Justia Trademark Opinion Summaries

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

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

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

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

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, 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

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. 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

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

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