Justia Trademark Opinion Summaries

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

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

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., 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

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, 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. 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

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