PUBLISHED

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

No. 22-1495

WUDI INDUSTRIAL (SHANGHAI) CO., LTD.,

Plaintiff – Appellant,

v.

WAI L. WONG,

Defendant – Appellee,

and

GT OMEGA RACING LTD.,

Counter Claimant – Appellee.

No. 22-1662

WUDI INDUSTRIAL (SHANGHAI) CO., LTD.,

Plaintiff – Appellant,

v.

WAI L. WONG,

Defendant – Appellee,

and USCA4 Appeal: 22-1495 Doc: 73 Filed: 06/05/2023 Pg: 2 of 25

GT OMEGA RACING LTD.,

Counter Claimant – Appellee.

Appeals from the United States District Court for the Eastern District of Virginia, at Alexandria. Claude M. Hilton, Senior District Judge. (1:20-cv-00908-CMH-TCB)

Argued: December 8, 2022 Decided: June 5, 2023

Before GREGORY, Chief Judge, and KING and RUSHING, Circuit Judges.

Vacated and remanded by published opinion. Judge King wrote the majority opinion, in which Chief Judge Gregory joined. Judge Rushing wrote a dissenting opinion.

ARGUED: Gaspare Joseph Bono, DENTONS US LLP, Washington, D.C., for Appellant. Craig Crandall Reilly, LAW OFFICE OF CRAIG C. REILLY, Alexandria, Virginia, for Appellees. ON BRIEF: Derek A. Auito, Washington, D.C., Tony K. Lu, DENTONS US LLP, Boston, Massachusetts, for Appellant. Catherine Simmons-Gill, OFFICE OF CATHERINE SIMMONS-GILL, LLC, Chicago, Illinois; Lisa L. Clay, LISA L. CLAY, ATTORNEY AT LAW, Wheaton, Illinois, for Appellees.

2 USCA4 Appeal: 22-1495 Doc: 73 Filed: 06/05/2023 Pg: 3 of 25

KING, Circuit Judge:

In these consolidated appeals from the Eastern District of Virginia, plaintiff Wudi

Industrial (Shanghai) Co., Ltd. challenges two adverse rulings made by the district court in

favor of defendant Wai L. Wong and his business entity, GT Omega Racing, Ltd.

(collectively “GTOR”). As explained below, we agree with Wudi’s primary contention

that the district court’s challenged rulings constitute awards of injunctive relief in favor of

GTOR and against Wudi. Secondly, we also agree that the challenged rulings failed to

comport with the applicable Rules of Civil Procedure and controlling precedent.

Accordingly, because the district court erred in awarding injunctive relief in these

circumstances, we vacate the challenged rulings and remand for further proceedings.

I.

This litigation arises out of a contentious trademark dispute between Wudi and

GTOR, which are Asian-centered business entities that compete in the marketing of video

gaming chairs and other products. In March 2017, Wudi obtained from the United States

Patent and Trademark Office (“USPTO”) a registration for the stylized word mark

“GTRACING.” For its part, GTOR claimed that it already owned an earlier use of a similar

word mark — that is, “GT OMEGA RACING” — and challenged Wudi’s registration of

the “GTRACING” word mark in cancellation proceedings before a USPTO component

called the Trademark Trial and Appeals Board (the “Board”). In June 2020, the Board

ruled in favor of GTOR, concluding that Wudi’s use of the “GTRACING” word mark

encroached on GTOR’s earlier use of its own “GT OMEGA RACING” word mark.

3 USCA

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