding negotiation and settlement skills in achieving a result without trial;
  • extraordinary number of hours committed to pro bono work; or
  • other distinguished performance. 

Nominations must pertain to work performed in the Northern District on matters that are fully resolved and no longer pending before the Court.

Nominations using this fillable form may be emailed to: ProBono_Awards_ILND@ilnd.uscourts.gov. Awards will be presented at the Court’s twenty-sixth annual awards ceremony on Friday, May 1, 2026, at 1:00 pm.

On February 11, 2026 from 3:00 p.m. to 4:30 p.m. the U.S. District Court for the Northern District of Illinois, in collaboration with the Federal Bar Association Chicago Chapter and the Black Women Lawyers’ Association of Greater Chicago, Inc., is hosting what promises to be an interesting and timely program titled “A Critical Review of the 1913 Federal Mann Act Prosecution of Jack Johnson”.

The program will explore the federal government’s use of the Mann Act against Jack Johnson – the first Black world heavyweight boxing champion.  Award-winning CBS News Chicago journalist Dorothy Tucker and Pulitzer Prize-winning biographer David Maraniss of The Washington Post will examine the prosecution, its legal significance and issues of race, power and the rule of law.

This free in-person event will take place at the U.S. District Court, Ceremonial Courtroom, Room 2525. Attendees will receive 1.5 hours of D&I CLE credit.

Please register by clicking here. 

RBG Plastics d/b/ Restaurantware, LLC v. Sparkles Gift & Party Shop, Inc., No. 24-cv-02155 (N.D. Ill. Sept. 29, 2025) (Valderrama, J.).

Judge Valderrama denied defendants’ motion to dismiss trademark infringement claims but granted dismissal of false advertising and Illinois Consumer Fraud Act (ICFA) claims in this dispute over plaintiff’s RESTAURANTWARE trademark.

As an initial matter, plaintiff RBG Plastics was correct that defendant Sparkles’ Fed. R. Civ. P. 12(c) motion was premature because RBG Plastics had not yet responded to Sparkles’ counterclaims. The Court, therefore, did not hear the Rule 12(c) motion, but following the lead of numerous other courts, it treated the motion as a Fed. R. Civ. P. 12(b)(6) motion and decided it based upon the motion to dismiss standard. Furthermore, while Sparkles’ Rule 12(b)(6) motion was late because it had already answered RBG’s complaint, the Court still decided it because it was already considering the Rule 12(c) grounds under the Rule 12(b)(6) standard.

On the trademark claims, the Court methodically analyzed the seven-factor likelihood of confusion test (except the degree of care factor because neither party addressed it in briefing), finding plaintiff RBG sufficiently pled most factors despite some conclusory allegations. The Court noted that the identical marks, similar products (food service items), and overlapping distribution channels supported confusion. While allegations of actual confusion and intent to “palm off” were conclusory, the Court held this did not defeat the claims at the pleading stage, noting the “fact-intensive analysis” typically required.

The Court rejected defendants’ fair use defense at this stage, stating it would not engage in the fact-intensive analysis fair use requires at the motion to dismiss stage.

However, the Court dismissed the false advertising claim under Rule 9(b)’s heightened pleading standard, finding plaintiff failed to identify any false statement of fact about defendants’ products. The Court distinguished trademark infringement from false advertising, noting the latter requires statements about “the nature, characteristics, qualities, or geographic origin” of goods.

The Court also dismissed the ICFA claim, holding plaintiff lacked standing as it was neither a consumer nor demonstrated the required “consumer nexus” showing market-wide impact.

Bala Bangles, Inc. v. The P’ships & Unincorporated Assocs. Identified on Schedule A, No. 23-cv-16721 (N.D. Ill. Sept. 26, 2024) (Valderrama, J.).

Judge Valderrama granted defendant Blueocean Furniture’s Fed. R. Civ. P. 12(b)(6) motion to dismiss in this Schedule A case, holding that plaintiff Bala Bangles failed to state a claim for patent infringement because it did not identify any specific accused Blueocean product.

The Court held that merely providing an internet store name and link in Schedule A, without identifying the actual product allegedly infringing the design patent, amounts to bare  allegations insufficient to meet plausibility requirements under Iqbal and Twombly. The Court cited Federal Circuit precedent requiring plaintiffs to sufficiently identify accused products “by photograph or name” rather than “by broad functional language.”

This decision reinforces that Schedule A plaintiffs cannot rely on generic allegations when asserting patent infringement claims. The Court distinguished patent pleading requirements from the more general allegations often accepted in trademark counterfeiting cases. Having failed to identify any specific infringing product from Blueocean, the Court dismissed the complaint without prejudice and dissolved the preliminary injunction as to Blueocean.

The Court also denied Blueocean’s request for sanctions because it was raised for the first time in reply, finding it would be “patently unfair” to consider arguments not raised in the opening brief.

The Kyjen Company, LLC v. The Individuals, Corporations, No. 23 C 15119 (N.D. Ill. Sept. 22, 2025) (Kendall, C.J.).

Chief Judge Kendall denied defendant ThinkPet’s motion for summary judgment in this trademark infringement case involving the “Fun Feeder” mark for slow feeder pet bowls. Kyjen alleged ThinkPet infringed its registered trademark by including “Fun Feeder” in Amazon product listings.

ThinkPet asserted a fair use defense, arguing it used the term descriptively. However, the Court found a genuine issue of material fact regarding whether ThinkPet acted in good faith. The Court explained that if evidence establishes the defendant “intends to trade on the good will of the trademark owner by creating confusion as to the source,” the use is not in good faith.

The Court found this case paralleled Promatek, where the Seventh Circuit held that using a competitor’s trademark in metatags to increase search visibility could constitute initial interest confusion. Similarly, Kyjen alleged ThinkPet used “Fun Feeder” for search engine optimization (SEO) to benefit from Kyjen’s goodwill.

Evidence supporting bad faith included: (1) “Fun Feeder” appeared prominently in search results across multiple platforms; (2) the companies were direct competitors selling similar products; and (3) ThinkPet added the term to its listings around June 2023. A jury could reasonably infer ThinkPet intended to cause customer confusion.

On likelihood of confusion, the Court analyzed the seven-factor test and found six factors could support consumer confusion. The Court emphasized that likelihood of confusion is “ultimately a question of fact” that should go to a jury when evidence is not one-sided.

Middleton Mixology LLC v. The Partnerships and Unincorporated Associations, No. 24 C 12287 (N.D. Ill. Sept. 22, 2025) (Kendall, C.J.).

Chief Judge Kendall denied plaintiff Middleton’s motion for preliminary injunction against defendant HzSane in this patent infringement case involving smoker devices for infusing smoke flavor into food and beverages. Middleton alleged HzSane infringed claim 8 of its ‘769 Patent.

The dispute centered on claim construction of “through bore” in Claim 8, which required “a through bore extending from a first end of the body member to an opposite second end” with “opposing open ends along a longitudinal axis.” HzSane argued its product lacked this feature because it had a closed bottom rather than opposing open ends.

The Court found HzSane presented a “substantial question” regarding infringement. While Middleton correctly noted that “comprising” language means the apparatus “includes but is not limited to” listed components, this did not explain how HzSane’s device with a solid base met the “opposing open ends” requirement.

The Court also found Middleton failed to demonstrate irreparable harm beyond speculative assertions of lost goodwill and reputational damage. Without evidence that HzSane’s product was inferior or that customers were actually confused, the Court could not find irreparable harm.

Because Middleton failed to establish likelihood of success on the merits or irreparable harm, the balance of hardships tipped in HzSane’s favor. The Court emphasized that preliminary injunctive relief is extraordinary and not awarded of right.

POET Research, Inc. v. Hydrite Chemical Company, No. 24-cv-01285 (N.D. Ill. Sept. 22, 2025) (Wood, J.).

Judge Wood granted defendant Hydrite’s motion to dismiss for lack of personal jurisdiction in this patent infringement case involving methods for remediating toxins in biorefinery processes. The Court held that POET failed to establish minimum contacts with Illinois sufficient to support specific jurisdiction or to show that the Northern District was the proper venue.

POET alleged that Hydrite infringed four patents covering mycotoxin remediation methods by selling products like Hydri-Maize CB-400. While Hydrite acknowledged conducting plant trials in Hennepin, Illinois, these occurred before the first patent was issued. The Court emphasized that pre-issuance conduct “cannot constitute infringing acts” under Federal Circuit precedent.

For direct infringement of method patents, the Court explained that all steps must be performed by a single entity. POET could not show Hydrite performed the patented processes in Illinois. Hydrite’s attendance at Illinois trade shows was insufficient because “mere demonstration or display of an accused product, even in an obviously commercial atmosphere is not an act of infringement.”

Regarding induced infringement, the Court found that Hydrite’s website offering to ship products anywhere in the United States was insufficient without evidence of actual sales to Illinois customers or affirmative acts encouraging infringement by Illinois residents.

The Court denied POET’s request for jurisdictional discovery, finding the request too speculative given Hydrite’s unrebutted declarations that it had not made, used, offered for sale, or sold the accused products in Illinois. Rather than dismissing, the Court transferred the case to the Eastern District of Wisconsin, where there appeared to be proper jurisdiction.

Putianshi Lichengqu Zhengchangpai E-Commerce Co., Ltd. v. Shuangfeng County Shuangwei Electronic Technology Co., Ltd., No. 23 C 2650 (N.D. Ill. Sept. 19, 2025) (Alonso, J.).

Judge Alonso dismissed this declaratory judgment patent infringement case after finding that plaintiff’s Rule 30(b)(6) witness committed perjury during deposition. In this case involving design patents for silicon sleeve bamboo lids, plaintiff sought a declaratory judgment of invalidity and non-infringement of defendant’s D959,896 patent.

During the Rule 30(b)(6) deposition of plaintiff (the accused infringer), defendant patentholder showed the deponent nine screenshot exhibits of Amazon listings featuring tumblers with accused lids. When asked whether plaintiff was still selling these products, the deponent stated they had stopped selling all such lids. However, defendant’s counsel subsequently found several active listings on plaintiff’s Amazon store featuring identical lids.

The Court found the deponent’s testimony was willfully false, rejecting plaintiff’s “shifting and vacillating explanations” that the deponent was confused about which lids were being discussed. The Court noted that defense counsel’s questions clearly encompassed all lids shown during the deposition, and the deponent had unequivocally stated sales had stopped.

Significantly, the Court held that perjury about damages issues was material even though liability had not yet been established. The Court explained that litigants cannot “lie with impunity about damages issues merely because the Court might not reach them.”

Finding dismissal appropriate as a sanction, the Court emphasized that perjury “undermines the most basic foundations of our judicial system” and that no litigant should feel free to commit perjury hoping that “even if the lies are exposed, the rest of the case will progress unhindered.” Quoting Secrease v. W. & S. Life Ins. Co., 800 F.3d 397, 402 (7th Cir. 2015). The Court dismissed plaintiff’s claims with prejudice and defendant’s counterclaim without prejudice.