Applied Underwriters, Inc. v. Lichtenegger, No. 17-16815 (9th Cir. 2019)
Annotate this CaseThe Ninth Circuit affirmed the district court's dismissal of a Lanham Act action brought by Applied Underwriters, alleging claims for trademark infringement and unfair competition. Although the district court abused its discretion when it sanctioned Applied Underwriters and dismissed the case pursuant to Federal Rule of Civil Procedure 41(b) absent an order requiring Applied Underwriters to file an amended complaint, the panel nevertheless affirmed the district court's earlier Rule 12(b)(6) dismissal because the use of Applied Underwriters' trademarks by defendants constituted nominative fair use. In this case, Applied Underwriters' service was not readily identifiable without use of the trademarks; defendants used only so much of the marks as was reasonably necessary; and use of the marks did not suggest sponsorship or endorsement.
Court Description: Lanham Act / Civil Procedure. The panel affirmed the district court’s dismissal of an action brought by a financial services company under the Lanham Act. The panel held that the district court abused its discretion when it sanctioned the plaintiff and dismissed the case pursuant to Federal Rule of Civil Procedure 41(b) absent an order requiring the plaintiff to file an amended complaint. The panel nonetheless affirmed the district court’s earlier dismissal for failure to state a claim under Rule 12(b)(6). The panel concluded that defendants’ use of plaintiff’s trademarks in the title of a webcast seminar and in promotional materials was a nominative fair use because plaintiff’s service was not readily identifiable without use of the trademarks, defendants used only so much of the trademarks as was reasonably necessary, and use of the trademarks did not suggest sponsorship or endorsement.
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