Safeway Transit LLC v. Discount Party Bus, Inc., No. 18-2990 (8th Cir. 2020)
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Safeway and its proprietor filed suit against DPB and its owner, alleging federal trademark infringement under the Lanham Act and deceptive trade practices under Minnesota state law. Safeway claimed that DPB infringed two unregistered description trademarks -- "Rent My Party Bus" and "952 Limo Bus." The district court permanently enjoined defendants from using the trademarks or related domain names, keywords, or hashtags in connection with the advertisement, marketing, or sale of transportation services. However, the district court denied plaintiffs' requests for disgorgement of profits and attorney's fees.
The Eighth Circuit affirmed, holding that the district court's finding of no actual confusion and thus, no unjust enrichment, was not clearly erroneous; the district court did not erroneously place the burden of proof on Safeway to prove unjust enrichment; and Safeway bore the burden of proving DPB's sales. The court also held that the district court's findings, when taken in their totality, support its conclusion that Safeway is not entitled to a disgorgement of profits based on deterrence. In this case, the district court actually found that DPB held a good faith belief in its right to use the trademarks. Finally, the district court did not abuse its discretion in denying Safeway's request for disgorgement of profits, and did not abuse its discretion in denying Safeway's request for attorney's fees.
Court Description: [Smith, Author, with Grasz and Stras, Circuit Judges] Civil case - Trademarks. Where the district court enjoined defendant from using certain trademarks or related domain names, keywords or hashtags in connection with the advertisement of its party bus services, the court did not err in denying plaintiffs' requests for disgorgement of profits and attorneys' fees; the court's finding that there was no actual confusion - and as a result, no unjust enrichment - was not clearly erroneous; the court did not err in determining defendant held a good faith belief in its right to use the trademarks and the court did not err n concluding plaintiffs were not entitled to disgorgement based on deterrence; the district court presided over the bench trial, was intimately familiar with the facts and was best suited to determine whether the case was so "exceptional" that an award of attorneys' fees was appropriate. Judge Stras, concurring in part and dissenting in part.
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