Trademark - Justia Case Law Summaries

Nelson v. MillerKnoll, Inc.

2026-07-07T13:00:38-08:00

The plaintiffs, including the son and estate of designer George Nelson, brought claims against MillerKnoll, Inc. (formerly Herman Miller, Inc.), arguing that MillerKnoll had wrongfully obtained and used intellectual property rights related to the iconic “Bubble Lamp” design. The key facts center on a series of agreements: George Nelson originally had a royalty arrangement with the company, and after his death, his widow Jacqueline Nelson continued this relationship, entering into a 2006 Royalty Agreement. In 2013, Jacqueline assigned her IP rights to the George Nelson Foundation (GNF). After a separate company, Modernica, registered trademarks related to Bubble Lamps, GNF and Modernica settled a lawsuit in 2015, resulting in MillerKnoll acquiring the Bubble Lamp trademarks. Around this time, the Nelsons executed a 2015 Addendum to the Royalty Agreement, adding lamp products to its scope. The plaintiffs first filed suit in the Southern District of New York, raising claims of fraud, conspiracy, unjust enrichment, trademark infringement under the Lanham Act, state law trademark infringement, and seeking cancellation of the Bubble Lamp trademarks. The case was transferred to the United States District Court for the Western District of Michigan due to a forum selection clause. After initial motions were denied, the district court granted summary judgment to MillerKnoll on all claims, finding that the agreements authorized MillerKnoll’s use and ownership of the Bubble Lamp IP and that plaintiffs had ratified this by accepting royalty payments. The United States Court of Appeals for the Sixth Circuit reviewed the case de novo and affirmed the district court’s decision. The Sixth Circuit held that the 2006 Royalty Agreement, as amended by the 2015 Addendum, unambiguously authorized MillerKnoll’s ownership and use of the Bubble Lamp intellectual property, defeating all infringement and tort claims. The court also found that the plaintiffs had ratified any alleged misconduct by accepting royalties, and that there was insufficient evidence to support cancellation of the trademarks. Judgment for MillerKnoll was affirmed. View "Nelson v. MillerKnoll, Inc." on Justia Law

U.S. All Star Federation, Inc. v. Open Cheer & Dance Championship Series, LLC

2026-06-24T10:32:51-08:00

Two organizations involved in competitive cheerleading became embroiled in a dispute over the use of two marks: “THE CHEERLEADING WORLDS,” which is registered on the Supplemental Register with the U.S. Patent and Trademark Office, and “WORLDS,” which is claimed as an unregistered common law mark. The plaintiff, a governing body for competitive cheerleading, has held an annual event under these marks since 2004. The defendants, including a group of former members of the plaintiff organization, began hosting a similarly named event in the same region, allegedly causing confusion among participants and the public. The United States District Court for the Middle District of Florida granted summary judgment for the defendants, concluding that both marks were generic as a matter of law and thus not entitled to trademark protection. The court found that the terms described the basic nature of the plaintiff’s services and discounted evidence showing non-generic use, reasoning that the plaintiff’s event had long been the only one of its kind. The court also rejected the plaintiff’s argument that the defendants were barred from contesting the marks’ distinctiveness due to an earlier dismissal of an affirmative defense with prejudice. On appeal, the United States Court of Appeals for the Eleventh Circuit reversed. The appellate court held that the issue of distinctiveness was properly before the district court, as distinctiveness is an element of the plaintiff’s claim and not an affirmative defense. The Eleventh Circuit found that there were genuine disputes of material fact as to whether the marks were descriptive or had acquired secondary meaning, based on evidence of public association with the plaintiff’s event. The court remanded the case for trial, holding that summary judgment was inappropriate because a reasonable jury could find the marks protectable. The court also declined to decide issues of likelihood of confusion and individual liability without factual findings. View "U.S. All Star Federation, Inc. v. Open Cheer & Dance Championship Series, LLC" on Justia Law

Blanche v. Lau

2026-06-23T10:45:06-08:00

A Chinese citizen was admitted to the United States as a lawful permanent resident in 2007. In 2012, New Jersey charged him with trademark counterfeiting. While awaiting trial, he traveled temporarily to China. Upon his return to the U.S., a border officer, aware of his pending criminal charge, declined to treat him as already admitted and instead paroled him into the country pending the outcome of his case. After he pleaded guilty to the state charge in 2013, the government initiated removal proceedings, charging him as an applicant for admission who was inadmissible because of his conviction for a crime involving moral turpitude. An Immigration Judge found him removable on these grounds, and the Board of Immigration Appeals affirmed. The respondent sought review in the United States Court of Appeals for the Second Circuit. That court vacated the removal order, holding that unless border officers had “clear and convincing” evidence at the time of entry that the lawful permanent resident had committed the crime, the individual must be treated as already admitted. The Second Circuit concluded that the pending criminal charge did not constitute clear and convincing evidence, so the individual should not have been paroled but deemed admitted, and thus could not be removed on inadmissibility grounds. The Supreme Court of the United States reviewed the case and vacated the Second Circuit’s judgment. The Court held that the Immigration and Nationality Act does not require border officers to have clear and convincing evidence that a lawful permanent resident has committed a crime involving moral turpitude before treating the resident as an applicant for admission. The Court remanded the case for further proceedings, without deciding whether the underlying crime involved moral turpitude. View "Blanche v. Lau" on Justia Law

Bacardi and Company Limited v. Squires

2026-06-16T10:30:30-08:00

The dispute centers on the HAVANA CLUB trademark, originally registered in the United States in 1976 by a Cuban state-owned company, Cubaexport. Due to changes in U.S. law, renewal of the trademark registration required a specific license from the Treasury’s Office of Foreign Assets Control (OFAC) after 1998. In December 2005, Cubaexport submitted its renewal application and payment to the United States Patent and Trademark Office (PTO) without the required OFAC license. OFAC later notified the PTO that the payment was unauthorized, leading to the PTO’s refund of the fee and refusal to renew the registration. Cubaexport unsuccessfully litigated against OFAC and, in 2015, reapplied for the license, which OFAC granted retroactively in 2016, authorizing the 2005 payment. After the PTO Director accepted Cubaexport’s renewal filing based on the retroactive OFAC license, Bacardi sued the PTO and its Director in the United States District Court for the Eastern District of Virginia. Bacardi argued the PTO lacked statutory authority to renew the expired registration and acted arbitrarily and capriciously. The district court initially dismissed the case, finding judicial review precluded by the Lanham Act, but the United States Court of Appeals for the Fourth Circuit reversed and remanded. On remand, Cubaexport intervened, and after cross-motions for summary judgment, the district court granted judgment for the defendants, finding the OFAC license validated the payment and that any deficiency was cured during the petition process. Reviewing the district court’s summary judgment de novo, the United States Court of Appeals for the Fourth Circuit held that the PTO Director acted within statutory authority, as the retroactive OFAC license validated the 2005 payment, satisfying the renewal requirements. The court also held the Director’s explanation for the renewal was reasonable and not arbitrary or capricious. The Fourth Circuit affirmed the district court’s judgment. View "Bacardi and Company Limited v. Squires" on Justia Law

Vaughn Boyd v. Deadwood Tobacco Co.

2026-06-08T07:31:04-08:00

Two businesses and their principals were involved in the sale of a cigar company. The sale was governed by a written agreement which expressly reserved three registered trademarks for the sellers, and did not mention other closely related marks. After the sale, the buyers’ company launched new cigar products and marketing campaigns referencing the history and reputation of the reserved marks and associated product lines. The sellers objected, claiming infringement of their reserved trademark interests and associated goodwill. When attempts to resolve the dispute failed, the sellers filed a federal trademark infringement lawsuit. The first lawsuit was brought in the United States District Court for the Southern District of Florida. That court did not address the merits of the trademark claims. Instead, it found that the claims arose out of the sales agreement, which contained a forum selection clause requiring venue in state court in Lawrence County, South Dakota. On that basis, the Florida district court dismissed the case on forum non conveniens grounds. Subsequently, the buyers initiated a related contract lawsuit in South Dakota state court. The sellers then filed the present lawsuit in the United States District Court for the District of South Dakota, asserting only federal Lanham Act claims and omitting the sales agreement from their initial filings. The United States Court of Appeals for the Eighth Circuit held that the federal trademark claims arose out of the sales agreement, because resolving them would require analyzing the parties’ contractual allocation of trademark rights and goodwill. The court further held that the forum selection clause in the agreement was valid, mandatory, and enforceable under South Dakota law and federal law, and that it required litigation to proceed in state court in Lawrence County, South Dakota. The Eighth Circuit also concluded that state courts have concurrent jurisdiction over federal Lanham Act claims. Accordingly, the Eighth Circuit affirmed the district court’s dismissal. View "Vaughn Boyd v. Deadwood Tobacco Co." on Justia Law

Kangol LLC v Hangzhou Chuanyue Silk Import & Export Co., Ltd.

2026-05-29T07:30:45-08:00

A clothing company filed a lawsuit against multiple e-commerce vendors, including a Chinese company, alleging trademark infringement, counterfeiting, unfair competition, and related claims under the Lanham Act. The defendants were identified in a document attached to the complaint. Because the defendants were primarily Chinese entities operating online, the plaintiff asserted it was difficult to determine their exact identities and addresses. The plaintiff sought and was granted permission by the United States District Court for the Northern District of Illinois to serve the defendants by email, which included sending a link to the complaint and other documents. The defendant, Hangzhou, engaged in settlement discussions but did not appear in court, leading to a default judgment. The court’s order also allowed the plaintiff to collect funds from third parties, including from Hangzhou’s Amazon account. After the plaintiff collected a portion of the judgment, Hangzhou appeared and moved to vacate the default judgment, primarily arguing that service by email in China was prohibited under the Hague Service Convention and thus the judgment was void for lack of proper service. The district court denied this motion, concluding that the Convention permits email service in China, and rejected other arguments related to Illinois post-judgment procedures. On appeal, the United States Court of Appeals for the Seventh Circuit reviewed the district court’s rulings. The appellate court held that the Hague Service Convention prohibits service by email in China, contrary to the district court’s conclusion. However, the appellate court determined that the district court must first decide whether the Convention applies to this case, specifically whether the defendant’s address was “not known,” which would render the Convention inapplicable. The Seventh Circuit therefore reversed the district court’s decision denying the motion to vacate the default judgment and remanded the case for further proceedings to resolve this threshold issue. View "Kangol LLC v Hangzhou Chuanyue Silk Import & Export Co., Ltd." on Justia Law

Trojan Battery v. Golf Carts of Cypress

2026-05-08T09:30:26-08:00

Trojan Battery, a well-established manufacturer of golf cart batteries with valuable trademark rights in the “TROJAN” name and related marks, sued Golf Carts of Cypress and Trojan EV. The defendants, owned by the same individual, began selling golf carts under the “TROJAN-EV” brand, which led to alleged confusion among dealers and customers about the origin or affiliation of the products. Trojan Battery sent a cease-and-desist letter, but the defendants continued their use of the TROJAN-EV mark. The evidence showed that both companies operated within the golf industry, used similar advertising channels, and targeted the same customer base. The United States District Court for the Southern District of Texas held a bench trial. The district court found the defendants liable for trademark infringement and unfair competition under the Lanham Act and Texas law, based on a likelihood of confusion between the marks. The court awarded Trojan Battery the defendants’ profits as a remedy and issued a permanent injunction against further infringement. The district court also rejected the defendants’ post-trial motions and denied their request to amend the findings of fact and conclusions of law. Defendants appealed these rulings. The United States Court of Appeals for the Fifth Circuit reviewed the case. It affirmed the district court’s liability judgment and the award of profits, finding no clear error in the determination that there was a likelihood of confusion and that disgorgement of profits was warranted. However, the appellate court vacated the permanent injunction, holding that it was overbroad because it extended beyond the golf cart and battery markets, where confusion was likely, to unrelated products and markets. The case was remanded for the district court to narrow the scope of the injunction. View "Trojan Battery v. Golf Carts of Cypress" on Justia Law

Frida Kahlo Corporation v. Pinedo

2026-04-19T21:04:20-08:00

This case involves a dispute over the rights to the name, image, and trademarks associated with the late artist Frida Kahlo. Two Panamanian corporations with principal places of business in Florida, Frida Kahlo Corporation and Frida Kahlo Investments, manage and license numerous Frida Kahlo trademarks. Mara Cristina Teresa Romeo Pinedo, Frida Kahlo’s grandniece and a resident of Mexico, is an owner and former officer of Familia Kahlo S.A. de C.V., a Mexican company. The parties’ relationship became contentious, leading to litigation in several countries over the intellectual property rights. Plaintiffs alleged that, beginning in 2017 and specifically targeting Florida in 2021 and 2022, the defendants sent cease-and-desist letters to plaintiffs’ business partners in Florida, threatening legal action based on what plaintiffs contend were false claims to trademark ownership. Plaintiffs claimed these actions constituted tortious interference under Florida law and the Lanham Act. The United States District Court for the Southern District of Florida dismissed the lawsuit for lack of personal jurisdiction. The court found that Florida’s long-arm statute was satisfied for Familia Kahlo, but the corporate shield doctrine protected Pinedo because she was not acting in her personal capacity. The court further concluded that the minimum contacts required by due process were not established for either defendant, as sending cease-and-desist letters alone was insufficient. On appeal, the United States Court of Appeals for the Eleventh Circuit reversed the district court’s decision. The Eleventh Circuit held that the corporate shield doctrine did not apply to Pinedo because the cease-and-desist letters were sent on her behalf in her personal capacity. The court also held that due process permitted the exercise of personal jurisdiction over both defendants, as the “effects test” was satisfied and a tortious cease-and-desist letter can meet the minimum contacts requirement. The case was remanded for further proceedings. View "Frida Kahlo Corporation v. Pinedo" on Justia Law

INTERNATIONAL MEDICAL DEVICES, INC. v. CORNELL

2026-04-17T06:05:20-08:00

A group of plaintiffs, including a medical device company and its founder, developed and sold a cosmetic penile implant. In 2018, a urologist who later became one of the defendants attended a training session hosted by the plaintiffs, where he signed a non-disclosure agreement and was introduced to certain ideas for improving the implant as well as a list of required surgical instruments. Plaintiffs claimed that these ideas and the instrument list were trade secrets. Soon after, the defendants began developing a competing implant, filed patent applications based on allegedly misappropriated information, and advertised using plaintiffs’ trademark. The United States District Court for the Central District of California heard the case, which included claims for trade secret misappropriation, breach of contract under the nondisclosure agreement, trademark counterfeiting, and incorrect inventorship of two patents. The jury found for the plaintiffs on all major claims, including that the asserted trade secrets were protectable and misappropriated, and that there had been a breach of contract. The court awarded substantial damages, including a reasonable royalty, exemplary damages, and a permanent injunction preventing the defendants from using the trade secrets. The court also found for plaintiffs on their counterfeiting claim and invalidated the two patents for failure to name an alleged true inventor. On appeal, the United States Court of Appeals for the Federal Circuit held there was not legally sufficient evidence to support the jury’s finding that the asserted information qualified as trade secrets under California law, as the core concepts were either generally known or not subject to reasonable secrecy efforts. The court reversed the denial of judgment as a matter of law on the trade secret and breach-of-contract claims, vacated the damages and injunction based on them, and reversed the invalidation of the patents. However, the court affirmed the verdict and damages for trademark counterfeiting. The result was an affirmance in part, reversal in part, and vacatur in part. View "INTERNATIONAL MEDICAL DEVICES, INC. v. CORNELL " on Justia Law

FUENTE MARKETING LTD. v. VAPOROUS TECHNOLOGIES, LLC

2026-04-08T05:31:51-08:00

Fuente Marketing Ltd., a family-owned company selling premium hand-rolled cigars, owns two registered standard character trademarks for the letter X in connection with cigars and related products. Vaporous Technologies, LLC, designs and manufactures oral vaporizers and sought to register a mark featuring an abstract stick figure composed of intersecting lines forming a stylized X and a shaded circle above it, for use with various smoking-related goods. Fuente opposed this trademark application, alleging a likelihood of confusion with its own X marks. The United States Patent and Trademark Office, Trademark Trial and Appeal Board (TTAB), reviewed the opposition. The parties stipulated certain facts, including a description of Vaporous’s mark. The TTAB applied the In re E.I. DuPont DeNemours & Co. factors, finding that while the goods and trade channels overlapped and thus favored a likelihood of confusion, the dissimilarity of the marks weighed heavily against it. The Board found Fuente’s X marks conceptually strong but commercially weak and determined the relevant DuPont factors were either neutral or favored confusion, except for the critical mark similarity factor. Ultimately, the TTAB concluded that the marks were sufficiently distinct in commercial impression, appearance, and sound to avoid confusion and dismissed Fuente’s opposition. On appeal, the United States Court of Appeals for the Federal Circuit reviewed the Board’s factual findings for substantial evidence and its legal conclusions de novo. The Federal Circuit affirmed the TTAB’s decision, holding that the dissimilarity between the marks was sufficient, even in light of other factors, to negate any likelihood of confusion. The court concluded that the Board’s findings were supported by substantial evidence and that Fuente had not shown any harmful legal error. The decision of the TTAB was therefore affirmed. View "FUENTE MARKETING LTD. v. VAPOROUS TECHNOLOGIES, LLC " on Justia Law

Liu v. Monthly

2026-03-31T14:00:43-08:00

A trademark holder brought an action against numerous foreign online vendors, alleging that they infringed her registered mark by selling counterfeit goods through e-commerce platforms such as Walmart.com and eBay.com. The vendors, all based in China, operated online storefronts that were accessible from the United States and offered shipping to U.S. customers, including those in Illinois. The plaintiff attached a “Schedule A” list to her complaint identifying the vendors. The defendants did not initially appear in the case. The United States District Court for the Northern District of Illinois, Eastern Division, entered a default judgment against the defendants. The court found personal jurisdiction over them on the basis that they operated online stores targeting U.S. consumers, offered shipping to Illinois, and had allegedly sold infringing products to Illinois residents. The evidence supporting the finding of Illinois sales included website screenshots showing that a product could be ordered and shipped to a Chicago address, but did not show that any actual sales to Illinois occurred. After the default judgment, the defendants appeared and moved to vacate the judgment, arguing lack of personal jurisdiction and improper service. The district court denied the motion, reaffirming its prior findings. Upon appeal, the United States Court of Appeals for the Seventh Circuit found that there was no evidence of any actual sales to Illinois residents. The court held that merely operating an online store accessible in Illinois and offering shipping to Illinois, without completed sales in the forum, is insufficient to establish personal jurisdiction. The district court’s findings to the contrary were clearly erroneous. The Seventh Circuit vacated the default judgment and remanded the case with instructions to dismiss for lack of personal jurisdiction. View "Liu v. Monthly" on Justia Law

ZipBy USA LLC v. Parzych

2026-03-20T13:30:04-08:00

Gregory Parzych served as president of ZipBy USA, LLC, a parking technology company, after previously founding and selling a similar company, TCS. While employed by ZipBy, Parzych entered into several agreements restricting conflicts of interest and disclosure of confidential information. In 2020, Parzych learned that TCS might be for sale. He advised ZipBy’s owner against pursuing the acquisition, then secretly attempted to purchase TCS for himself via a shell company, using financial information he had obtained as a ZipBy executive. ZipBy discovered his actions, terminated his employment, and, along with affiliates, sued Parzych for breach of fiduciary duty, breach of contract, misappropriation of trade secrets, trademark infringement, and false designation. After a jury trial in the United States District Court for the District of Massachusetts, the jury found for ZipBy on all claims, awarding compensatory and exemplary damages. The district court later granted judgment as a matter of law for Parzych on the trade secret claims, striking the exemplary damages but upholding the other verdicts and damages. The court also entered a permanent injunction barring Parzych from acquiring TCS and awarded ZipBy a portion of its attorneys’ fees. Parzych appealed, contesting evidentiary rulings, denial of a trial continuance, and the fee award, while ZipBy cross-appealed the judgment on the trade secret claims. The United States Court of Appeals for the First Circuit affirmed the district court’s judgment. It held that the district court did not abuse its discretion in admitting ZipBy’s expert lost-profits testimony, excluding late-disclosed evidence, or denying a trial continuance due to counsel’s COVID-19 infection. The appellate court agreed with the district court’s judgment as a matter of law against ZipBy’s trade secret claims, finding insufficient evidence that Parzych’s actions constituted trade secret misappropriation. Finally, the fee award was affirmed as a reasonable enforcement of the IP Agreement’s fee-shifting provision. View "ZipBy USA LLC v. Parzych" on Justia Law

Fetch! Pet Care, Inc. v. Atomic Pawz Inc.

2026-03-20T11:30:36-08:00

Fetch! Pet Care, Inc., a nationwide franchisor of pet-care services, alleged that a group of former franchisees coordinated to exit their franchise agreements and start competing businesses, allegedly misappropriating Fetch!’s branding, client lists, intellectual property, and trade secrets. The franchisees contended that the newer “2.0” franchise model imposed high fees, delivered poor support, and led to high attrition, while some “1.0” franchisees claimed they were forced out of the system unexpectedly, leaving them no choice but to start their own businesses. A franchisee association was formed, and many franchisees sent rescission notices and pursued arbitration. Fetch! responded by filing suit for breach of contract, trademark infringement, and misappropriation of trade secrets, and sought injunctive relief to prevent the franchisees from operating competing businesses or using its intellectual property. The United States District Court for the Eastern District of Michigan held evidentiary hearings and granted Fetch!’s motion for a temporary restraining order and preliminary injunction in part, ordering defendants to stop using Fetch!’s trademarks and cease communication with current Fetch! franchisees, but denied broader injunctive relief. The court reasoned that a full injunction could harm ongoing arbitration proceedings and found sufficient evidence to invoke the doctrine of unclean hands against Fetch!, based on allegedly deceptive conduct in selling franchises. Fetch! timely appealed the district court’s order. The United States Court of Appeals for the Sixth Circuit reviewed the district court’s application of the unclean hands doctrine for abuse of discretion and affirmed. The appellate court held that the district court acted within its discretion in denying broad injunctive relief based on Fetch!’s bad faith and deceptive marketing practices as an underlying cause of franchisee conduct. The court clarified standards for irreparable harm and affirmed the partial denial of preliminary injunction, relying on the doctrine of unclean hands rather than other defenses. View "Fetch! Pet Care, Inc. v. Atomic Pawz Inc." on Justia Law

Clemente Properties, Inc. v. Pierluisi-Urrutia

2026-01-16T14:30:03-08:00

The plaintiffs in this case are the sons of Roberto Clemente, a renowned Puerto Rican baseball player, and two corporations they control. The dispute centers on the Commonwealth of Puerto Rico’s use of Clemente’s name and image on commemorative license plates and vehicle registration tags. Proceeds from these items were designated to fund a new “Roberto Clemente Sports District,” a public project that would replace an earlier initiative, Ciudad Deportiva, originally founded by Clemente. The plaintiffs allege that they hold trademark rights in Clemente’s name and that the Commonwealth’s actions were unauthorized and caused public confusion, with many mistakenly believing the Clemente family benefited financially from the program. The plaintiffs brought suit in the United States District Court for the District of Puerto Rico against the Commonwealth, several high-ranking officials, and the Puerto Rico Convention Center District Authority. Their claims included trademark infringement, false association, false advertising, and trademark dilution under the Lanham Act, as well as a takings claim under the Fifth and Fourteenth Amendments. The Commonwealth and the Authority moved to dismiss, arguing sovereign and qualified immunity and failure to state a claim. The district court granted both motions, dismissing all federal claims on immunity and merits grounds, and declined to exercise jurisdiction over non-federal claims. On appeal, the United States Court of Appeals for the First Circuit reviewed the dismissal de novo. The court affirmed the dismissal of all claims against the Authority and all claims against the Commonwealth and its officials in their official capacities. It also affirmed dismissal of the false advertising and takings claims. However, the court vacated the dismissal of the Lanham Act claims for trademark infringement, false endorsement, and dilution against the Commonwealth officials in their personal capacities, holding those claims were plausibly alleged and not barred by qualified immunity at this stage, and remanded for further proceedings. View "Clemente Properties, Inc. v. Pierluisi-Urrutia" on Justia Law

Illinois Tamale Company, Inc. v. LC Trademarks, Inc.

2026-01-16T14:00:15-08:00

Illinois Tamale Company, a Chicago-based food manufacturer, brought a trademark infringement suit against LC Trademarks and Little Caesar Enterprises, alleging that Little Caesars’ launch and advertising of its “Crazy Puffs” product infringed Iltaco’s registered trademarks for “Pizza Puff” and “Puff.” Iltaco has sold its “Pizza Puff” product for decades and registered the “Pizza Puff” trademark in 2009 and the “Puff” mark in 2022. Little Caesars, a national pizza chain, began selling “Crazy Puffs” in 2024, marketing them with its established “Crazy” branding and trade dress, and included the phrase “4 Hand-Held Pizza Puffs” in small print as part of its advertising. After receiving a cease-and-desist letter from Iltaco, Little Caesars disputed the claims and continued its use of the contested names. Iltaco filed suit in the United States District Court for the Northern District of Illinois, asserting Lanham Act and related state law claims and moved for a preliminary injunction to stop Little Caesars from using “Crazy Puffs,” “Pizza Puff,” or “Puff.” The district court denied the injunction for “Crazy Puffs” and “Puff,” finding no sufficient likelihood of success on those claims, but granted the injunction for “Pizza Puff,” ruling that Iltaco was likely to prove infringement with respect to that mark. On appeal, the United States Court of Appeals for the Seventh Circuit reviewed the district court’s legal conclusions de novo and its factual findings for clear error. The Seventh Circuit held that the district court erred in granting the injunction for “Pizza Puff,” finding that Iltaco failed to show a likelihood of success in proving the mark was protectable and in rebutting Little Caesars’ fair use defense. The court affirmed the district court’s decision denying the injunction as to “Crazy Puffs” and “Puff.” Thus, the judgment was affirmed in part and reversed in part. View "Illinois Tamale Company, Inc. v. LC Trademarks, Inc." on Justia Law

CROCS, INC. v. ITC

2026-01-08T07:31:32-08:00

Crocs, Inc. owns two U.S. trademarks covering features of its Classic Clog shoes. In June 2021, Crocs filed a complaint with the United States International Trade Commission (ITC), alleging that several respondents violated Section 337 of the Tariff Act of 1930 by importing or selling footwear that infringed or diluted Crocs’s trademarks. Crocs sought a general exclusion order (GEO) or, in the alternative, a limited exclusion order (LEO). During the investigation, some respondents were found in default for failing to participate, while others actively defended against the claims. An Administrative Law Judge conducted an evidentiary hearing for the three active respondents and, in January 2023, issued an Initial Determination finding no violation of Section 337. The judge concluded that Crocs had not shown infringement or dilution of its trademarks and had waived infringement contentions against the defaulting respondents. The Commission reviewed parts of this determination and, in September 2023, issued a final decision: it found no violation by the active respondents and determined not to apply the waiver to the defaulting respondents. For the defaulting respondents, the ITC presumed the facts in Crocs’s complaint to be true, as required by statute, and issued an LEO against them, finding no public interest factors weighed against exclusion. On appeal, Crocs challenged both the no violation finding as to active respondents and the issuance of only an LEO rather than a GEO for the defaulting respondents. The United States Court of Appeals for the Federal Circuit held that Crocs’s appeal regarding the active respondents was untimely and dismissed it. Regarding the defaulting respondents, the court affirmed the Commission’s decision to issue a limited exclusion order, finding no abuse of discretion or error in law. Thus, the appeal was dismissed in part and affirmed in part. View "CROCS, INC. v. ITC " on Justia Law

Smart Study Co., LTD v. Shenzhenshixindajixieyouxiangongsi

2025-12-18T07:30:05-08:00

A South Korean entertainment company that owns trademarks for the popular “Baby Shark” song and related products brought a lawsuit in the United States District Court for the Southern District of New York against dozens of China-based businesses. The company alleged these businesses manufactured or sold counterfeit Baby Shark merchandise, violating trademark, copyright, and unfair competition laws. Seeking to stop the alleged counterfeiting, the company obtained temporary and preliminary injunctions and moved to serve the defendants by email, arguing that this method was appropriate under Federal Rule of Civil Procedure 4(f)(3). After the plaintiff served process by email, most defendants did not respond, leading to default judgments against many of them. However, two defendants appeared and challenged the court’s jurisdiction, arguing that service by email violated the Hague Service Convention, to which both the United States and China are parties. The district court agreed, finding that the Convention did not permit service by email on parties in China, and dismissed the claims against these defendants without prejudice for improper service. The plaintiff appealed to the United States Court of Appeals for the Second Circuit. The United States Court of Appeals for the Second Circuit affirmed the district court’s decision. The appellate court held that the Hague Service Convention does not allow email service on defendants located in China, as China has expressly objected to alternative methods such as those in Article 10 of the Convention. The court further held that neither Federal Rule of Civil Procedure 4(f)(2) nor any purported emergency exception permitted email service in these circumstances. The court also upheld the denial of a default judgment, finding no abuse of discretion. Accordingly, the dismissal of the claims against the two China-based defendants for lack of proper service was affirmed. View "Smart Study Co., LTD v. Shenzhenshixindajixieyouxiangongsi" on Justia Law

GAME PLAN, INC. v. UNINTERRUPTED IP, LLC

2025-12-10T07:32:42-08:00

A non-profit organization focused on supporting student-athletes registered a stylized mark incorporating the phrase “I AM MORE THAN AN ATHLETE. GP GAME PLAN” for use in charitable fundraising via apparel sales. Later, a media company filed six intent-to-use applications for marks containing “I AM MORE THAN AN ATHLETE” and “MORE THAN AN ATHLETE,” covering clothing and entertainment services. The non-profit opposed these applications before the Trademark Trial and Appeal Board, arguing likelihood of confusion and asserting priority based on both its registration and alleged common law rights. The media company counterclaimed, seeking cancellation of the non-profit’s registration and asserting that it had acquired priority through an assignment of common law rights from a third party who had used “MORE THAN AN ATHLETE” since at least 2012. During the Board proceeding, the non-profit failed to introduce any trial evidence to establish its common law rights or priority. The Board dismissed the opposition due to lack of evidence. As to the counterclaim, the Board found that the media company had acquired valid and enforceable common law rights in the mark through its assignment, which included the goodwill associated with the mark. The Board rejected arguments that the assignment was invalid because it occurred during litigation or was an assignment in gross, and concluded that, at least for clothing, the transfer was valid. The Board canceled the non-profit’s registration and dismissed its opposition. On appeal, the United States Court of Appeals for the Federal Circuit reviewed the Board’s factual findings for substantial evidence and legal conclusions de novo. The court held that the Board’s decision was supported by substantial evidence and affirmed that the assignment was not in gross, did not violate statutory or regulatory prohibitions, and that the non-profit’s failure to submit evidence justified dismissal. The decision to cancel the non-profit’s registration and dismiss its opposition was affirmed. View "GAME PLAN, INC. v. UNINTERRUPTED IP, LLC " on Justia Law

In Re BAYOU GRANDE COFFEE ROASTING CO.

2025-12-09T07:02:14-08:00

Bayou Grande Coffee Roasting Company applied to register the trademark KAHWA for use in connection with cafés and coffee shops. The trademark examiner refused registration on the grounds that KAHWA was generic or merely descriptive, relying on two meanings: one, that KAHWA allegedly means “coffee” in Arabic, and two, that it refers to a specific type of Kashmiri green tea. The examiner also invoked the doctrine of foreign equivalents, which tests foreign words for genericness and descriptiveness by translating them into English. After Bayou responded, arguing that KAHWA does not mean coffee in Arabic and that the Kashmiri green tea meaning is not relevant to American cafés and coffee shops, the examiner maintained refusals on both grounds. Bayou requested reconsideration, and the examiner continued to refuse registration, reiterating both rationales. Bayou appealed to the United States Patent and Trademark Office’s Trademark Trial and Appeal Board, which affirmed the refusal solely on the basis of the Kashmiri green tea meaning, without addressing the Arabic coffee meaning. On further appeal to the United States Court of Appeals for the Federal Circuit, Bayou contended that the Board’s findings of genericness and mere descriptiveness were unsupported by substantial evidence, and also challenged reliance on the doctrine of foreign equivalents. The Federal Circuit held that there was no evidence showing any café or coffee shop in the United States has ever sold kahwa, and thus KAHWA cannot be generic or merely descriptive for cafés and coffee shops. The court also concluded that the doctrine of foreign equivalents does not apply because KAHWA has a well-established English meaning as Kashmiri green tea. The Federal Circuit reversed the Board’s decision, holding that KAHWA is registrable for the identified services. View "In Re BAYOU GRANDE COFFEE ROASTING CO. " on Justia Law

Focus Products Group International, LLC v. Kartri Sales Co.

2025-09-30T06:01:37-08:00

The dispute centers on allegations of intellectual property infringement involving shower curtains designed with embedded rings, eliminating the need for traditional hooks. The plaintiffs, a group of related companies, own several patents covering these “hookless” shower curtains, as well as registered and unregistered trademark and trade dress rights. The defendants, two companies that manufactured and sold similar shower curtains, were accused of infringing these patents, trademarks, and trade dress. The accused products featured rings with a flat upper edge and a slit, allowing the curtain to be attached to a rod without hooks. In the United States District Court for the Southern District of New York, the defendants’ motion to transfer venue was denied as untimely. The district court granted summary judgment of patent infringement in favor of the plaintiffs, based on its claim constructions, and precluded the defendants’ unclean hands defense for being raised too late. After a bench trial, the court found that the defendants infringed the asserted patents, the HOOKLESS® and EZ ON trademarks, and the claimed trade dress, and that some infringement was willful. The court awarded lost profits, reasonable royalties, attorneys’ fees, and costs. On appeal, the United States Court of Appeals for the Federal Circuit affirmed the denial of the venue transfer and the exclusion of the unclean hands defense. However, it reversed the findings of infringement for the ’248 and ’609 patents as to one defendant, vacated the ’088 patent infringement finding as to that defendant, and affirmed the patent infringement findings as to the other. The court also vacated the trade dress infringement and willfulness findings, reversed the EZ ON trademark infringement finding, and vacated the HOOKLESS® trademark infringement finding. The award of attorneys’ fees was vacated, and the case was remanded for further proceedings consistent with these rulings. The court clarified the standards for claim construction, trade dress functionality, and standing to assert trademark rights. View "Focus Products Group International, LLC v. Kartri Sales Co." on Justia Law

Apex Bank v. CC Serve Corp.

2025-09-25T06:32:14-08:00

A company that provides credit card services under the registered mark ASPIRE opposed the registration of two marks—ASPIRE BANK word and design marks—by a Tennessee retail bank, Apex Bank. Apex Bank, which does not offer credit cards but provides various banking services, filed intent-to-use applications for the ASPIRE BANK marks for “banking and financing services.” CC Serve, the credit card company, argued that Apex’s proposed marks were confusingly similar to its own ASPIRE mark, which has been used in connection with credit card services since 1996. The Trademark Trial and Appeal Board (TTAB) reviewed the opposition and sustained it under Section 2(d) of the Lanham Act, finding that there was a likelihood of consumer confusion between the marks. The Board analyzed several factors from the E. I. DuPont DeNemours & Co. case, including the similarity of the services and the marks themselves, and concluded that the services were highly similar and that confusion was likely. Apex Bank appealed the TTAB’s decision to the United States Court of Appeals for the Federal Circuit. The United States Court of Appeals for the Federal Circuit affirmed the TTAB’s finding that the parties’ services are highly similar, upholding the Board’s analysis of the second DuPont factor. However, the appellate court found that the Board erred in its analysis of the sixth DuPont factor by narrowly considering only marks used for credit card services, rather than similar marks used for broader banking and financing services. The court also vacated the Board’s analysis of the first DuPont factor, as reconsideration of the sixth factor could affect the assessment of the marks’ commercial impression. The case was affirmed in part, vacated in part, and remanded for further proceedings consistent with the appellate court’s opinion. View "Apex Bank v. CC Serve Corp." on Justia Law

TRADER JOE'S COMPANY V. TRADER JOES UNITED

2025-09-08T08:01:26-08:00

Trader Joe’s, a national grocery store chain, has used its distinctive trademarks, including a unique red typeface and logo, since 1967 and does not franchise or license these marks. The company also sells branded merchandise such as reusable tote bags. Trader Joe’s United, a labor union representing some of Trader Joe’s employees, began selling merchandise—including tote bags, apparel, mugs, and buttons—on its website, allegedly using Trader Joe’s trademarks and design elements. Trader Joe’s sent cease-and-desist letters, objecting only to the union’s commercial use of its marks on merchandise, not to the union’s use of the company name for identification or advocacy. The union refused to comply, and Trader Joe’s filed suit, alleging trademark infringement, dilution, and related claims. The United States District Court for the Central District of California granted the union’s motion to dismiss the complaint with prejudice, finding no plausible likelihood of consumer confusion under the Sleekcraft factors and concluding that the Norris-LaGuardia Act (NLGA) barred injunctive relief because the dispute arose from a labor dispute. The district court also dismissed the trademark dilution claim under the nominative fair use doctrine and awarded attorneys’ fees to the union, finding the suit frivolous and improperly motivated. The United States Court of Appeals for the Ninth Circuit reversed the dismissal of the trademark infringement claim, holding that, when viewing the allegations in the light most favorable to Trader Joe’s, the district court erred in its application of the Sleekcraft likelihood-of-confusion test. The appellate court also held that the district court erred in dismissing the dilution claim without proper analysis and in concluding that the NLGA categorically barred injunctive relief at the pleading stage. The Ninth Circuit vacated the attorneys’ fees award and remanded for further proceedings. View "TRADER JOE'S COMPANY V. TRADER JOES UNITED" on Justia Law

Hoffmann Bros. Heating & Air v. Hoffmann Air & Heating

2025-09-08T07:30:27-08:00

Two brothers, Tom and Robert Hoffmann, were formerly partners in a family heating and air conditioning business. After Robert bought out Tom’s interest, they settled their disputes in state court with an agreement that included a four-year prohibition on Tom’s use of the “Hoffmann” name in any HVAC business, as well as non-disparagement and non-solicitation clauses. After the four-year period, Tom started a new company, Hoffmann Air Conditioning & Heating, LLC, using the family name. Robert and his company, Hoffmann Brothers Heating and Air Conditioning, Inc., objected and filed suit in federal court, alleging copyright infringement, trademark infringement, unfair competition, and breach of contract. The United States District Court for the Eastern District of Missouri granted summary judgment to Tom and his company on the copyright claim, finding insufficient evidence of damages or a causal link between the alleged infringement and any profits. The remaining claims proceeded to a jury trial, which resulted in a mixed verdict largely favoring Tom and his company on the trademark and unfair competition claims. Both sides sought attorney fees, but the district court denied all requests. On appeal, the United States Court of Appeals for the Eighth Circuit reviewed the district court’s rulings. The appellate court affirmed the summary judgment on the copyright claim, holding that the evidence of damages and profits was too speculative. It also upheld the jury instructions and verdict on the trademark claims, finding the instructions properly reflected the law regarding customer sophistication and initial-interest confusion. The court agreed that ambiguity in the settlement agreement’s language about post-four-year use of the Hoffmann name was a factual question for the jury. Finally, the court affirmed the denial of attorney fees to Robert, as he had not personally incurred any fees. The judgment of the district court was affirmed in all respects. View "Hoffmann Bros. Heating & Air v. Hoffmann Air & Heating" on Justia Law

Ripple Analytics Inc. v. People Center, Inc.

2025-08-26T06:30:08-08:00

Ripple Analytics Inc. operated a software platform for human resources functions and originally owned the federal trademark for the word “RIPPLE®” in connection with its software. In April 2018, Ripple assigned all rights, title, and interest in its intellectual property, including the trademark, to its Chairman and CEO, Noah Pusey. Meanwhile, People Center, Inc. began using the name “RIPPLING” for similar software, though it abandoned its own trademark registration effort. Ripple later sued People Center for trademark infringement and unfair competition, claiming ownership of the RIPPLE® mark. The United States District Court for the Eastern District of New York reviewed the case. During discovery, Ripple produced the assignment agreement showing that Pusey, not Ripple, owned the trademark. People Center moved to dismiss under Federal Rule of Civil Procedure 17, arguing Ripple was not the real party in interest. The district court dismissed Ripple’s trademark infringement claim with prejudice, dismissed its unfair competition claims without prejudice for lack of standing, and denied Ripple’s motion to amend its complaint, finding the proposed amendment futile because it did not resolve the standing issue. On appeal, the United States Court of Appeals for the Second Circuit affirmed the district court’s judgment. The appellate court held that Ripple was not the real party in interest for the trademark infringement claim, as ownership had been assigned to Pusey, who failed to ratify or join the action. The court also held that Ripple lacked standing to pursue unfair competition claims under federal and state law, as it no longer had a commercial interest in the trademark. The denial of Ripple’s motion to amend was upheld because the amendment would not cure the standing defect. The court further found that the district court’s interlocutory order allowing People Center to amend its answer was not properly before it on appeal. View "Ripple Analytics Inc. v. People Center, Inc." on Justia Law

In Re BRUNETTI

2025-08-26T06:02:05-08:00

Erik Brunetti applied to register the word “FUCK” as a trademark for various goods and services, including sunglasses, jewelry, bags, and retail store services. After initial refusals based on the mark being “immoral or scandalous”—a ground later found unconstitutional by the Supreme Court in Iancu v. Brunetti—the United States Patent and Trademark Office (PTO) reexamined the applications. The PTO’s examining attorney refused registration, finding that the term was a widely used, commonplace word that failed to function as a trademark because consumers would not perceive it as identifying the source of the goods or services. The Trademark Trial and Appeal Board (TTAB) affirmed the refusals, concluding that the mark did not serve as a source indicator. The Board reasoned that “FUCK” is an “all-purpose word” with many recognized meanings and is commonly used on similar goods by various sources, so it would not be seen by consumers as distinguishing Brunetti’s products from others. The Board also rejected Brunetti’s constitutional arguments and his reliance on other registered marks, stating that each application must be considered on its own merits. On appeal, the United States Court of Appeals for the Federal Circuit reviewed the Board’s decision under the standards of the Administrative Procedure Act. The court rejected most of Brunetti’s arguments but found that the Board failed to articulate a clear and rational standard for when an “all-purpose word” like “FUCK” can or cannot function as a trademark, especially given the existence of similar registered marks. The Federal Circuit vacated the Board’s decision and remanded for further proceedings, holding that the Board must provide a satisfactory explanation and coherent guidance for its actions. View "In Re BRUNETTI " on Justia Law

HARA V. NETFLIX, INC.

2025-07-28T08:00:44-08:00

Lance Hara, professionally known as Vicky Vox, sued Netflix, Inc. and others connected with the animated show Q-Force under the Lanham Act. Vox alleged that an animated version of her likeness appeared in a ten-second scene in the show, as well as in the official teaser and a still image promoting the series. She claimed that the unauthorized use of her image and likeness led viewers to believe that she endorsed Q-Force, constituting unfair competition and false endorsement under 15 U.S.C. § 1125. The United States District Court for the Central District of California dismissed Vox’s federal claims with prejudice, finding that Q-Force and its official teaser were expressive works entitled to heightened First Amendment protection under the Rogers test. The district court concluded that Vox failed to state a claim under the Lanham Act. The court also dismissed Vox’s state law claims for lack of subject-matter jurisdiction. Vox appealed the decision. The United States Court of Appeals for the Ninth Circuit affirmed the district court’s dismissal. The court held that following the Supreme Court’s decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, the Rogers test applies when the challenged mark in an artistic work is used not to designate a work’s source but solely to perform some other expressive function. The court concluded that the defendants’ alleged use of Vox’s image and likeness in Q-Force did not suggest or identify Vox as a source or origin of the show. Under the Rogers test, the use of Vox’s likeness had artistic relevance to Q-Force, and there was no overt claim or explicit misstatement that Vox was the source of Q-Force. Therefore, Vox failed to satisfy either prong of the Rogers test. The Ninth Circuit affirmed the district court’s decision. View "HARA V. NETFLIX, INC." on Justia Law

Yuga Labs, Inc. v. Ripps

2025-07-23T08:30:36-08:00

Yuga Labs, Inc. created the Bored Ape Yacht Club (BAYC) NFT collection, which became highly popular and valuable. Defendants Ryder Ripps and Jeremy Cahen created a nearly identical NFT collection called Ryder Ripps Bored Ape Yacht Club (RR/BAYC), using the same images and identifiers as Yuga's BAYC NFTs. Yuga sued for trademark infringement and cybersquatting, while Defendants countersued under the Digital Millennium Copyright Act (DMCA) and sought declaratory relief that Yuga had no copyright protection over the Bored Apes. The United States District Court for the Central District of California dismissed Defendants' declaratory-judgment counterclaims for lack of subject-matter jurisdiction and granted summary judgment for Yuga on its trademark infringement and cybersquatting claims, as well as on Defendants' DMCA counterclaim. The court then held a bench trial on remedies, enjoining Defendants from using the BAYC marks and awarding Yuga over $8 million in disgorgement of profits, statutory damages, attorney fees, and costs. The United States Court of Appeals for the Ninth Circuit reviewed the case. The court held that NFTs can be trademarked under the Lanham Act as they are considered "goods." However, the court reversed the district court's grant of summary judgment for Yuga on its trademark infringement and cybersquatting claims, concluding that Yuga did not prove as a matter of law that Defendants' actions were likely to cause consumer confusion. The court found that Defendants' use of Yuga's marks did not constitute nominative fair use and was not protected by the First Amendment. The court affirmed the district court's rejection of Defendants' DMCA counterclaim and the dismissal of their declaratory-judgment claims with prejudice. The case was remanded for further proceedings. View "Yuga Labs, Inc. v. Ripps" on Justia Law

Sunkist Growers, Inc. v. Intrastate Distributors, Inc.

2025-07-23T08:01:57-08:00

Sunkist Growers, Inc. ("Sunkist") opposed Intrastate Distributors, Inc.'s ("IDI") applications to register the mark KIST in standard characters and a stylized form for soft drinks, arguing a likelihood of confusion with its registered SUNKIST marks. Sunkist has offered SUNKIST branded beverages for at least ninety years and owns multiple SUNKIST trademark registrations. IDI, a bottling company, purchased the KIST brand in 2009 and has used it for various soda products. The United States Trademark Trial and Appeal Board ("Board") dismissed Sunkist's opposition, finding no likelihood of confusion between IDI's KIST marks and Sunkist's SUNKIST marks. The Board analyzed the DuPont factors and found that while the similarity of goods, trade channels, conditions of sale, and strength of Sunkist's mark favored a likelihood of confusion, the similarity of the marks and actual confusion factors did not. The Board concluded that the different commercial impressions of the marks (KIST referencing a kiss and SUNKIST referencing the sun) and the lack of reported instances of confusion outweighed the other factors. The United States Court of Appeals for the Federal Circuit reviewed the Board's decision. The court found that the Board's conclusion regarding the different commercial impressions of the marks was not supported by substantial evidence. The court noted that the KIST mark did not consistently include a lips image and that the SUNKIST mark was often used without a sun design. The court concluded that the similarity of the marks favored a likelihood of confusion and that the Board's finding of no likelihood of confusion was incorrect. The court reversed the Board's decision, holding that IDI's KIST marks are likely to cause confusion with Sunkist's registered SUNKIST marks. View "Sunkist Growers, Inc. v. Intrastate Distributors, Inc." on Justia Law

CPI Security Systems, Inc. v. Vivint Smart Home, Inc.

2025-07-22T10:30:28-08:00

CPI Security Systems, Inc. filed a lawsuit against Vivint Smart Home, Inc., alleging that Vivint engaged in deceptive practices to lure away CPI’s customers. Vivint sales representatives falsely claimed that Vivint had acquired CPI, that CPI was going out of business, or that Vivint needed to upgrade CPI’s equipment. These tactics led many CPI customers to switch to Vivint, causing significant losses for CPI. A jury found Vivint liable for violating the Lanham Act, the North Carolina Unfair and Deceptive Trade Practices Act (UDTPA), and for committing the common-law torts of unfair competition and tortious interference with contracts. The jury awarded CPI $49.7 million in compensatory damages and $140 million in punitive damages. The United States District Court for the Western District of North Carolina upheld the jury’s verdict. Vivint appealed, raising several issues, including the requirement of CPI’s reliance on false statements for the UDTPA claim, the sufficiency of evidence supporting the damages award, the application of North Carolina’s cap on punitive damages, and the admission of prejudicial evidence. The United States Court of Appeals for the Fourth Circuit reviewed the case and found no reversible error. The court held that CPI was not required to prove its own reliance on Vivint’s false statements to establish a UDTPA claim, as the claim was based on unfair competition rather than fraud. The court also found that the evidence presented by CPI was sufficient to support the jury’s damages award. Additionally, the court ruled that the district court correctly applied North Carolina’s cap on punitive damages by considering the total compensatory damages awarded. The court further held that the district court did not abuse its discretion in denying Vivint’s motion to bifurcate the trial or in its evidentiary rulings. The reassignment of the trial judge post-trial did not warrant a new trial. Consequently, the Fourth Circuit affirmed the district court’s judgment. View "CPI Security Systems, Inc. v. Vivint Smart Home, Inc." on Justia Law

Top Brand LLC v. Cozy Comfort Co.

2025-07-17T07:31:26-08:00

Top Brand and Cozy Comfort are competitors in the market for oversized hooded sweatshirts. Cozy Comfort owns a design patent (D788 patent) and two trademarks for "THE COMFY" related to blanket throws. Top Brand sought a declaratory judgment of noninfringement of the design patent, while Cozy Comfort counterclaimed for infringement of both the design patent and trademarks. The jury found in favor of Cozy Comfort, determining that Top Brand had infringed both the design patent and the trademarks, and awarded Cozy Comfort $15.4 million for patent infringement and $3.08 million for trademark infringement. The United States District Court for the District of Arizona denied Top Brand's motion for judgment as a matter of law (JMOL) and entered judgment based on the jury's verdict. Top Brand then appealed to the United States Court of Appeals for the Federal Circuit. The Federal Circuit held that the principles of prosecution history disclaimer apply to design patents. The court found that Top Brand was entitled to JMOL of noninfringement of the design patent because the accused design fell within the scope of the subject matter surrendered during prosecution. The court also concluded that substantial evidence did not support the jury’s verdict of trademark infringement. Consequently, the Federal Circuit reversed the district court’s denial of JMOL and found in favor of Top Brand on both the design patent and trademark infringement claims. View "Top Brand LLC v. Cozy Comfort Co." on Justia Law

Doctor’s Best, Inc. v. Nature’s Way Products, LLC

2025-07-15T08:31:03-08:00

Doctor’s Best, Inc. (DB), a Delaware corporation, developed a new line of supplements branded as "Nature’s Day" and sought a U.S. trademark. Nature’s Way Products, LLC (NWP), a Wisconsin company owning the "Nature’s Way" trademark, claimed this infringed on their trademark. DB’s "Nature’s Day" products were manufactured and transported within the U.S. but sold exclusively abroad. DB sought a declaratory judgment of non-infringement, while NWP counterclaimed for trademark infringement under the Lanham Act. The United States District Court for the Central District of California granted summary judgment in favor of DB, concluding that NWP failed to show a likelihood of consumer confusion from DB’s domestic conduct. The court applied the extraterritoriality framework from Abitron Austria GmbH v. Hetronic International, Inc., determining that only DB’s U.S. transport of the products was actionable under the Lanham Act. The court found no genuine issue of material fact regarding the likelihood of consumer confusion from this conduct. The United States Court of Appeals for the Ninth Circuit affirmed the district court’s decision. The Ninth Circuit held that the district court correctly applied the Abitron framework to isolate DB’s domestic conduct and properly used the Sleekcraft factors to assess the likelihood of consumer confusion. The court agreed that no rational jury could find that DB’s domestic transport of "Nature’s Day" products infringed NWP’s trademarks. The court also upheld the district court’s denial of NWP’s request for additional discovery time, noting NWP’s lack of diligence in pursuing discovery. View "Doctor’s Best, Inc. v. Nature’s Way Products, LLC" on Justia Law

Wudi Industrial (Shanghai) Co., Ltd. v. Wong

2025-07-11T10:30:19-08:00

Wudi Industrial (Shanghai) Co., Ltd. (Wudi) and Wai L. Wong, along with Wong’s business entity GT Omega Racing, Ltd. (collectively Wong), were involved in a trademark dispute over the use of the "GTRACING" and "GT OMEGA RACING" marks. Wudi registered the "GTRACING" trademark in 2017, and Wong initiated cancellation proceedings, claiming prior use of a similar mark. The Trademark Trial and Appeal Board ruled in favor of Wong in 2020. Wudi sought review in the Eastern District of Virginia, leading to a settlement agreement in 2021, which included geographic and product-based restrictions on Wudi’s use of the "GTRACING" mark, particularly in Europe. The district court granted a stay pending compliance with the settlement agreement. Wong later alleged that Wudi breached the agreement by violating social media restrictions within the European Carve-Out. The district court found Wudi in violation and ordered specific performance. Wudi appealed, and the Fourth Circuit remanded for further proceedings, requiring the district court to comply with procedural requirements for injunctive relief. On remand, the district court issued an injunction, finding that Wudi breached the settlement agreement by using prohibited terms on social media within the European Carve-Out. The court applied the eBay factors, concluding that Wong suffered irreparable harm, monetary damages were inadequate, the balance of hardships favored Wong, and the public interest supported enforcing the agreement. The United States Court of Appeals for the Fourth Circuit reviewed the case and affirmed the district court’s injunction. The court held that the district court had the authority to enforce the settlement agreement, the eBay factors were properly applied, and Wudi’s contentions regarding extraterritoriality, parol evidence, unclean hands, and attorney’s fees were without merit. The injunction was upheld, requiring Wudi to comply with the settlement agreement’s terms. View "Wudi Industrial (Shanghai) Co., Ltd. v. Wong" on Justia Law

Benshot, LLC v. 2 Monkey Trading, LLC

2025-07-09T11:01:24-08:00

BenShot, LLC, a family-owned business, sells a unique drinking glass design featuring a bullet "penetrating" the side. 2 Monkey Trading, LLC and Lucky Shot USA, LLC (the Debtors) sell similar glasses imported from China, falsely advertised as "Made in the United States." BenShot sued the Debtors in the Eastern District of Wisconsin for Lanham Act violations and Wisconsin common law. A jury found in favor of BenShot, awarding punitive damages and determining the Debtors acted maliciously or in intentional disregard of BenShot's rights. Following the jury verdict, the Debtors filed for bankruptcy under Subchapter V of Chapter 11. BenShot argued that the jury award was a non-dischargeable debt for willful and malicious injury under 11 U.S.C. §§ 523(a)(6) and 1192(2). The Debtors moved to dismiss, claiming § 523(a)(6) only applied to individual debtors, not corporate debtors like themselves. The United States Bankruptcy Court for the Middle District of Florida agreed with the Debtors and dismissed BenShot's complaint, relying on similar interpretations by other bankruptcy courts. The United States Court of Appeals for the Eleventh Circuit reviewed the case. The court held that under § 1192, both individual and corporate debtors cannot discharge any debts of the kind listed in § 523(a). The court found the plain language of § 1192 unambiguous, applying to both individual and corporate debtors, and that "debt" as defined in the Bankruptcy Code does not distinguish between individual or corporate debtors. The court reversed the bankruptcy court's order and remanded the case for further proceedings consistent with this opinion. View "Benshot, LLC v. 2 Monkey Trading, LLC" on Justia Law

Reed v. Marshall

2025-07-03T04:00:25-08:00

In 1991, three singers—Di Reed, Tonya Harris, and Joi Marshall—formed the vocal group Jade, which achieved significant success in the early 1990s. The group disbanded in 1995, and the members pursued individual careers. In 2018, the three agreed to a reunion tour and jointly applied for the "JADE" service mark, which was approved in 2019. However, the reunion tour did not materialize, and in 2021, Marshall and Harris performed with another singer, Myracle Holloway, under the JADE mark, leading Reed to file a lawsuit. Reed sued Marshall, Harris, and Holloway in the Southern District of Texas, alleging Lanham Act violations, including trademark infringement, dilution, and unfair competition, as well as Texas state law claims. The district court granted summary judgment for the defendants, concluding that Reed could not allege Lanham Act claims against her co-owners of the mark or Holloway, who performed with their permission. The United States Court of Appeals for the Fifth Circuit reviewed the case. The court held that the Lanham Act does not authorize claims between co-owners of a trademark. It affirmed the district court's summary judgment, stating that co-owners of a mark cannot sue each other for infringement or dilution under the Lanham Act. The court also found that Reed's unfair competition claims could not survive summary judgment and that there was no supplemental jurisdiction over the Texas law claims. The court emphasized that co-owners have the right to use the mark as they please, and a valid licensee of one co-owner cannot be liable to another co-owner for infringement. View "Reed v. Marshall" on Justia Law

Grunt Style LLC v TWD, LLC

2025-06-12T14:00:17-08:00

TWD, LLC filed a complaint against Grunt Style LLC in 2018, alleging trademark infringement. Both companies sell goods with military-related trademarks. Grunt Style counterclaimed, asserting TWD was infringing on its prior trademark. The district court granted Grunt Style's motion for partial summary judgment in April 2022, dismissing all of TWD's claims. The case was reassigned to Judge Hunt, who held a bench trial in 2024 and ordered TWD to pay Grunt Style $739,500. Grunt Style moved to amend the judgment to include interest and permanent injunctive relief, which the district court granted in January 2025. TWD filed a notice of appeal from the amended judgment, which was docketed as appeal No. 25-1305. During a preliminary review, the Seventh Circuit identified a potential jurisdictional issue because the district court's judgment did not explicitly address TWD's counterclaims. The court directed the parties to address whether the judgment was deficient. TWD filed an amended notice of appeal, which was docketed as a new appeal, No. 25-1341. The district court later issued an indicative ruling, signaling its intent to correct the judgment if the case was remanded. The United States Court of Appeals for the Seventh Circuit agreed with the district court's solution and decided to remand the case for correction of the clerical mistake in the judgment. The court retained jurisdiction over the appeal and dismissed the second appeal (No. 25-1341) as unnecessary, without collecting an additional fee. The court emphasized the importance of clear and complete judgments to avoid jurisdictional issues and ensure appellate jurisdiction is clear. View "Grunt Style LLC v TWD, LLC" on Justia Law

CURTIN v. UNITED TRADEMARK HOLDINGS, INC.

2025-05-22T06:31:10-08:00

Rebecca Curtin filed an opposition to United Trademark Holdings’ (UTH) registration of the mark RAPUNZEL for dolls and toy figures, claiming the mark was generic, descriptive, and failed to function as a trademark. Curtin, a doll collector and mother, argued that the registration would harm consumers by reducing competition and increasing prices for Rapunzel merchandise. She also claimed it would chill the creation of new Rapunzel-themed dolls and toys. The Trademark Trial and Appeal Board (TTAB) dismissed Curtin’s opposition, concluding she was not statutorily entitled to oppose the registration under 15 U.S.C. § 1063. The TTAB applied the Lexmark framework, which requires a plaintiff to fall within the zone of interests protected by the statute and to show a reasonable belief in damage proximately caused by the registration. The TTAB found that Curtin, as a consumer, did not have a commercial interest protected by the Lanham Act and that her alleged injuries were too remote and speculative. The United States Court of Appeals for the Federal Circuit reviewed the case. The court affirmed the TTAB’s decision, agreeing that the Lexmark framework was correctly applied. The court held that the interests protected by the Lanham Act in this context are commercial, and Curtin, as a consumer, did not fall within the zone of interests. Additionally, the court found that Curtin’s alleged injuries were derivative of harms to commercial actors and too remote to establish proximate causation. Thus, Curtin was not entitled to oppose the registration of the RAPUNZEL mark. View "CURTIN v. UNITED TRADEMARK HOLDINGS, INC. " on Justia Law

In Re VETEMENTS GROUP AG

2025-05-21T06:36:16-08:00

Vetements Group AG filed applications to register two marks, "VETEMENTS" in standard characters and in stylized form, for clothing items and online retail store services featuring clothing. The United States Patent and Trademark Office (PTO) Examining Attorney refused the applications, asserting that the marks were generic or merely descriptive without acquired distinctiveness, and thus barred from registration under Section 2(e)(1) of the Trademark Act. The Trademark Trial and Appeal Board (Board) affirmed the Examining Attorney's refusal, applying the foreign equivalents doctrine. The Board found that "VETEMENTS," which translates to "clothing" in English, was generic for the identified goods and services. The Board also determined that the marks were highly descriptive and that Vetements Group AG failed to establish acquired distinctiveness among U.S. consumers. The United States Court of Appeals for the Federal Circuit reviewed the case and upheld the Board's decision. The court agreed that the foreign equivalents doctrine was correctly applied, noting that an appreciable number of Americans are capable of translating "VETEMENTS" from French to English. The court found substantial evidence supporting the Board's conclusion that the marks were generic, as they directly referred to the genus of goods and services in question. Consequently, the court affirmed the Board's decision to refuse registration of the marks. View "In Re VETEMENTS GROUP AG " on Justia Law

In Re FOSTER

2025-05-07T06:31:12-08:00

Thomas D. Foster, APC (Foster) sought to register the trademark "US SPACE FORCE" for various goods and services. The application was filed on March 19, 2018, shortly after President Donald J. Trump announced the creation of a new military branch called the Space Force. The United States Patent and Trademark Office (USPTO) examining attorney refused the registration, citing a false suggestion of a connection with the United States under § 2(a) of the Lanham Act. The Trademark Trial and Appeal Board (Board) affirmed the examining attorney’s refusal, concluding that the mark falsely suggested a connection with the United States. Foster requested reconsideration, arguing that the Board erred by not crediting the filing date of the intent-to-use application as the constructive use date and by relying on evidence post-dating the filing date. The Board denied reconsideration, maintaining that Foster was not the prior user and that there was ample evidence supporting the false connection analysis. The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that the appropriate timing for assessing a false suggestion of a connection includes evidence up to the time of examination, which in this case extended through the Board’s December 12, 2022 decision. The court found substantial evidence supporting the Board’s findings that the mark "US SPACE FORCE" was the same as or a close approximation of a name or identity used by the United States and that it pointed uniquely and unmistakably to the United States. The court affirmed the Board’s decision, concluding that the mark falsely suggested a connection with the United States and was therefore unregistrable under § 2(a) of the Lanham Act. View "In Re FOSTER" on Justia Law

HERNANDEZ VS. THE HOME DEPOT, INC.

2025-05-01T08:06:07-08:00

Oscar Hernandez allegedly sustained injuries from a RIDGID-branded nail gun purchased from Home Depot. The nail gun, designed and manufactured by other companies, was marketed and sold by Home Depot under a trademark license agreement with Ridge Tool Company. Hernandez filed a complaint against Ridge Tool Company and Home Depot, asserting claims of strict liability, negligence, breach of express warranty, and breach of implied warranty of fitness. The case was removed to the U.S. District Court for the District of Nevada. The respondents moved for summary judgment, arguing that Ridge Tool Company should not be held strictly liable as it only licensed the RIDGID trademark and did not participate in the design, manufacture, distribution, or sale of the nail gun. The U.S. District Court granted summary judgment on all claims except the strict liability claim, noting the lack of controlling precedent in Nevada on whether a trademark licensor can be held strictly liable under such circumstances. The court certified the question to the Supreme Court of Nevada. The Supreme Court of Nevada concluded that Nevada does not impose strict products liability on an entity whose only involvement with a defective product is licensing its trademark for marketing purposes. The court adopted the rule set forth in section 14 of the Restatement (Third) of Torts: Products Liability, which states that a trademark licensor is not subject to strict liability unless it substantially participates in the design, manufacture, or distribution of the product. The court answered the certified question in the negative, holding that a trademark licensor cannot be held strictly liable for damages caused by a defective product if its role is limited to licensing its trademark. View "HERNANDEZ VS. THE HOME DEPOT, INC." on Justia Law

Top Tobacco, L.P. v. Star Importers & Wholesalers, Inc.

2025-04-30T12:32:44-08:00

Top Tobacco, L.P., Republic Technologies (NA), LLC, and Republic Tobacco, L.P. sued Star Importers & Wholesalers, Inc., and its president, Amin Hudda, for selling counterfeit TOP® and JOB® cigarette rolling papers. Republic conducted test buys and laboratory testing, which confirmed the products were counterfeit. The police seized 704 jars of allegedly counterfeit rolling papers from Star’s warehouse. Republic alleged trademark counterfeiting, trademark infringement, unfair competition, deceptive trade practices, and unjust enrichment. The United States District Court for the Northern District of Georgia granted summary judgment against Star on liability for trademark infringement and counterfeiting but not against Hudda. The remaining issues for trial were Hudda’s personal liability, whether Star’s actions were willful, and the amount of statutory damages. The jury found Star did not act willfully and awarded Republic $123,000 in damages per mark, totaling $1,107,000 for nine marks. The district court denied Star’s motion for judgment as a matter of law challenging the verdict size. The United States Court of Appeals for the Eleventh Circuit reviewed the case. The court held that the district court did not err in refusing to reduce the jury verdict, as it fell within the statutory damages range permitted by the Lanham Act. The court affirmed that statutory damages need not be related to actual damages and that the jury could consider factors such as the value of the trademark, deterrence, and public safety risks. The court also found that the verdict did not violate due process, as it was not so disproportionate as to be unreasonable. The Eleventh Circuit affirmed the district court’s denial of Star’s motion for judgment as a matter of law. View "Top Tobacco, L.P. v. Star Importers & Wholesalers, Inc." on Justia Law

In Re PT MEDISAFE TECHNOLOGIES

2025-04-29T06:34:28-08:00

PT Medisafe Technologies, a medical glove manufacturer, applied to the United States Patent and Trademark Office (PTO) for registration of a color mark for use on medical examination gloves. The proposed mark was described as the color dark green (Pantone 3285 c) applied to the entire surface of chloroprene examination gloves. The PTO’s examining attorney found the color was not inherently distinctive and could not be registered without showing acquired distinctiveness. Medisafe attempted to prove acquired distinctiveness but was ultimately rejected by the examining attorney, who determined the mark was generic and had not acquired distinctiveness. The Trademark Trial and Appeal Board (Board) reviewed the examining attorney’s decision. The Board applied a modified version of the H. Marvin Ginn test, tailored for color marks, as set out in Milwaukee Electric Tool Corp. v. Freud America, Inc. The Board defined the genus of goods as all chloroprene medical examination gloves and found the relevant public to include all purchasers of such gloves. The Board agreed with the examining attorney that the dark green color was common in the industry and could not identify a single source, thus deeming the mark generic. The Board also found Medisafe’s evidence of acquired distinctiveness unconvincing and affirmed the refusal to register the mark. The United States Court of Appeals for the Federal Circuit reviewed the Board’s decision. The court affirmed the Board’s application of the Milwaukee test and found substantial evidence supporting the Board’s determination that the mark was generic. The court held that the dark green color was so common in the industry that it could not serve as a source indicator, making it ineligible for registration on either the principal or supplemental registers. The court did not address the issue of acquired distinctiveness, as a generic mark cannot acquire distinctiveness. View "In Re PT MEDISAFE TECHNOLOGIES " on Justia Law

HERITAGE ALLIANCE v. AMERICAN POLICY ROUNDTABLE

2025-04-09T07:01:02-08:00

Heritage Alliance offers voter guides under the names “iVoterGuide” and “iVoterGuide.com.” In January 2019, the American Policy Roundtable (APR) filed for registration of the marks “iVoters” and “iVoters.com.” Heritage opposed APR’s registration, claiming that APR’s marks would likely be confused with Heritage’s marks, for which Heritage claimed priority of use. The Trademark Trial and Appeal Board (Board) of the United States Patent and Trademark Office (PTO) found that Heritage’s prior-use marks were not protectable because they were highly descriptive and had not acquired distinctiveness, and dismissed the opposition. The Board determined that Heritage had begun using its iVoterGuide marks well before APR’s first use date. However, the Board found that APR effectively conceded likelihood of confusion. Despite this, the Board ruled that Heritage’s prior-use marks were not protectable as trademarks because they were highly descriptive and had not acquired distinctiveness. The Board found that the marks were highly descriptive as they clearly described the service offered, and that Heritage’s evidence of acquired distinctiveness was insufficient. The United States Court of Appeals for the Federal Circuit reviewed the Board’s decision. The court affirmed the Board’s findings that the iVoterGuide marks were highly descriptive and had not acquired distinctiveness. The court found that the Board’s determination was supported by substantial evidence, including the descriptive nature of the marks and the limited additional evidence of acquired distinctiveness. The court concluded that the Board’s decision to dismiss the opposition was correct and affirmed the dismissal. View "HERITAGE ALLIANCE v. AMERICAN POLICY ROUNDTABLE " on Justia Law

Dyson Technology Limited v David 7 Store

2025-03-24T09:00:34-08:00

Dyson Technology, Ltd., a UK-based company, filed a trademark infringement lawsuit against multiple e-commerce stores for selling counterfeit Dyson products. Dyson sought remedies under the Lanham Act, which allows trademark holders to recover profits, damages, and costs from infringing parties. The defendants did not appear in court, leading to a default judgment in Dyson's favor. However, the district court awarded only $1,000 in statutory damages and denied Dyson's request to recover the infringing sellers' profits, stating that Dyson had only provided evidence of revenue, not profits. The United States District Court for the Northern District of Illinois, Eastern Division, handled the initial case. The court's decision to limit Dyson's award was based on its interpretation that revenue and profits are not the same, and it declined to assume that all revenue equaled profits. The United States Court of Appeals for the Seventh Circuit reviewed the case. The appellate court held that the district court erred in its interpretation of the Lanham Act. According to the Act, a prevailing plaintiff is entitled to the defendant's profits, and the defendant bears the burden of proving any costs or deductions. The appellate court found that Dyson's evidence of revenue was sufficient to establish profits, as the defendants did not provide evidence to the contrary. The court reversed the district court's decision and remanded the case for further proceedings, allowing the district court to adjust the award if deemed just based on the case's circumstances. View "Dyson Technology Limited v David 7 Store" on Justia Law

DOLLAR FINANCIAL GROUP, INC. v. BRITTEX FINANCIAL, INC.

2025-03-19T07:01:13-08:00

Dollar Financial Group, Inc. (DFG) has operated loan financing and check cashing businesses under the name MONEY MART since the 1980s. In 2010, DFG began expanding its services to include pawn brokerage and pawn shop services, using the MONEY MART mark in commerce for these services starting in 2012. DFG registered two marks in 2013, which were officially registered in 2014. Brittex Financial, Inc. (Brittex) has operated pawn shops in Texas under the names MONEY MART PAWN and MONEY MART PAWN & JEWELRY since the 1990s and has common law rights in these marks. The Trademark Trial and Appeal Board (TTAB) initially denied Brittex’s petition to cancel DFG’s registrations, concluding that DFG had priority due to its earlier use of the MONEY MART mark for loan financing services. Brittex appealed, and the United States Court of Appeals for the Federal Circuit reversed the TTAB’s decision, finding that pawn services are not covered by loan financing services. On remand, the TTAB held that Brittex had priority for pawn services and that DFG could not rely on the zone of natural expansion doctrine to claim priority. The TTAB also found a likelihood of confusion between the marks and partially granted the petition for cancellation, requiring the deletion of "pawn brokerage and pawn shops" from DFG’s registrations. The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the TTAB’s decision. The court held that the zone of natural expansion doctrine is purely defensive and cannot be used to establish priority offensively. The court also found that DFG’s tacking argument was forfeited as it was not raised before the TTAB. Additionally, the court concluded that substantial evidence supported the TTAB’s findings on the likelihood of confusion, including the similarity of the marks and the strength of Brittex’s mark. The court affirmed the TTAB’s partial cancellation of DFG’s trademark registrations. View "DOLLAR FINANCIAL GROUP, INC. v. BRITTEX FINANCIAL, INC. " on Justia Law

Westmont Living, Inc. v. Retirement Unlimited, Inc.

2025-03-18T10:30:24-08:00

Westmont Living, Inc., a California corporation operating retirement communities and assisted living facilities, filed a lawsuit against Retirement Unlimited, Inc. (RUI), a Virginia corporation, alleging trademark infringement. Westmont Living claimed that RUI's use of the name "The Westmont at Short Pump" for its new facility in Virginia created a likelihood of confusion with Westmont Living's federally registered "Westmont Living" trademarks, violating the Lanham Act and related laws. Westmont Living sought an injunction and damages. The United States District Court for the Eastern District of Virginia granted summary judgment in favor of RUI, concluding that consumer confusion was impossible because the parties operated in entirely distinct geographic markets. The court relied on the Second Circuit's decision in Dawn Donut Co. v. Hart’s Food Stores, Inc., which held that no likelihood of confusion exists when parties use their marks in separate and distinct markets. The United States Court of Appeals for the Fourth Circuit reviewed the case and vacated the district court's judgment. The Fourth Circuit held that the district court erred by relying solely on the geographic separation of the parties' physical facilities without considering other relevant factors that might bear on the likelihood of confusion. The court emphasized that modern advertising and the national scope of both parties' marketing efforts necessitate a broader analysis. The Fourth Circuit remanded the case for further proceedings to consider the various factors relevant to determining the likelihood of confusion, including the parties' competitive marketing, the locations from which they solicit and draw customers, and the scope of their reputations. View "Westmont Living, Inc. v. Retirement Unlimited, Inc." on Justia Law

Bullshine Distillery LLC v. Sazerac Brands, LLC

2025-03-12T07:31:20-08:00

Bullshine Distillery LLC applied to register the mark BULLSHINE FIREBULL for alcoholic beverages. Sazerac Brands, LLC opposed the registration, alleging a likelihood of confusion with its FIREBALL marks for liqueurs and whiskey. Bullshine counterclaimed, seeking cancellation of Sazerac’s registrations, arguing that "fireball" was a generic term for a type of alcoholic drink. The Trademark Trial and Appeal Board (Board) found that "fireball" was not generic at the time of registration or at the time of trial. The Board also determined that there was no likelihood of confusion between the FIREBALL marks and Bullshine’s BULLSHINE FIREBULL mark. Specifically, the Board found that while Sazerac’s FIREBALL mark was commercially strong, it was conceptually weak, the marks were dissimilar, the goods were purchased without great care, and Bullshine did not act in bad faith. The United States Court of Appeals for the Federal Circuit reviewed the case. The court affirmed the Board’s decision, holding that the Board applied the correct legal standard in determining that "fireball" was not generic at the time of registration. The court found substantial evidence supporting the Board’s finding that "fireball" was not generic, including the lack of evidence that competitors used the term and the association of the term with specific products rather than a generic category. The court also affirmed the Board’s determination of no likelihood of confusion, finding that the Board’s analysis of the fame and conceptual strength of the FIREBALL mark, as well as the similarity of the marks, was supported by substantial evidence. The court concluded that the Board did not err in its findings and affirmed the decision in favor of Bullshine. View "Bullshine Distillery LLC v. Sazerac Brands, LLC" on Justia Law

Lau v. Bondi

2025-03-04T07:30:09-08:00

Lau, a native and citizen of China, was charged with third-degree trademark counterfeiting in New Jersey. While awaiting trial, he left the United States and upon his return, he was paroled for deferred inspection by immigration authorities. Lau was later convicted and sentenced to probation. The Department of Homeland Security (DHS) initiated removal proceedings against him, asserting he was inadmissible due to his conviction for a crime involving moral turpitude (CIMT). An Immigration Judge (IJ) found Lau inadmissible under 8 U.S.C. § 1182(a)(2)(A)(i)(I) and ineligible for a waiver of inadmissibility under 8 U.S.C. § 1182(h). The IJ concluded that Lau’s conviction constituted a CIMT, did not qualify as a petty offense, and that he was properly classified as an applicant for admission upon his return. The IJ also determined that Lau did not meet the continuous residency requirement for a 212(h) waiver. The Board of Immigration Appeals (BIA) affirmed the IJ’s decision, agreeing with the findings and dismissing Lau’s appeal. The United States Court of Appeals for the Second Circuit reviewed the case. The court held that DHS improperly classified Lau as an applicant for admission when he returned to the United States while his criminal charge was pending. The court found that a pending charge does not provide clear and convincing evidence of a CIMT necessary for DHS to consider an LPR an applicant for admission. Consequently, the court granted Lau’s petition for review, vacated the final order of removal, and remanded the case to the agency with instructions to terminate removal proceedings against Lau based on his inadmissibility under section 1182(a), without prejudice to any future deportation proceedings. View "Lau v. Bondi" on Justia Law

Dewberry Group, Inc. v. Dewberry Engineers Inc.

2025-02-26T08:35:04-08:00

Dewberry Engineers sued Dewberry Group for trademark infringement under the Lanham Act, alleging that Dewberry Group's use of the "Dewberry" name violated their trademark rights. Dewberry Group, a real-estate development company, provides services to separately incorporated affiliates, which own commercial properties. The affiliates generate rental income, while Dewberry Group operates at a loss, surviving through cash infusions from its owner, John Dewberry. The District Court found Dewberry Group liable for trademark infringement and awarded Dewberry Engineers nearly $43 million in profits. The court treated Dewberry Group and its affiliates as a single corporate entity, totaling the affiliates' real-estate profits to calculate the award. The Fourth Circuit Court of Appeals affirmed this decision, agreeing with the District Court's approach to treat the companies as a single entity due to their economic reality. The Supreme Court of the United States reviewed the case and held that the District Court erred in treating Dewberry Group and its affiliates as a single corporate entity for calculating profits. The Court ruled that under the Lanham Act, only the profits of the named defendant, Dewberry Group, could be awarded. The affiliates' profits could not be considered as the defendant's profits since they were not named as defendants in the lawsuit. The Supreme Court vacated the Fourth Circuit's decision and remanded the case for a new award proceeding consistent with its opinion. View "Dewberry Group, Inc. v. Dewberry Engineers Inc." on Justia Law

AQUARIAN FOUNDATION, INC. V. LOWNDES

2025-02-03T09:00:22-08:00

Aquarian Foundation, Inc., a non-profit religious organization, alleged that Bruce Lowndes infringed on its copyrights by uploading spiritual teachings of its late founder, Keith Milton Rhinehart, to various websites. Lowndes claimed he had a license from Rhinehart, granted in 1985, to use the materials. Rhinehart passed away in 1999, bequeathing his estate, including the copyrights, to Aquarian. The United States District Court for the Western District of Washington granted partial summary judgment, confirming that Rhinehart's copyrights were properly transferred to Aquarian via his will. After a bench trial, the court ruled against Aquarian on its claims of copyright infringement, trademark infringement, and false designation of origin. The court found that Rhinehart created the works as his own, not as works for hire, and that he had validly licensed them to Lowndes. The court also determined that Lowndes did not breach the licensing agreement and that Aquarian could not terminate the license under 17 U.S.C. § 203(a). The court denied attorneys’ fees to both parties. The United States Court of Appeals for the Ninth Circuit affirmed the district court’s findings that Rhinehart’s works were not created as works for hire, that he validly licensed the works to Lowndes, and that Lowndes did not breach the licensing agreement. The court also affirmed the decision not to award Lowndes attorneys’ fees under the Lanham Act. However, the Ninth Circuit reversed the district court’s determination regarding the termination of the license, holding that Aquarian’s termination letter in May 2021 was effective. The case was remanded for further proceedings to address any infringement that may have occurred after the license termination, as well as the denial of injunctive relief and attorneys’ fees under the Copyright Act. View "AQUARIAN FOUNDATION, INC. V. LOWNDES" on Justia Law

Moke America LLC v. Moke International Limited

2025-01-15T11:30:19-08:00

Moke America LLC and Moke International Limited, along with Moke USA, LLC, are competing for the U.S. trademark rights to the "MOKE" mark, used for their low-speed, open-air vehicles. The U.S. District Court for the Eastern District of Virginia found that "MOKE" is a generic term for these vehicles, meaning it cannot be a trademark owned by either party. This finding was based on the history of the Moke vehicles, which were originally produced by the British Motor Corporation (BMC) and later by other manufacturers, and the term "Moke" becoming synonymous with a style of vehicle. The district court's decision followed a bench trial where Moke America failed to prove its priority of use. The court then considered whether the MOKE mark was distinctive or generic. Both parties argued that the mark was inherently distinctive, but the court found it to be generic based on the evidence presented, including the parties' marketing efforts and the testimony of a Moke America witness. The United States Court of Appeals for the Fourth Circuit reviewed the case and concluded that the district court correctly placed the burden on the parties to prove that "MOKE" is not a generic term. However, the Fourth Circuit found that the evidence was insufficient to either affirm or outright reverse the district court's finding of genericness. The court noted that more evidence is needed to determine whether "MOKE" is a generic term or an inherently distinctive mark that was abandoned by its original owner, BMC. The Fourth Circuit vacated the district court's judgment and remanded the case for further proceedings to gather additional evidence on the distinctiveness or genericness of the "MOKE" mark. The parties will continue to bear the burden of proving that the mark is not generic. The court suggested that appointing a disinterested expert witness might be helpful in resolving the issue. View "Moke America LLC v. Moke International Limited" on Justia Law

TANGLE, INC. V. ARITZIA, INC.

2025-01-14T11:00:39-08:00

Tangle, Inc. holds copyright registrations for seven kinetic and manipulable sculptures made from 17 or 18 identical, connected, 90-degree curved tubular segments that can be twisted or turned 360 degrees. Aritzia, Inc. owns and operates retail stores and used similar sculptures in their store windows. Tangle alleged that Aritzia's sculptures infringed on their copyrighted works and also claimed trade dress infringement under the Lanham Act. The United States District Court for the Northern District of California dismissed Tangle's initial copyright infringement claim for failure to state a claim but allowed Tangle to amend its complaint. Tangle filed an amended complaint, which was again dismissed. Tangle then filed a Second Amended Complaint, adding a trade dress infringement claim. The district court dismissed both claims, giving Tangle leave to amend. Tangle chose not to amend further and instead appealed the dismissal. The United States Court of Appeals for the Ninth Circuit reviewed the case. The court reversed the district court’s dismissal of Tangle’s copyright claim, holding that Tangle adequately alleged valid copyrights in its kinetic and manipulable sculptures. The court found that the sculptures were sufficiently "fixed" in a tangible medium for copyright purposes, despite their ability to move into various poses. The court also held that Tangle plausibly alleged that Aritzia's sculptures were substantially similar to Tangle's protected works under the "extrinsic test." However, the Ninth Circuit affirmed the district court’s dismissal of Tangle’s trade dress infringement claim. The court agreed that Tangle failed to provide a complete recitation of the concrete elements of its alleged trade dress, which is necessary to give adequate notice of the asserted trade dress. The case was remanded for further proceedings consistent with the Ninth Circuit's opinion. View "TANGLE, INC. V. ARITZIA, INC." on Justia Law

CERAMTEC GMBH v. COORSTEK BIOCERAMICS LLC

2025-01-03T08:31:16-08:00

CeramTec GmbH manufactures artificial hip components made from zirconia-toughened alumina (ZTA) ceramic, which contains chromium oxide (chromia) and is marketed under the name "Biolox Delta." The addition of chromia gives the ceramic a pink color. CeramTec held U.S. Patent 5,830,816 (the '816 patent) for the chemical composition of Biolox Delta until it expired in January 2013. In January 2012, CeramTec applied for trademarks for the pink color of its ceramic hip components, which were registered on the Supplemental Register in April 2013. CoorsTek Bioceramics LLC, a competitor, manufactures similar ceramic hip implants and filed a lawsuit and a cancellation petition with the Trademark Trial and Appeal Board (the Board) in 2014, arguing that the pink color was functional and should not be trademarked. The Board found in favor of CoorsTek, concluding that the pink color was functional for ceramic hip components. The Board analyzed the functionality under the four factors from In re Morton-Norwich Products, Inc., and found that CeramTec's patents and public communications disclosed the functional benefits of chromia, including increased hardness. The Board also found that there was no probative evidence of functionally equivalent designs and conflicting evidence regarding the cost of manufacturing. The Board rejected CeramTec's unclean hands defense, which argued that CoorsTek should be precluded from challenging the trademarks due to its previous statements about chromia's lack of material benefits. The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the Board's decision. The court held that the Board's findings were supported by substantial evidence and that the Board correctly applied the burden of proof. The court also addressed CeramTec's arguments regarding the Board's analysis of the Morton-Norwich factors and the unclean hands defense, finding no reversible error. The court concluded that the pink color of CeramTec's ceramic hip components was functional and not eligible for trademark protection. View "CERAMTEC GMBH v. COORSTEK BIOCERAMICS LLC " on Justia Law

LEGALFORCE RAPC WORLDWIDE, PC V. LEGALFORCE, INC.

2024-12-27T09:00:27-08:00

LegalForce RAPC Worldwide, P.C. ("LegalForce USA"), a California S corporation operating legal services websites, sued LegalForce, Inc. ("LegalForce Japan"), a Japanese corporation providing legal software services, for trademark infringement. LegalForce USA alleged that LegalForce Japan's U.S. expansion plans, website ownership, and advertising and selling of equity infringed its trademark. The district court dismissed the website claims for lack of jurisdiction and the expansion plan claims as unripe. The claims concerning equity were dismissed for failure to state a claim. The United States District Court for the Northern District of California dismissed all claims except those related to the advertising and selling of equity. The court held that it had jurisdiction over these claims but dismissed them for failure to state a claim, reasoning that advertising and selling equity is not connected to the sale of goods or services and thus cannot constitute trademark infringement. The court also found that LegalForce USA failed to justify an extraterritorial application of the Lanham Act. The United States Court of Appeals for the Ninth Circuit affirmed the district court's dismissal. The court held that using a trademark in connection with the sale of equity does not constitute using the mark in connection with "goods or services" under the Lanham Act. The court also affirmed that LegalForce Japan's services in Japan could not satisfy the "in connection with" goods or services requirement under the Lanham Act, as the relevant conduct occurred outside U.S. territory. The court concluded that the Lanham Act does not apply extraterritorially in this context. View "LEGALFORCE RAPC WORLDWIDE, PC V. LEGALFORCE, INC." on Justia Law

Curry v. Revolution Laboratories, LLC

2024-12-19T09:30:16-08:00

Charles Curry, Jr., a former competitive powerlifter and bodybuilder, started a nutritional supplements business called Get Diesel Nutrition in 2002. He began selling a testosterone-boosting supplement called "Diesel Test" in 2005. Revolution Laboratories, LLC, founded by Joshua and Barry Nussbaum, also sold a supplement called "Diesel Test" starting in 2016. Curry, acting without a lawyer, filed a lawsuit against Revolution and the Nussbaums in 2017, asserting trademark claims under the federal Lanham Act and Illinois common law. Curry later obtained counsel, and the case proceeded to a jury trial in May 2023, resulting in a verdict for Curry. The jury awarded Curry $2,500 in actual damages for loss of goodwill and reputation and $500,000 as disgorgement of Revolution’s profits from the infringement. Additionally, the jury awarded Curry $300,000 in punitive damages against each of Joshua, Barry, and Revolution, totaling $900,000. The district court later ruled that disgorgement of profits under the Lanham Act is an equitable remedy for the judge to decide and recalculated the appropriate profits award to be $547,095.44. The United States Court of Appeals for the Seventh Circuit reviewed the case. Defendants challenged the district court's decision to allow Curry's punitive damages request to go to the jury and argued that the punitive damage awards were excessive in violation of the Fourteenth Amendment’s due process clause. The Seventh Circuit affirmed the district court's decision, holding that the district court did not abuse its discretion in allowing Curry to seek punitive damages and that the punitive damage awards were not unconstitutionally excessive. The court concluded that the ratio of punitive damages to the combined compensatory and disgorgement awards was constitutionally permissible. View "Curry v. Revolution Laboratories, LLC" on Justia Law

ORACLE INTERNATIONAL CORPORATION V. RIMINI STREET, INC.

2024-12-16T09:00:25-08:00

Oracle International Corporation sued Rimini Street, Inc. for copyright infringement and violations of the Lanham Act. Oracle alleged that Rimini, a third-party provider of software support services, infringed on its copyrights by using Oracle's software in unauthorized ways. Rimini had previously been found to infringe Oracle's copyrights and had changed its business model, seeking a declaratory judgment that its new processes did not infringe Oracle's copyrights. Oracle counterclaimed, leading to a bench trial. The United States District Court for the District of Nevada found that Rimini's new processes still infringed Oracle's copyrights and issued a permanent injunction against Rimini. The court ordered Rimini to delete various software files and issue a press release correcting alleged misstatements. Rimini appealed the decision, challenging several aspects of the district court's rulings. The United States Court of Appeals for the Ninth Circuit reviewed the case and vacated the district court's holding that Rimini created infringing derivative works based solely on interoperability with Oracle's programs. The court explained that a derivative work must incorporate Oracle's copyrighted work, either literally or nonliterally. The court also vacated the district court's ruling striking Rimini's affirmative defense under 17 U.S.C. § 117(a), which allows the owner of a copy of a computer program to make another copy for certain purposes. Additionally, the Ninth Circuit vacated the district court's ruling that Rimini's creation of "gap customer" environments and use of automated tools to deliver PeopleSoft updates constituted copyright infringement. The court also reversed the district court's ruling that Rimini's security-related statements, except for one about "holistic security," constituted false advertising under the Lanham Act. The court vacated the portions of the injunction appealed by Rimini and remanded the case for further proceedings consistent with its opinion. View "ORACLE INTERNATIONAL CORPORATION V. RIMINI STREET, INC." on Justia Law

US Ghost Adventures, LLC v. Miss Lizzie's Coffee LLC

2024-11-15T13:30:04-08:00

US Ghost Adventures, LLC (Ghost Adventures) operates a bed and breakfast at the Lizzie Borden House in Fall River, Massachusetts, offering ghost tours and related activities. Ghost Adventures holds federal trademarks for the name "Lizzie Borden" and a hatchet logo. Miss Lizzie's Coffee LLC (Miss Lizzie's) opened a coffee shop next to the Lizzie Borden House, using the Lizzie Borden story in its marketing, including a hatchet logo and references to being "The Most Haunted Coffee Shop in the World." Some visitors mistakenly believed the two businesses were affiliated. Ghost Adventures sued Miss Lizzie's in the United States District Court for the District of Massachusetts for trademark infringement and unfair competition, seeking a preliminary injunction to stop Miss Lizzie's from using the "Lizzie Borden" name and hatchet logo. The district court denied the preliminary injunction, finding that Ghost Adventures failed to show a likelihood of success on the merits. The court determined that the key element in any infringement action is the likelihood of confusion, which Ghost Adventures did not demonstrate. The court found that Miss Lizzie's hatchet logo and use of the name "Lizzie" were not similar enough to Ghost Adventures' trademarks to cause confusion. The United States Court of Appeals for the First Circuit reviewed the case and affirmed the district court's decision. The appellate court agreed that the district court did not clearly err in finding that the hatchet logos were dissimilar and that Miss Lizzie's reference to "Lizzie" was to the historical figure, not the trademark. The court also found that any consumer confusion was due to the proximity of the businesses and their common reliance on the Lizzie Borden story, not the similarity of their marks. The court concluded that Ghost Adventures did not demonstrate a likelihood of success on the merits, and the district court's denial of the preliminary injunction was affirmed. View "US Ghost Adventures, LLC v. Miss Lizzie's Coffee LLC" on Justia Law

LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

2024-10-22T08:30:26-08:00

The case involves a trademark infringement dispute between two Arizona-based personal injury law firms. The plaintiff, Lerner & Rowe, PC, owns three registered trademarks, including the name "Lerner & Rowe." The defendant, Brown, Engstrand & Shely, LLC, doing business as The Accident Law Group (ALG), used a marketing strategy called "conquesting" by purchasing the term "Lerner & Rowe" as a Google Ads keyword. This caused ALG's advertisements to appear when users searched for "Lerner & Rowe" on Google. The United States District Court for the District of Arizona granted summary judgment in favor of ALG on Lerner & Rowe's claims of trademark infringement and unjust enrichment but denied summary judgment on the unfair competition claims. ALG moved for reconsideration, and the district court subsequently granted summary judgment on all claims. Lerner & Rowe appealed the ruling. The United States Court of Appeals for the Ninth Circuit reviewed the case and affirmed the district court's decision. The court held that Lerner & Rowe failed to establish that ALG's use of the "Lerner & Rowe" mark was likely to cause consumer confusion. The court found that while the strength of the mark favored Lerner & Rowe, the evidence of actual confusion was de minimis, the reasonably prudent consumer's degree of care and the labeling and appearance of ALG's advertisements weighed in favor of ALG. The court concluded that Lerner & Rowe did not establish a genuine dispute of material fact regarding the likelihood of confusion, which is essential for a trademark infringement claim under the Lanham Act. The judgment was affirmed. View "LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC" on Justia Law

1-800 Contacts, Inc. v. JAND, Inc.

2024-10-08T07:00:06-08:00

The case involves a dispute between two companies, 1-800 Contacts, Inc. (Plaintiff-Appellant) and JAND, Inc., doing business as Warby Parker (Defendant-Appellee). 1-800 Contacts alleged that Warby Parker used its trademarks in keyword search advertisements, violating the federal Lanham Act and New York State common law. Specifically, 1-800 Contacts claimed that Warby Parker purchased keywords consisting of 1-800 Contacts' trademarks to divert customers searching for 1-800 Contacts to Warby Parker's website. However, 1-800 Contacts did not allege that Warby Parker used its trademarks in any other way beyond purchasing them as keywords. The United States District Court for the Southern District of New York granted Warby Parker's motion for judgment on the pleadings, dismissing the case. The district court applied the Polaroid test to determine the likelihood of consumer confusion and found that although 1-800 Contacts' trademarks were strong and there were indications of bad faith by Warby Parker, these factors were insufficient to establish a likelihood of consumer confusion. The court emphasized that Warby Parker's advertisements and landing pages clearly displayed Warby Parker's own mark, which was substantially different from 1-800 Contacts' marks. The United States Court of Appeals for the Second Circuit reviewed the case and affirmed the district court's judgment. The appellate court held that the mere act of purchasing a competitor's trademarks as keywords does not constitute trademark infringement. It found that 1-800 Contacts failed to plausibly allege any likelihood of consumer confusion under the Polaroid test. The court noted that Warby Parker's advertisements and landing pages did not use 1-800 Contacts' trademarks and were clearly marked with Warby Parker's own branding, making it unlikely that consumers would be confused about the source or affiliation of the advertisements. View "1-800 Contacts, Inc. v. JAND, Inc." on Justia Law

To-Ricos, Ltd. v. Productos Avicolas del Sur, Inc.

2024-09-19T13:00:03-08:00

This case involves a dispute over the "Pollo Picú" trademark used in the sale of fresh chicken. Productos Avícolas del Sur, Inc. (PAS) sold chicken under this trademark until 2011, when financial difficulties forced the company to stop. In 2016, To-Ricos, Ltd. (To-Ricos) applied to register the Picú mark, believing PAS had abandoned it. PAS opposed the application, leading To-Ricos to seek a declaratory judgment in federal district court to establish its ownership of the mark. The district court granted summary judgment for To-Ricos, concluding that PAS had abandoned the mark. The United States District Court for the District of Puerto Rico found that PAS had not used the Picú mark for at least three consecutive years, establishing a prima facie case of abandonment. PAS argued that its financial difficulties and ongoing litigation with its bank excused its nonuse of the mark and that it intended to resume use. However, the district court determined that PAS did not provide sufficient evidence of intent to resume use within the statutory period and thus granted summary judgment in favor of To-Ricos. The United States Court of Appeals for the First Circuit reviewed the case and affirmed the district court's decision. The appellate court held that PAS failed to rebut the presumption of abandonment. PAS's attempts to sell the mark in 2012, its 2014 settlement agreement with the bank, and its 2017 licensing agreement with IMEX did not demonstrate an intent to resume use of the mark within the relevant statutory period. The court emphasized that mere explanations for nonuse or vague intentions to resume use are insufficient to rebut the presumption of abandonment. Consequently, the court affirmed the district court's grant of summary judgment, establishing To-Ricos as the rightful owner of the Picú mark. View "To-Ricos, Ltd. v. Productos Avicolas del Sur, Inc." on Justia Law

Keck v. Mix Creative Learning Center

2024-09-18T15:30:14-08:00

In 2020, Mix Creative Learning Center, an art studio offering children's art lessons, began selling online art kits during the pandemic. These kits included reproductions of artworks from Michel Keck's Dog Art series. Keck sued Mix Creative and its proprietor for copyright and trademark infringement, seeking enhanced statutory damages for willful infringement. The United States District Court for the Southern District of Texas found that the fair use defense applied to the copyright claim and granted summary judgment to Mix Creative. The court also granted summary judgment on the trademark claim, even though Mix Creative had not sought it. Following this, the district court awarded fees and costs to Mix Creative under 17 U.S.C. § 505 but declined to hold Keck’s trial counsel jointly and severally liable for the fee award under 28 U.S.C. § 1927. The United States Court of Appeals for the Fifth Circuit reviewed the case and affirmed the district court's judgment. The appellate court held that the fair use defense applied because Mix Creative’s use was transformative and unlikely to harm the market for Keck’s works. The court also found that any error in the district court’s sua sponte grant of summary judgment on the trademark claim was harmless, given the parties' concession that the arguments for the copyright claim applied to the trademark claim. Lastly, the appellate court ruled that the district court did not abuse its discretion in awarding fees to Mix Creative or in refusing to hold Keck’s attorneys jointly and severally liable for the fee award. View "Keck v. Mix Creative Learning Center" on Justia Law

American Girl, LLC v. Zembrka

2024-09-17T06:00:09-08:00

American Girl, LLC, a manufacturer of dolls and related products, sued Zembrka, a Chinese entity operating through websites, for selling counterfeit American Girl products. American Girl alleged that Zembrka's websites sold and shipped counterfeit products to New York, using American Girl's trademarks. The case was filed in the United States District Court for the Southern District of New York. The District Court granted Zembrka's motion to dismiss for lack of personal jurisdiction, emphasizing that American Girl failed to show that Zembrka shipped the counterfeit products to New York. The court concluded that without evidence of shipment, the "transacting business" requirement under New York's long-arm statute, C.P.L.R. § 302(a)(1), was not met. American Girl's motion for reconsideration, which included new evidence of New York customers purchasing counterfeit products, was also denied. The United States Court of Appeals for the Second Circuit reviewed the case. The court found that American Girl had adequately demonstrated that Zembrka transacted business in New York. Evidence showed that Zembrka accepted orders from New York, sent order confirmations, and received payments, which constituted purposeful activity within the state. The court held that actual shipment of goods was not necessary to establish personal jurisdiction under § 302(a)(1). The court also determined that exercising jurisdiction over Zembrka was consistent with due process, given New York's strong interest in protecting its consumers and businesses from counterfeit goods. The Second Circuit reversed the District Court's dismissal and remanded the case for further proceedings. View "American Girl, LLC v. Zembrka" on Justia Law

American Board of Internal Medicine v. Salas-Rushford

2024-08-29T12:00:03-08:00

A physician in Puerto Rico, Dr. Jaime Salas Rushford, had his board certification suspended by the American Board of Internal Medicine (ABIM) after ABIM concluded that he had improperly shared board exam questions with his test prep instructor. ABIM sued Salas Rushford for copyright infringement in New Jersey. Salas Rushford counterclaimed against ABIM and several ABIM-affiliated individuals, alleging that the process leading to his suspension was a "sham." The counterclaims were transferred to the District of Puerto Rico, where the district court granted ABIM's motion for judgment on the pleadings and denied Salas Rushford leave to amend his pleading. The court found that Salas Rushford failed to state a claim for breach of contract, breach of the implied covenant of good faith and fair dealing, and tort claims against the ABIM Individuals. The court also dismissed his Lanham Act claim for commercial disparagement. The United States Court of Appeals for the First Circuit reviewed the case. The court affirmed the district court's dismissal of Salas Rushford's claims. It held that ABIM had broad discretion under its policies to revoke certification if a diplomate failed to maintain satisfactory ethical and professional behavior. The court found that Salas Rushford did not plausibly allege that ABIM acted with bad motive or ill intention, which is necessary to state a claim for breach of the implied covenant of good faith and fair dealing under New Jersey law. The court also affirmed the dismissal of the Lanham Act claim, noting that Salas Rushford failed to allege actual consumer deception or intentional deception, which is required to state a claim for false advertising. Finally, the court upheld the district court's denial of leave to amend the complaint, citing undue delay and lack of a concrete argument for why justice required an amendment. View "American Board of Internal Medicine v. Salas-Rushford" on Justia Law

Libertarian National Committee, Inc. v. Saliba

2024-08-28T12:00:19-08:00

In 2022, two top officers of the Libertarian Party of Michigan resigned, leading to a power struggle within the party. Andrew Chadderdon became the acting Chair, but his leadership was contested by the defendants, who then voted to remove him and elected themselves to committee positions. The Libertarian Party Judicial Committee later voided these elections, reinstating Chadderdon. The defendants, however, continued to use the Libertarian National Committee’s (LNC) trademark, claiming to be the rightful leaders of the Michigan affiliate. The United States District Court for the Eastern District of Michigan granted the LNC’s request for a preliminary injunction, barring the defendants from using the LNC’s trademark. The defendants appealed, arguing that the district court’s application of the Lanham Act to their noncommercial speech violated the First Amendment and that their use of the trademark was authorized and not likely to cause confusion. The United States Court of Appeals for the Sixth Circuit reviewed the case. The court found that the Lanham Act could apply to the defendants’ use of the LNC’s trademark because they used it as a source identifier for their political services, which falls within the scope of the Act. The court also determined that the defendants’ use of the trademark created a likelihood of confusion among potential voters, party members, and donors. However, the court found that the defendants’ use of the trademark for online solicitation, when accompanied by clear disclaimers, did not create a likelihood of confusion. The Sixth Circuit affirmed the preliminary injunction in part, except for the aspect concerning the defendants’ online solicitation with disclaimers, which it vacated. View "Libertarian National Committee, Inc. v. Saliba" on Justia Law

Simply Wireless, Inc v. T-Mobile US, Inc

2024-08-13T10:30:24-08:00

Simply Wireless, Inc., a Virginia telecommunications company, sued T-Mobile US, Inc. and T-Mobile USA, Inc. for trademark infringement, alleging that T-Mobile had infringed on its common law trademark "SIMPLY PREPAID." Simply Wireless had used the trademark from 2002 to 2008 and resumed its use in 2012. T-Mobile began using the same trademark in 2014 and applied to register it with the United States Patent and Trademark Office. Simply Wireless filed a competing application and subsequently launched a revamped website under the trademark. The United States District Court for the Eastern District of Virginia granted summary judgment to T-Mobile, ruling that Simply Wireless had abandoned the trademark due to nonuse from 2009 to 2011. The court found that Simply Wireless had not provided sufficient evidence to rebut the presumption of abandonment, which is triggered by three consecutive years of nonuse under 15 U.S.C. § 1127. Simply Wireless appealed, arguing that genuine disputes of material fact existed regarding its intent to resume use of the trademark during the period of nonuse. The United States Court of Appeals for the Fourth Circuit reviewed the case de novo and vacated the district court's summary judgment order. The appellate court found that Simply Wireless had presented sufficient evidence, including a detailed declaration from its CEO and corroborating documents, to create a genuine dispute of material fact regarding its intent to resume use of the trademark during the period of nonuse. The court emphasized that the intent-to-resume-use inquiry is an intensely factual question and rarely amenable to summary judgment. The Fourth Circuit also rejected T-Mobile's alternative argument that the statutory abandonment test does not apply to common law trademarks, affirming that the test is applicable. The Fourth Circuit vacated the district court's summary judgment order and remanded the case for further proceedings. View "Simply Wireless, Inc v. T-Mobile US, Inc" on Justia Law

Molzan v. Bellagreen Holdings

2024-08-12T15:30:16-08:00

Bruce Molzan, a well-known chef, filed a lawsuit against Bellagreen Holdings, LLC, and other associated entities and individuals, alleging trademark infringement and other claims under the Lanham Act and Texas law. Molzan claimed that he had been using the "RUGGLES" trademarks for over forty years and that the defendants misused these trademarks after a forced sale of his restaurants. He alleged that the defendants continued to use the "RUGGLES GREEN" trademark and domain name without authorization, causing consumer confusion. The United States District Court for the Southern District of Texas dismissed all of Molzan's claims under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim. The court found that Molzan's allegations were conclusory and did not establish a connection between the defendants and the third-party websites causing the confusion. The court also determined that the Settlement Agreement between the parties addressed the alleged infringements and provided a remedy for such transgressions. The United States Court of Appeals for the Fifth Circuit reviewed the case and found that Molzan's complaint contained well-pleaded factual allegations that made his claims facially plausible. The court noted that the allegations established a likelihood of confusion due to the defendants' continued use of the "RUGGLES" trademarks. The court also found that the district court erred in assuming the veracity of the defendants' assertions over Molzan's well-pleaded allegations. The Fifth Circuit reversed the district court's dismissal of Molzan's federal and state trademark infringement, false advertising, unfair competition, and state trademark dilution claims. The court also reversed the dismissal of Molzan's breach of contract and unjust enrichment claims and remanded the case for further proceedings. Additionally, the court vacated the district court's dismissal of the Web Defendants and the denial of Molzan's motion for leave to amend his complaint. View "Molzan v. Bellagreen Holdings" on Justia Law

Marco Destin, Inc. v. Levy

2024-08-08T06:30:09-08:00

Plaintiffs Marco Destin, Inc., 1000 Highway 98 East Corp., E&T, Inc., and Panama Surf & Sport, Inc. (collectively, “Marco Destin”) filed a lawsuit against agents of L&L Wings, Inc. (“L&L”), alleging that a 2011 stipulated judgment in a trademark action was obtained through fraud. Marco Destin claimed that L&L had fraudulently procured a trademark registration from the USPTO, which was used to secure the judgment. They sought to vacate the 2011 judgment under Federal Rule of Civil Procedure 60(d)(3) and requested sanctions and damages. The United States District Court for the Southern District of New York dismissed the action for failure to state a claim. The court found that Marco Destin had a reasonable opportunity to uncover the alleged fraud during the initial litigation. Specifically, the court noted that the License Agreement between the parties indicated that other entities might have paramount rights to the "Wings" trademark, suggesting that Marco Destin could have discovered the fraud with due diligence. The United States Court of Appeals for the Second Circuit reviewed the district court’s dismissal for abuse of discretion. The appellate court confirmed that the district court acted within its discretion in declining to vacate the 2011 stipulated judgment. The court emphasized that Marco Destin had a reasonable opportunity to uncover the alleged fraud during the initial litigation and that equitable relief under Rule 60(d)(3) requires a showing of due diligence. The appellate court found no abuse of discretion in the district court’s conclusion that Marco Destin could have discovered the fraud through proper diligence. The Second Circuit affirmed the judgment of the district court, upholding the dismissal of Marco Destin’s claims. View "Marco Destin, Inc. v. Levy" on Justia Law

BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. COLOGNE & COGNAC ENTERTAINMENT

2024-08-06T06:01:27-08:00

The case involves a dispute over a trademark application for "COLOGNE & COGNAC ENTERTAINMENT" by a hip-hop record label. The appellants, Bureau National Interprofessionnel du Cognac and Institut National des Appellations d’Origine, are responsible for controlling and protecting the certification mark "COGNAC" for brandy from the Cognac region of France. They opposed the trademark application, arguing that it would likely cause confusion and dilute their certification mark. The United States Patent and Trademark Office's Trademark Trial and Appeal Board dismissed the opposition. The Board found that the "COLOGNE & COGNAC ENTERTAINMENT" mark, when used for hip-hop music and production services, was not likely to cause confusion or dilute the "COGNAC" certification mark. The Board concluded that the marks were dissimilar in connotation and commercial impression, and that the relevant goods, services, trade channels, and purchasers did not overlap. The Board also found that the appellants had not proven the fame of the "COGNAC" mark for purposes of dilution. The United States Court of Appeals for the Federal Circuit vacated and remanded the Board's decision. The court found that the Board applied an incorrect legal standard for determining the fame of the "COGNAC" mark and improperly discounted relevant evidence. The court also found that the Board erred in its analysis of the similarity of the marks and the relatedness of the goods, services, and trade channels. Additionally, the court concluded that the appellants had sufficiently pleaded their dilution claim. The case was remanded for reconsideration of the likelihood of confusion and dilution issues. View "BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. COLOGNE & COGNAC ENTERTAINMENT" on Justia Law

D'Pergo Custom Guitars, Inc. v. Sweetwater Sound, Inc.

2024-07-30T14:00:03-08:00

D'Pergo Custom Guitars, Inc. sued Sweetwater Sound, Inc. for using a photo of D'Pergo's guitar necks on Sweetwater's website. D'Pergo claimed copyright infringement under the Copyright Act, trademark infringement under the Lanham Act, and a violation of the New Hampshire Consumer Protection Act (CPA). The district court granted summary judgment to Sweetwater on the trademark claim and to D'Pergo on the copyright claim. A bench trial found in favor of Sweetwater on the CPA claim, and a jury awarded D'Pergo approximately $75,000 in compensatory damages for the copyright claim but did not award any of Sweetwater's profits. D'Pergo appealed the district court's summary judgment on the trademark claim and the bench trial ruling on the CPA claim. D'Pergo also argued that erroneous jury instructions warranted a reversal of the jury's finding that it was not entitled to recover any of Sweetwater's profits. Sweetwater cross-appealed, challenging the copyright damages based on what it claimed was inadmissible expert testimony. The United States Court of Appeals for the First Circuit affirmed the district court's ruling in favor of Sweetwater on the CPA claim, finding that Sweetwater did not act with the intent required for a CPA violation. However, the court reversed the district court's grant of summary judgment to Sweetwater on the trademark claim, concluding that D'Pergo's evidence created a genuine issue of fact regarding the trademark's secondary meaning and likelihood of confusion. The court also remanded for a new jury trial on the issue of infringing profits for the copyright claim, finding that the district court's jury instruction on the burden of proof for infringing profits overstated D'Pergo's burden. The court affirmed the district court's refusal to give D'Pergo's proposed "commingling" instruction and upheld the actual damages awarded to D'Pergo, rejecting Sweetwater's challenge to the admissibility of the expert testimony. View "D'Pergo Custom Guitars, Inc. v. Sweetwater Sound, Inc." on Justia Law

Lontex Corp v. Nike Inc

2024-07-10T09:00:12-08:00

Lontex Corporation, a small Pennsylvania business, holds a registered trademark for “Cool Compression” used in its athletic compression apparel. Lontex sued Nike, Inc. for trademark infringement after discovering Nike's use of the phrase “Cool Compression” in its product names and marketing materials. Nike had rebranded a line of its athletic clothing as “Nike Pro” and used the phrase “Cool Compression” in product names on its website and catalogs. Lontex sent a cease-and-desist letter to Nike in 2016, but Nike continued using the phrase for some time. The United States District Court for the Eastern District of Pennsylvania held a trial where the jury found Nike liable for willful trademark infringement and contributory infringement, awarding Lontex $142,000 in compensatory damages and $365,000 in punitive damages. The District Court also trebled the compensatory damages to $426,000 and awarded Lontex nearly $5 million in attorney’s fees, deeming the case “exceptional” under the Lanham Act. Nike appealed the findings and the damages awarded, while Lontex cross-appealed the dismissal of its counterfeiting claim and the denial of profit disgorgement. The United States Court of Appeals for the Third Circuit reviewed the case and affirmed the District Court’s findings on trademark infringement, willfulness, and the trebling of damages. The Court held that a reasonable jury could find Nike’s continued use of “Cool Compression” after receiving the cease-and-desist letter as willful infringement. However, the Court vacated the award of attorney’s fees, finding that the District Court relied on broad policy considerations rather than specific facts of the case. The Court remanded the issue of attorney’s fees for further proceedings. The Court also upheld the dismissal of Lontex’s counterfeiting claim and the denial of profit disgorgement. View "Lontex Corp v. Nike Inc" on Justia Law

Gibson, Inc. v. Armadillo Distribution Enterprises, Inc.

2024-07-08T15:30:15-08:00

This case involves a dispute between Gibson, Inc., a Delaware corporation, and Armadillo Distribution Enterprises, Inc., a Florida corporation, along with Concordia Investment Partners, L.L.C. Gibson, a well-known guitar manufacturer, brought trademark-infringement and counterfeiting claims against Armadillo and Concordia, alleging that they infringed on Gibson's trademarked guitar body shapes, headstock shape, and word marks. After a ten-day trial, the jury found in favor of Gibson on several counts of infringement and counterfeiting but also found that the doctrine of laches applied to limit Gibson’s recovery of damages. The district court had excluded decades of third-party-use evidence that Armadillo and Concordia submitted in support of their genericness defense and counterclaim. Armadillo and Concordia appealed this exclusion order, arguing that the evidence was relevant to their defense that Gibson's trademarks were generic and thus not entitled to protection. The United States Court of Appeals for the Fifth Circuit reversed the district court's decision. The appellate court held that the district court abused its discretion by excluding all pre-1992 third-party-use evidence without examining its possible relevance. The court noted that third-party-use evidence is often relevant to show the genericness of a mark, and a mark that is generic is not entitled to trademark protection. The court concluded that the district court's error affected Armadillo’s substantial rights to put on its primary defense to the infringement and counterfeiting claims against it. Therefore, the court remanded the case for a new trial. View "Gibson, Inc. v. Armadillo Distribution Enterprises, Inc." on Justia Law

BILLFLOAT INC. V. COLLINS CASH INC.

2024-07-01T08:00:51-08:00

This case involves a trademark infringement dispute between BillFloat Inc., a Delaware corporation using the "SmartBiz" trademark, and Collins Cash Inc., a New York corporation using the "Smart Business Funding" mark. BillFloat alleged that Collins Cash, its former business partner, infringed on its trademark. The case was initially heard in the United States District Court for the Northern District of California. The district court admitted Collins Cash's likelihood-of-confusion survey as expert evidence under Federal Rule of Evidence 702. After a jury trial, the court ruled in favor of Collins Cash, finding no likelihood of confusion between the marks. The district court also partially denied Collins Cash's motion for attorneys' fees. The case was then appealed to the United States Court of Appeals for the Ninth Circuit. The appellate court affirmed the district court's judgment. It held that the district court did not abuse its discretion in admitting Collins Cash's likelihood-of-confusion survey as expert evidence. The court also held that the district court did not abuse its discretion in declining to instruct the jury that it should not draw any inferences from BillFloat's lack of a similar survey. On cross-appeal, the appellate court held that the district court did not abuse its discretion in denying Collins Cash's motion for attorneys' fees for the trademark infringement claim, either under the parties' partnership agreement or under the Lanham Act. The court concluded that the trademark claim did not relate to the partnership agreement, and the case was not "exceptional" under the Lanham Act. View "BILLFLOAT INC. V. COLLINS CASH INC." on Justia Law

Appliance v. Axis Supply

2024-06-21T09:30:17-08:00

The case involves a trademark dispute between two appliance companies, Appliance Liquidation Outlet, L.L.C. (ALO) and Axis Supply Corporation (Axis). ALO had been operating under its name for over two decades when Axis opened a store in 2021, using a large banner with the words “Appliance Liquidation.” ALO claimed that this led to confusion among customers who believed ALO operated both stores. When Axis refused to change its name, ALO sued for trademark infringement. The district court found that ALO had valid trademarks in the words “Appliance Liquidation Outlet” and “Appliance Liquidation,” and that Axis’s banner infringed those marks. The court ruled in favor of ALO, prohibiting Axis from using ALO’s marks or causing confusion with ALO’s brand, and awarded ALO attorney’s fees. Axis appealed, arguing that the marks were not valid, its banner did not infringe those marks, and the district court erred in awarding ALO attorney’s fees. The United States Court of Appeals for the Fifth Circuit agreed in part, finding that the district court erred in ruling that “Appliance Liquidation” is a valid trademark, but did not err in finding that “Appliance Liquidation Outlet” is a valid mark that Axis’s banner infringed. The court reversed the judgment as to the “Appliance Liquidation” mark, affirmed as to the “Appliance Liquidation Outlet” mark, and vacated the fee award. View "Appliance v. Axis Supply" on Justia Law

Bacardi and Company Limited v. United States Patent & Trademark Office

2024-06-13T10:30:47-08:00

The case involves Bacardi & Company Limited and Bacardi USA, Inc. (collectively, Bacardi) and the United States Patent and Trademark Office (PTO). Bacardi claimed that the PTO violated Section 9 of the Lanham Act and its own regulations by renewing a trademark registration ten years after it expired. The trademark in question is the "HAVANA CLUB," originally registered by a Cuban corporation, José Arechabala, S.A. In 1960, the Cuban government seized the corporation's assets, and by 1974, the U.S. trademark registrations for HAVANA CLUB rum had expired. Later, a company owned by the Cuban government registered the HAVANA CLUB trademark in the U.S. for itself. Bacardi, which had bought the interest in the mark from Arechabala, filed its own application to register the HAVANA CLUB mark and petitioned the PTO to cancel the Cuban government-owned company's registration. The PTO denied Bacardi's application due to the Cuban government-owned company's preexisting registration, and the Trademark Trial and Appeal Board (TTAB) denied Bacardi's cancellation petition. Bacardi then filed a civil action challenging the TTAB's denial of cancellation. Meanwhile, the Cuban government-owned company's registration was set to expire in 2006, unless it renewed its trademark. However, due to a trade embargo, the company was not permitted to pay the required renewal fee without first obtaining an exception from the Department of the Treasury’s Office of Foreign Assets Control (OFAC). OFAC denied the company's request for an exception, and the PTO notified the company that its registration would expire due to the failure to submit the renewal fee on time. The United States Court of Appeals for the Fourth Circuit reversed the district court's judgment that dismissed Bacardi's lawsuit for lack of subject matter jurisdiction. The court concluded that the Lanham Act does not foreclose an Administrative Procedure Act (APA) action for judicial review of the PTO’s compliance with statutes and regulations governing trademark registration renewal. The court found that the Lanham Act does not expressly preclude judicial review of PTO registration renewal decisions or fairly implies congressional intent to do so. Therefore, the APA’s mechanism for judicial review remains available. The case was remanded for further proceedings. View "Bacardi and Company Limited v. United States Patent & Trademark Office" on Justia Law

Vidal v. Elster

2024-06-13T07:35:08-08:00

Steve Elster sought to register the trademark "Trump too small" for use on shirts and hats, drawing from a 2016 Presidential primary debate exchange. The Patent and Trademark Office (PTO) refused registration based on the "names clause" of the Lanham Act, which prohibits the registration of a mark that identifies a particular living individual without their written consent. Elster argued that this clause violated his First Amendment right to free speech. The Trademark Trial and Appeal Board affirmed the PTO's decision, but the Federal Circuit reversed. The Supreme Court of the United States reversed the Federal Circuit's decision, holding that the Lanham Act's names clause does not violate the First Amendment. The Court found that while the names clause is content-based, it is not viewpoint-based, as it does not discriminate against any particular viewpoint. The Court also noted that the names clause is grounded in a historical tradition of restricting the trademarking of names, which has coexisted with the First Amendment. The Court concluded that this history and tradition are sufficient to demonstrate that the names clause does not violate the First Amendment. The Court emphasized that its decision is narrow and does not set forth a comprehensive framework for judging whether all content-based but viewpoint-neutral trademark restrictions are constitutional. View "Vidal v. Elster" on Justia Law

LUCA MCDERMOTT CATENA GIFT TRUST v. FRUCTUOSO-HOBBS SL

2024-05-23T07:01:29-08:00

The case involves the Luca McDermott Catena Gift Trust (Appellant) and two related family trusts, all of which are minority owners of California-based Paul Hobbs Winery, L.P. (Hobbs Winery). The trusts collectively own 21.6% of the partnership. Hobbs Winery owns the registered trademark PAUL HOBBS for wines. The Appellant and the two related family trusts filed a consolidated petition to cancel the registered marks ALVAREDOS-HOBBS and HILLICK AND HOBBS, owned by Fructuoso-Hobbs SL and Hillick & Hobbs Estate, LLC (Appellees), respectively. The petition alleged that the use of these marks by the Appellees was likely to cause confusion in the marketplace with Hobbs Winery's use of PAUL HOBBS for the same goods. The Appellees moved to dismiss the petition, arguing that the family trusts were not entitled by statute to cancel the challenged marks because they were not the owners of the allegedly infringed PAUL HOBBS mark. The U.S. Patent and Trademark Office Trademark Trial and Appeal Board (the Board) granted the motions to dismiss, concluding that the family trusts lacked a statutory entitlement to bring the cancellation action. The Board also concluded that the family trusts had failed to adequately plead likelihood of confusion and fraud. The United States Court of Appeals for the Federal Circuit affirmed the Board's decision. The court found that the Appellant lacked entitlement to a statutory cause of action under 15 U.S.C. § 1064. The court held that the Appellant's alleged injury, the diminishment in value of its ownership interest in Hobbs Winery due to Appellees' use of their marks, was merely derivative of any injury suffered by Hobbs Winery itself and was too remote to provide the Appellant with a cause of action under § 1064. View "LUCA MCDERMOTT CATENA GIFT TRUST v. FRUCTUOSO-HOBBS SL " on Justia Law

Dexon Computer, Inc. v. Travelers Prop. Cas. Co. Am.

2024-05-20T07:30:21-08:00

Dexon Computer, Inc., a reseller of computer networking products, was sued by Cisco Systems, Inc. and Cisco Technologies, Inc. for federal trademark infringement and counterfeiting. The complaint alleged trademark infringements between 2006 and 2010, and thirty-five acts of infringement between 2015 and 2020. Dexon sought defense from Travelers Property Casualty Company of America under a liability policy it had purchased from Travelers. Travelers denied coverage and a duty to defend, arguing that all the alleged acts of trademark infringement were "related acts" under the policy and thus were deemed to have been committed before the policy's retroactive date. The District Court of Minnesota denied Travelers' motion to dismiss Dexon's claims for a declaratory judgment that Travelers has a duty to defend and indemnify. The court held that the documents submitted by the parties concerning the coverage dispute were not "matters outside the pleadings" and could be considered in ruling on the motion to dismiss. The court concluded that it could not hold, as a matter of law, that every act of trademark infringement alleged in the Cisco complaint was necessarily related to an act of trademark infringement that occurred prior to the retroactive date. The United States Court of Appeals for the Eighth Circuit affirmed the district court's decision. The court held that the district court correctly determined that Travelers had a duty to defend Dexon in the entire Cisco Action. The court noted that this did not resolve whether Travelers has a duty to indemnify, and if so, the extent of that duty, which would depend on the ultimate resolution of the Cisco Action. View "Dexon Computer, Inc. v. Travelers Prop. Cas. Co. Am." on Justia Law

ARAUJO v. FRAMBOISE HOLDINGS INC.

2024-04-30T06:31:58-08:00

The case revolves around a dispute between Jalmar Araujo and Framboise Holdings Inc. over the registration of the standard character mark #TODECACHO. Araujo filed a U.S. Trademark Application to register #TODECACHO for hair combs. Framboise opposed the registration, claiming that it would likely cause confusion with its #TODECACHO design mark, which it had been using in connection with various hair products since March 24, 2017. Framboise also had a pending trademark application for the same mark. The United States Patent and Trademark Office Trademark Trial and Appeal Board (the Board) granted Framboise an extension to submit its case in chief. Araujo opposed this extension and the late submission of a declaration by Adrian Extrakt, Director of Framboise. However, the Board granted the extension, finding that the delay was minimal and that Framboise had met the applicable good cause standard. The Board then relied on the Extrakt declaration to support Framboise's claim of prior use of the #TODECACHO design mark. The Board found that Framboise had met its burden to establish prior use by a preponderance of the evidence. It found that the Extrakt declaration alone was sufficient to prove prior use because it was clear, convincing, and uncontradicted. Having found an earlier priority date for Framboise, the Board found a likelihood of confusion between the two marks, sustained the opposition, and refused registration of Araujo’s mark. On appeal, the United States Court of Appeals for the Federal Circuit affirmed the Board's decision. The court found that the Board did not abuse its discretion in granting the extension and that the Board's finding that Framboise established prior use of the #TODECACHO design mark was supported by substantial evidence. View "ARAUJO v. FRAMBOISE HOLDINGS INC. " on Justia Law

Kars 4 Kids Inc v. America Can Cars For Kids

2024-04-17T09:00:11-08:00

The case involves a long-standing trademark dispute between two charities, Kars 4 Kids, Inc. and America Can! Cars for Kids. Both organizations sell donated vehicles to fund children's education programs. In 2003, Texas-based America Can discovered a Kars 4 Kids advertisement in the Dallas Morning News and sent Kars 4 Kids a cease and desist letter, asserting America Can’s rights to the “Cars for Kids” mark in Texas. Kars 4 Kids, based in New Jersey, did not respond to the letter and continued to advertise in Texas. The case was first brought to the United States District Court for the District of New Jersey in 2014, where both parties alleged federal and state trademark infringement, unfair competition, and trademark dilution claims. A jury found that Kars 4 Kids infringed on America Can’s unregistered mark in Texas. The District Court awarded monetary and injunctive relief. However, the court's decision was appealed, and the case was remanded for the District Court to reexamine its conclusion that the doctrine of laches did not bar America Can’s claims. On remand, the District Court again concluded that laches did not bar relief. The court found that Kars 4 Kids’ advertising in Texas was not open and notorious enough to prompt America Can to act more quickly to protect its mark. The court also found that Kars 4 Kids was not prejudiced by America Can’s delay because Kars 4 Kids had assumed the risk of its advertising campaigns after receiving the 2003 cease and desist letter. The United States Court of Appeals for the Third Circuit disagreed with the District Court's findings. The appellate court held that the District Court abused its discretion by not properly applying the presumption in favor of laches. The court found that America Can failed to establish that its delay in bringing suit was excusable and that Kars 4 Kids was not prejudiced as a result of that delay. Therefore, the court vacated the District Court's judgment granting monetary and injunctive relief and remanded with instructions to dismiss America Can’s claims with prejudice based on laches. The court also dismissed as moot America Can’s cross-appeal. View "Kars 4 Kids Inc v. America Can Cars For Kids" on Justia Law

City of New York v. Henriquez

2024-04-16T07:00:07-08:00

The case involves a dispute over the use of the term "Medical Special Operations Conference" and its acronym "MSOC" as a trademark. The plaintiff, the City of New York and the FDNY Foundation, and the defendant, Juan Henriquez, both claimed rights to the term. Henriquez, a rescue paramedic with the FDNY, had been organizing conferences under this name since 2011. The FDNY also used the term for its own events. In 2019, Henriquez applied to the U.S. Patent and Trademark Office (P.T.O.) to register the term as a trademark under his name. The P.T.O. initially rejected his application, finding the term merely descriptive of the events Henriquez organized. However, Henriquez successfully amended his application, attesting to his continuous and exclusive use of the mark for the past five years, and the P.T.O. registered the mark under his name. The United States District Court for the Eastern District of New York granted a preliminary injunction in favor of Henriquez, prohibiting the FDNY from using the term for their events. The court found the term to be a suggestive mark, which is entitled to more protection under trademark law than a descriptive mark. On appeal, the United States Court of Appeals for the Second Circuit disagreed with the lower court's classification of the term as a suggestive mark. The appellate court found that the term was descriptive, not suggestive, and therefore merited less protection under trademark law. The court vacated the preliminary injunction and remanded the case for further proceedings. View "City of New York v. Henriquez" on Justia Law

TBL Licensing, LLC v. Vidal

2024-04-15T11:01:55-08:00

The case involves TBL Licensing, LLC, commonly known as Timberland, and its attempt to register certain features of its popular boot design as trade dress under the Lanham Act. The United States Patent and Trademark Office (USPTO) refused to register the design, concluding it was not distinctive. Timberland appealed to the federal district court, which agreed with the USPTO and added that the design was impermissibly functional. The district court granted the USPTO's motion for summary judgment. On appeal, the United States Court of Appeals for the Fourth Circuit affirmed the district court's decision. The court held that the district court did not err in concluding that the subset of design features that Timberland sought to register lacked distinctiveness in the public's view. The court did not decide on the issue of functionality. The court emphasized that the question was not whether the public recognizes the entire product as Timberland's boot, but whether the specific design features that Timberland sought to register have acquired a distinctive meaning in the public's view. View "TBL Licensing, LLC v. Vidal" on Justia Law

BBK TOBACCO & FOODS LLP V. CENTRAL COAST AGRICULTURE, INC.

2024-04-01T08:00:41-08:00

The United States Court of Appeals for the Ninth Circuit was asked to rule on a trademark infringement case brought by BBK Tobacco & Foods LLP against Central Coast Agriculture, Inc. BBK, a distributor and seller of smoking-related products with trademarked "RAW" branding, alleged that CCA infringed on its mark by selling cannabis products under the mark "Raw Garden." The district court granted summary judgment in favor of CCA on BBK’s trademark claims, but in favor of BBK on its counterclaims to invalidate several of CCA’s trademark applications and CCA’s counterclaim to cancel BBK’s trademark applications for unlawful use. The Ninth Circuit affirmed the district court’s grant of summary judgment in favor of BBK on its claim to invalidate four of CCA’s trademark applications. The court held that, under 15 U.S.C. § 1119, when an action involves a claim of infringement on a registered trademark, a district court also has jurisdiction to consider challenges to the trademark applications of a party to the action. The court also held that lack of a bona fide intent to use a mark in commerce is a valid basis to challenge a trademark application. However, in a separately filed memorandum disposition, the Ninth Circuit reversed the district court’s summary judgment on BBK’s trademark claims and affirmed the summary judgment on CCA’s counterclaim to cancel BBK’s trademark for unlawful use. View "BBK TOBACCO & FOODS LLP V. CENTRAL COAST AGRICULTURE, INC." on Justia Law

Solid 21, Inc. v. Breitling USA, Inc.

2024-03-14T07:00:13-08:00

The case in question involves a dispute over the use of the term "red gold" in the marketing of wristwatches. The plaintiff-appellant Solid 21, a luxury jewelry and watch business, owns a trademark in RED GOLD® since 2003. Defendant-appellee Breitling, a luxury watch manufacturer, uses the term “red gold” in its advertisements, product listings, and catalogues. Solid 21 argued that Breitling's use of the term amounted to trademark infringement, claiming it was likely to cause confusion, leading customers to mistakenly believe that Solid 21 was affiliated with Breitling’s products. The United States District Court for the District of Connecticut granted summary judgment for Breitling, finding that the company used the term “red gold” permissibly under the Lanham Act’s fair use defense. Solid 21 appealed this decision, insisting that material issues of fact precluded summary judgment for Breitling. The United States Court of Appeals for the Second Circuit disagreed and affirmed the district court's judgment. The court reasoned that Breitling used the term "red gold" in a descriptive sense, not as a mark, and in good faith. The court also pointed out that Solid 21 failed to provide sufficient evidence to create a genuine issue of material fact as to whether Breitling was acting in bad faith while using the term “red gold.” View "Solid 21, Inc. v. Breitling USA, Inc." on Justia Law

Xactware Solutions, Inc. v. Buildxact Software Limited

2024-03-13T10:30:16-08:00

The United States Court of Appeals for the Fourth Circuit affirmed a lower court's decision to grant a motion to quash a subpoena issued by Xactware Solutions, Inc. against Buildxact Software Limited in a trademark dispute. The case revolves around Xactware's desire to orally depose a Buildxact employee as part of opposition proceedings in the U.S. Patent and Trademark Office (PTO). All of Buildxact's employees are located in Australia. The court agreed with the district court's determination that it lacked authority to subpoena evidence that, under PTO rules, is inadmissible in internal PTO proceedings. The court reasoned that 35 U.S.C. § 24, which allows district courts to subpoena testimony for use in any contested case in the Patent and Trademark Office, only empowers district courts to issue subpoenas for depositions that comply with PTO rules. The court rejected Xactware's argument that the PTO's rules contradict the Federal Rules of Civil Procedure and thus exceed the PTO's statutory authority. The court found that the PTO rules and the Federal Rules serve different purposes and contexts, and that the PTO's rule-making authority under Section 23 of the Patent Act allows it to establish its rules for taking affidavits and depositions. The court concluded that a contrary ruling would significantly displace the PTO's authority to police its internal proceedings, and affirmed the lower court's decision to quash the subpoena. View "Xactware Solutions, Inc. v. Buildxact Software Limited" on Justia Law

NATERRA INTERNATIONAL, INC. v. BENSALEM

2024-02-15T07:02:06-08:00

The United States Court of Appeals for the Federal Circuit reviewed a decision by the Trademark Trial and Appeal Board denying Naterra International, Inc.'s petition for cancellation of Samah Bensalem's BABIES’ MAGIC TEA standard character mark registration. Naterra argued that there was a likelihood of confusion between its BABY MAGIC mark and Bensalem’s BABIES’ MAGIC TEA mark. The Court examined several factors, including the similarity of the marks, the nature of the goods, and the trade channels. The Court found that the Board erred in its assessment of the similarity of the marks and the trade channels and failed to properly evaluate relevant evidence about the nature of the goods. Therefore, the Court vacated the Board's decision and remanded the case for further proceedings. The Court also found the Board did not err in its assessment of the fame of Naterra's mark. View "NATERRA INTERNATIONAL, INC. v. BENSALEM " on Justia Law

In Re CHESTEK PLLC

2024-02-13T08:32:53-08:00

In 2020, the law firm Chestek PLLC applied for a trademark for the mark "CHESTEK LEGAL" but provided only a P.O. box as its domicile address. The United States Patent and Trademark Office (USPTO) refused the application because it did not comply with the domicile address requirement. Chestek argued that the rules enforcing this requirement were improperly promulgated under the Administrative Procedure Act (APA). The Trademark Trial and Appeal Board affirmed the examiner's refusal. On appeal to the United States Court of Appeals for the Federal Circuit, Chestek argued that the domicile address requirement was improperly promulgated for two reasons: the USPTO was required to comply with the requirements of notice-and-comment rulemaking under 5 U.S.C. § 553 but failed to do so because the proposed rule did not provide notice of the domicile address requirement adopted in the final rule, and the domicile address requirement is arbitrary and capricious because the final rule failed to offer a satisfactory explanation for the domicile address requirement and failed to consider important aspects of the problem it purports to address, such as privacy. The Federal Circuit found the domicile address requirement to be a procedural rule that is exempt from notice-and-comment rulemaking. Furthermore, the USPTO's decision to require the address provided by all applicants to be a domicile address was not arbitrary or capricious for failure to provide a reasoned justification. The court affirmed the Board's refusal to register Chestek's mark. View "In Re CHESTEK PLLC " on Justia Law

Rolex Watch v. Beckertime

2024-01-26T16:31:02-08:00

This case arises from a trademark infringement dispute under the Lanham Act between Rolex Watch USA, Incorporated (Rolex) and Beckertime, L.L.C.; Matthew Becker (Beckertime). Rolex is a luxury watch seller with legally protectable interest in numerous trademarks. Beckertime sells primarily decades-old preowned watches containing Rolex branded parts, including watches identified as “Genuine Rolex,” but contain both Rolex and non-Rolex parts. The United States Court of Appeals for the Fifth Circuit affirmed in part, modified in part, and remanded in part the decision of the United States District Court for the Northern District of Texas. The district court found that Beckertime infringed Rolex’s trademark but refused to disgorge Beckertime of its profits, applying the laches defense. Rolex appealed, seeking a modification to the injunction, treble profits, and attorneys’ fees, while Beckertime sought the application of an alternative test to determine infringement. The Appellate Court upheld the district court's ruling that Beckertime infringed Rolex’s trademark, finding no clear error in the determination. The court affirmed the district court's decision to apply the laches defense, preventing the disgorgement of Beckertime's profits. The court found that Rolex had failed to offer a valid justification for its delay in filing suit and that Beckertime was prejudiced by this delay. Regarding remedies, the Appellate Court found that Rolex was not entitled to treble profits or attorneys’ fees. The court pointed out that Rolex had not moved for attorneys’ fees within the required time period under Federal Rule of Civil Procedure 54(d)(2), thereby waiving its right to such fees. Furthermore, the district court found no evidence of deliberate counterfeiting by Beckertime to warrant the imposition of treble profits. The court also addressed the scope of the injunction issued by the district court. It modified the injunction to prohibit the sale of Rolex watches with non-genuine bezels, but upheld the exclusion of all non-genuine dials from the injunction. The court also agreed with Rolex that the typographical errors in one section of the injunction rendered it vague and unqualified, and remanded the case to the district court for clarification. View "Rolex Watch v. Beckertime" on Justia Law

Punchbowl, Inc. v. AJ Press, LLC

2024-01-12T09:32:01-08:00

In a trademark dispute between two companies that used the word "Punchbowl" in their marks, the United States Court of Appeals for the Ninth Circuit reversed the district court's summary judgement in favor of AJ Press, LLC. The court held that AJ Press, LLC's use of the Punchbowl mark was not outside the scope of the Lanham Act under the "Rogers test". The Rogers test, which governs disputes over trademarks that are used in expressive works protected by the First Amendment, does not apply when the accused infringer uses a trademark to designate the source of its own goods. The court found that AJ Press, LLC was using the Punchbowl mark to identify and distinguish its news products. The court reversed the district court's judgement and remanded for further proceedings, instructing the district court to proceed to a likelihood-of-confusion analysis under the Lanham Act. View "Punchbowl, Inc. v. AJ Press, LLC" on Justia Law

Vans, Inc. v. MSCHF Product Studio, Inc.

2023-12-05T07:00:54-08:00

In the case between Vans, Inc., VF Outdoor, LLC (collectively "Vans") and MSCHF Product Studio, Inc. ("MSCHF"), the United States Court of Appeals For the Second Circuit affirmed the district court's decision to grant a temporary restraining order and preliminary injunction against MSCHF. MSCHF had created a sneaker, the Wavy Baby, which appeared to mimic Vans' Old Skool shoe. Vans sued MSCHF for trademark and trade dress infringement. MSCHF argued that its use of Vans' marks was protected by the First Amendment. However, the Court of Appeals applied the recent Supreme Court decision in Jack Daniel's Properties, Inc. v. VIP Products LLC, which held that special First Amendment protections do not apply when trademarks are used as source identifiers. The Court of Appeals concluded that Vans was likely to prevail in arguing that MSCHF's Wavy Baby shoes used Vans' marks and trade dress as source identifiers, and that there was a likelihood of confusion as to the source of the Wavy Baby shoes. The court also affirmed the district court's decisions requiring MSCHF to escrow its revenues from Wavy Baby sales and not requiring a bond determination because MSCHF never requested security. View "Vans, Inc. v. MSCHF Product Studio, Inc." on Justia Law

Janssen Products LP v. Evenus Pharmaceuticals Laboratories Inc

2023-10-26T12:32:01-08:00

Janssen spent 10 years and over half a billion dollars developing an injectable version of the cancer drug trabectedin and patented some of the manufacturing processes. The data, specifications, and manufacturing methods were kept confidential as trade secrets. In 2015, the FDA approved the drug, Yondelis, for use in certain cancer patients. Two years later, two competitors—a Chinese corporation, and its U.S. subsidiary, eVenus—sought FDA approval to sell a generic version of Yondelis. Janssen sued for patent infringement. During discovery, Janssen obtained documents that indicated the defendants misappropriated trade secrets. Janssen filed another lawsuit under the Defend Trade Secrets Act, 18 U.S.C. 1836 (DTSA), became convinced that the defendants had spoliated evidence, and filed an ex parte application, asking that U.S. Marshals seize eVenus’s network servers and stored data, and certain laptops and cell phones. The district court denied the application, concluding that Janssen had not shown that eVenus was in actual possession of the property or that eVenus’s property was at the location of the proposed seizure. It also found an insufficient showing of immediate and irreparable harm or immediate concern for spoliation and that the seizure would encompass company information not limited to the matters at issue. The Third Circuit dismissed an appeal for lack of jurisdiction. A DTSA seizure order is directed to law enforcement—not a party against whom the order could be enforced by threat of contempt–so the order did not effectively deny an injunction. View "Janssen Products LP v. Evenus Pharmaceuticals Laboratories Inc" on Justia Law

Great Concepts, LLC v. Chutter, Inc.

2023-10-18T07:01:57-08:00

Great Concepts applied to register “DANTANNA’S” as a mark for a “steak and seafood restaurant.” Its 764 Registration issued in 2005. Chutter’s predecessor-in-interest, Dan Tana, subsequently petitioned the Trademark Trial and Appeal Board to cancel the Registration, based on an alleged likelihood of confusion with Tana’s common law “DAN TANA” mark for restaurant services. The cancellation proceeding was suspended during a trademark infringement civil suit. In 2009, the district court granted Great Concepts summary judgment; the Eleventh Circuit affirmed. In December 2010, the Board dismissed Tana’s cancellation proceeding. Meanwhile, in March 2010, Great Concepts’ then-attorney, Taylor, filed with the Patent and Trademark Office (PTO) a combined declaration of use and declaration of incontestability, under the Lanham Act, 15 U.S.C. 1058, 1065, declaring “there is no proceeding involving said rights pending and not disposed of either in the U.S. Patent and Trademark Office or in the courts.” At the time, both the PTO cancellation proceeding and the Eleventh Circuit appeal were pending. In 2015, Chutter successfully petitioned the PTO for cancellation of Great Concepts’ “DANTANNA’S” mark based on Taylor’s 2010 false affidavit. The Federal Circuit reversed. The statute limits the Board’s authority to cancel registration of a mark to circumstances in which the “registration was obtained fraudulently,” but does not authorize cancellation of a registration when the incontestability status of that mark is “obtained fraudulently.” View "Great Concepts, LLC v. Chutter, Inc." on Justia Law

Calsep v. Dabral

2023-10-11T09:30:44-08:00

Seven years ago, A.D. was hired to create a PVT (“pressure volume temperature”) simulation software program. Sah was hired by A.D. to develop a PVT software program in exchange for a stake in one of A.D.’s companies, IPSS. Eight months later, a product called InPVT hit the market. Plaintiff Calsep started looking into InPVT. In Calsep’s assessment, A.D. didn’t have the technical skills or resources to develop a PVT product. Calsep filed another motion to compel, alleging that A.D. still hadn’t adequately disclosed his source code control system. Although A.D. had “produced [a] purported source code system” in April and July, Calsep claimed that these productions were “undoubtedly incomplete” and “had been manipulated.” Believing the deletions to be intentional, Calsep filed a motion for sanctions. Afterward, A.D. filed a motion for reconsideration based on newly discovered forensic images that “vindicated” him. The magistrate judge recommended denying the motion, and the district court agreed, denying the motion for reconsideration of the sanctions order. A.D. appealed. The Fifth Circuit affirmed the district court’s decision on A.D.'s motion for reconsideration. The court explained that A.D. cannot offer any reason—other than mere forgetfulness—why he couldn’t acquire the images sooner. Further, A.D. hasn’t shown that he acted with diligence during the case to locate these images. Moreover, the court explained that although A.D. argues that the images change the game, Calsep’s expert insists that too much data is still missing from the source code control system, rendering a proper review impossible. The court noted that there was no reason to question the district court’s judgment crediting Calsep’s expert testimony. View "Calsep v. Dabral" on Justia Law

Pauwels v. Deloitte LLP

2023-10-06T06:30:56-08:00

Defendants Bank of New York Mellon Corporation, LLP and its subsidiary, The Bank of New York Mellon (collectively, “BNYM”), retained Plaintiff as an independent contractor to work on an investment valuation project. Plaintiff developed the so-called Pauwels Model. At various times between 2014 and the end of his working relationship with BNYM in 2018, Plaintiff shared spreadsheets derived from the Pauwels Model with various employees and executives at BNYM. In 2016, BNYM retained Defendants Deloitte LLP, Deloitte Tax LLP, and Deloitte USA LLP (collectively, “Deloitte”) to take over the work that Plaintiff had been performing for BNYM. Plaintiff alleged that Deloitte used the spreadsheets to reverse engineer the Pauwels Model and was using the model to conduct the services it provided to BNYM. Plaintiff brought suit against BNYM and Deloitte, alleging, among other claims, that the Pauwels Model embodied a trade secret that they misappropriated. The Second Circuit reversed and remanded the district court’s judgment insofar as it dismissed Plaintiff’s unjust enrichment claim. The court affirmed the remainder of the judgment. The court explained that misappropriation is not an element of a claim for unjust enrichment under New York law. Therefore, a plaintiff’s claim for unjust enrichment does not necessarily rise or fall with a claim of trade secret misappropriation. The court explained that because Plaintiff’s theory of liability is distinct from those underpinning Plaintiff’s claim for trade secret misappropriation, his claim for unjust enrichment should not have been dismissed as duplicative of his claim for trade secret misappropriation. View "Pauwels v. Deloitte LLP" on Justia Law

Carbon Six Barrels v. Proof Research

2023-09-29T15:30:17-08:00

Proof Research, Inc. and Carbon Six Barrels, LLC both manufacture carbon-fiber gun barrels. Proof entered the market first and obtained a trademark for the unique appearance of its barrels. When Proof found out that Carbon Six intended to begin manufacturing and selling similar-looking carbon-fiber gun barrels of its own, Proof responded with litigation. However, Proof did not file suit against Carbon Six but rather against McGowen Precision Barrels, LLC, Carbon Six’s sister company. McGowen then initiated separate proceedings to have Proof’s trademark canceled. McGowen was ultimately successful, and Proof’s trademark for its carbon-fiber gun barrels was canceled in 2021. On February 9, 2022, Carbon Six filed this lawsuit against Proof for defamation and violation of the Louisiana Unfair Trade Practices Act stemming from Proof’s efforts to register, renew, enforce, and defend its previously valid trademark. However, Carbon Six brought its claims after the one-year prescriptive period imposed by Louisiana law had run. On Proof’s motion to dismiss under Rule 12(b)(6), Carbon Six failed to convince the district court that any of its claims were timely. The district court also held that Carbon Six’s LUTPA claim was legally deficient. The Fifth Circuit affirmed. The court held that all actions Carbon Six alleged Proof took were discrete rather than ongoing, and each began and ended more than a year before this lawsuit was filed. Carbon Six’s LUTPA claim is therefore prescribed. The court explained even if Carbon Six could do so, Proof’s attempt to enforce a later-invalidated trademark does not violate LUTPA. View "Carbon Six Barrels v. Proof Research" on Justia Law

Bliss Collection, LLC v. Latham Companies, LLC

2023-09-21T12:31:07-08:00

In 1999, Latham, McLean, and Vernooy formed Bliss to sell children’s clothing under the name “bella bliss.” In 2003, Shannon left Bliss and started Latham to sell her own children’s clothing under the name “little english.” Bliss’s logo is a lowercase “b” drawn out as if stitched in thread. Bliss has registered trademarks for this logo. Bliss has several designs that it claims as signature looks of the bella bliss brand that have “become famous and widely known and recognized as symbols of unique and high-quality garments.” There has been previous litigation between the parties. In 2020, Bliss filed federal claims for copyright, trademark, and trade dress infringement; false designation of origin and misappropriation of source; and unfair competition. The district court dismissed Bliss’s claims and granted Latham attorney’s fees for defending the copyright claim but found that Bliss filed its action in good faith and that the trademark and trade dress claims were not so “exceptionally meritless” that Latham merited a rare attorney’s fees award under 15 U.S.C. 1117. The Sixth Circuit affirmed in part. Bliss stated claims for federal and state trademark infringement but has not stated a claim for trade dress infringement. The district court did not err in denying attorney’s fees to Latham for defending the trademark and trade dress infringement claims. View "Bliss Collection, LLC v. Latham Companies, LLC" on Justia Law

IMPOSSIBLE FOODS INC. V. IMPOSSIBLE X LLC

2023-09-12T08:31:30-08:00

Impossible X, now a Texas LLC, is a one-person company run by Joel Runyon, a self-described “digital nomad” who for two years operated his business from San Diego. Impossible X sells apparel, nutritional supplements, diet guides, and a consulting service through its website and various social media channels. Impossible Foods sued Impossible X in federal court in California, seeking a declaration that Impossible Foods’ use of the IMPOSSIBLE mark did not infringe on Impossible X’s trademark rights. The district court dismissed the case for lack of personal jurisdiction. The Ninth Circuit reversed the district court’s dismissal. The panel held that Impossible X was subject to specific personal jurisdiction in California because it previously operated out of California and built its brand and trademarks there, and its activities in California were sufficiently affiliated with the underlying trademark dispute to satisfy the requirements of due process. First, Impossible X purposefully directed its activities toward California and availed itself of the privileges of conducting activities there by building its brand and working to establish trademark rights there. Second, Impossible Foods’ declaratory judgment action arose out of or related to Impossible X’s conduct in California. The panel did not confine its analysis to Impossible X’s trademark enforcement activities, but rather concluded that, to the extent the Federal Circuit follows such an approach for patent declaratory judgments, that approach is not justified in the trademark context. Third, the panel concluded that there was nothing unreasonable about requiring Impossible X to defend a lawsuit based on its trademark building activities in the state that was its headquarters and Runyon’s home base. View "IMPOSSIBLE FOODS INC. V. IMPOSSIBLE X LLC" on Justia Law

Grubhub, Inc. v. Relish Labs LLC

2023-09-12T07:00:20-08:00

Since 2013, Home Chef has created and delivered meal kits. In 2014, Home Chef began using its “HC Home Mark,” covered by five federal trademark registrations. Home Chef later merged with Kroger, and now delivers meals directly to customers and offers them for sale in Kroger stores, through Kroger’s website, and through food delivery services. Grubhub, an online food-ordering and delivery marketplace, owns numerous trademark registrations covering the GRUBHUB name and stylized variations. In 2021, Grubhub was acquired by JET, which owns food-delivery brands worldwide and combines its “JET House Mark” with local brand names when conducting business in various countries. JET has used the JET House Mark since 2014. JET had filed an international trademark application for the JET House Mark. A USPTO examiner found the JET House Mark “highly similar” and “confusingly similar” to the HC Home Mark and Home Chef Home Logo. JET withdrew its application. JET later combined the GRUBHUB word mark with the JET House Mark. Grubhub invested millions of dollars in rebranding its print and electronic materials. After receiving a cease-and-desist letter from Home Chef, Grubhub sought a declaratory judgment that its Logo did not infringe Home Chef’s marks. The Seventh Circuit affirmed the denial of Home Chef's motion for a preliminary injunction. The district court did not clearly err in finding that Home Chef failed to meet its burden to show a likelihood of success on the merits of its infringement claim. View "Grubhub, Inc. v. Relish Labs LLC" on Justia Law

Pim Brands Inc v. Haribo of America Inc.

2023-09-07T09:01:16-08:00

About 20 years ago, PIM introduced a chewy candy, watermelon-flavored, wedge-shaped Sour Jacks Wedges. Its colors match its flavor: a green layer topped by a thin white band with a larger red section. PIM advertised the candy as “The Ultimate Shape of Sour” and told consumers to “Respect the Wedge.” Years later, PIM tried to trademark the wedge shape. The Patent and Trademark Office required PIM to add colors. PIM registered the shape of a wedge, with an upper green section with white speckles, followed by a narrow middle white section, with a lower red section with white speckles. PIM later produced Sour Jacks Wedges in other flavors. Each has a color to match its flavor. The Patent Office granted PIM a supplemental registration for a tricolored wedge with unspecified colors. Haribo recently introduced its own chewy watermelon candy as an elongated watermelon wedge in red, white, and green. PIM sued for trademark and trade-dress infringement, Lanham Act, 15 U.S.C. 1114(1), 1125(a)(1)(A). Haribo countered that PIM’s trade dress was functional and asked the court to cancel PIM’s trademark. The district court granted Haribo summary judgment. The Third Circuit affirmed. PIM may have created the wedge shape to distinguish its product in the market but in doing so, it made a candy reminiscent of a juicy watermelon wedge, which makes the whole trade dress functional when applied to a watermelon candy. The cancellation order should apply to the primary registration. View "Pim Brands Inc v. Haribo of America Inc." on Justia Law

Rex Real Est I v. Rex Real Est

2023-09-06T15:30:24-08:00

Plaintiff Rex Real Estate I, L.P. sued Defendant Rex Real Estate Exchange for trademark infringement. The district court granted Defendant’s motion for judgment as a matter of law after Plaintiff rested its case. Plaintiff appealed the judgment against its federal infringement claims under the Lanham Act. The Fifth Circuit affirmed in part, reversed in part, and remanded. The court held that a reasonable jury could not find in favor of Plaintiff’s Section 32(1) claim, but it could find in favor of Plaintiff’s Section 43(a) claim. The court explained that while there was strong evidence that the marks are perceived by the public as primarily a personal name, the record does not compel that conclusion. Thus, the district court erred by deciding as a matter of law that Plaintiff’s marks are not inherently distinctive. Moreover, the court explained that Plaintiff also asserts that the numerous calls it received from confused consumers who heard Defendant’s advertisements show that the marks have strong standing in the marketplace because it could mean that the callers assumed that Plaintiff was the sole source of the advertising. This is a plausible inference for a jury to make. The court held that taken together and in the light most favorable to the Plaintiff, a reasonable jury could find that this factor weighs in favor of Plaintiff. View "Rex Real Est I v. Rex Real Est" on Justia Law

Valancourt Books, LLC v. Merrick Garland

2023-08-29T06:34:50-08:00

The Copyright Office sent a letter to Valancourt Books, LLC, an independent press based in Richmond, Virginia, demanding physical copies of Valancourt’s published books on the pain of fines. Valancourt protested that it could not afford to deposit physical copies and that much of what it published was in the public domain. In response, the Office narrowed the list of demanded works but continued to demand that Valancourt deposit copies of its books with the Library of Congress or otherwise face a fine. Valancourt then brought this action against the Register of Copyrights and the Attorney General. Valancourt challenged the application of Section 407’s deposit requirement against it as an unconstitutional taking of its property in violation of the Fifth Amendment and an invalid burden on its speech in violation of the First Amendment. The district court granted summary judgment to the government on both claims. The DC Circuit reversed the district court’s grant of summary judgment in the government’s favor and remanded for the entry of judgment to Valancourt and the award of relief. The court concluded that Section 407, as applied by the Copyright Office in this case, worked an unconstitutional taking of Valancourt’s property. The court explained that the Office demanded that Valancourt relinquish property (physical copies of copyrighted books) on the pain of fines. And because the requirement to turn over copies of the works is not a condition of attaining (or retaining) copyright protection in them, the demand to forfeit property cannot be justified as the conferral of a benefit in exchange for property. View "Valancourt Books, LLC v. Merrick Garland" on Justia Law

ORACLE USA, INC., ET AL V. RIMINI STREET, INC.

2023-08-24T08:31:17-08:00

This civil contempt dispute is the fallout from the protracted copyright infringement litigation between Oracle USA, Inc. and Rimini Street, Inc.—now in its thirteenth year. In the underlying case, the district court entered a permanent injunction that enjoined Rimini from various infringing practices. Years later, the district court identified ten potential violations of the permanent injunction (“Issues 1– 10”), and ultimately held Rimini in contempt on five. Rimini was ordered to pay $630,000 in statutory sanctions plus attorneys’ fees. On appeal, Rimini argued that the contempt order should be reversed and that the sanctions should be vacated. The Ninth Circuit affirmed in part, reversed in part, and vacated in part the district court’s order. The permanent injunction generally prohibited Rimini from reproducing, preparing derivative works from, or distributing certain Oracle software. The district court identified ten potential violations of the permanent injunction (Issues 1–10) and held Rimini in contempt on five (Issues 1-4, 8). The panel affirmed the district court’s finding of contempt on Issues 1-4. The panel held that the district court did not abuse its discretion in holding Rimini in contempt for hosting Oracle files on its computer systems (Issue 1). The panel also held that the district court did not abuse its discretion in finding Rimini in contempt for violating the injunction against the “cross use” of development environments (Issues 2, 3, and 4). Reversing the finding of contempt on Issue 8, the panel held that the district court abused its discretion in holding Rimini in contempt for creating copies of an Oracle Database file on its systems. View "ORACLE USA, INC., ET AL V. RIMINI STREET, INC." on Justia Law